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Public Comments on Post Registration Amendments to Identifications of Goods and Services Due to Technology Evolution

From: Michael Brown [mailto:brown@bpmlegal.com]
Sent: Friday, October 04, 2013 10:27 AM
To: TMFeedback
Subject: Technology Evolution

 

  1. Please identify your relevant background on this issue, including whether you are a trademark owner or practitioner, and the general size and nature of your business or trademark practice, including the number of trademark applications and registrations your business has, or your practice handles.

I am a practitioner. My practice handles 40-60 new applications a year, and handles post-registration filings for hundreds of registrations.

  1. Do you think the USPTO should allow amendments to identifications of goods/services in registrations based on changes in the manner or medium by which products and services are offered for sale and provided to consumers?

Yes.

  1. If such amendments are permitted, should they only be allowed post registration to account for changes in technology following registration, or should similar amendments be permitted in applications prior to registration (see 37 C.F.R. §2.71(a), stating that prior to registration, an applicant may clarify or limit, but not broaden, the identification)?

Yes.

  1. What type of showing should be required for such amendments? Should a special process be required to file such amendments, apart from a request for amendment under §7?

As to showings and procedure, I don’t think anything other than a regular amendment should be required, and the showing shouldn’t need to be anything more than affirming that the actual product being sold didn’t change, the amendment was just a change in (or, better, removal of the description of) the distribution medium for the product.

For the purposes of guidance for Examining and Attorneys and registrants, I think it would be best to have something similar to the Acceptable Goods manual with acceptable forms of amendment for the kinds of amendments which would cover 90% of the necessary amendments. For example, amendment would be permitted if the original registration was to an intangible product (musical recording, computer software or data, photography) limited as to medium of distribution, and the amendment is just to change the medium of distribution from, say, “musical recordings on cassette tapes” or “stock photographs mounted in 35mm transparencies” either (a) to something generic (“musical recordings on physical media”, “stock photographs sold as digital images”); or (b) to eliminate it entirely (“musical recordings”, “stock photographs”).  

  1. Should such amendments be limited to certain goods, services or fields (such as computer software, music, etc.), and if so, how should the determination be made as to which goods, services or fields?

I think the distinction should be defined more in terms of the reason for the amendment - change in format or medium of distribution due to technological or market changes - rather than to try to determine every particular sort of goods which might be affected for all time.

  1. Should a distinction be made between products that have been phased out (such as eight-track tapes), as opposed to products for which the technology is evolving (such as on-line magazines), or should amendments be permitted for both categories of products?

Both. Registrations last for ten years. Why should a registrant be refused amendment because for random time reasons his registration comes up for renewal during the transition from Betamax to VHS, when his competitor is not refused because when his registration is renewed five years later, Betamax is dead and gone?

  1. Do you believe the scope of protection in an identification of goods/services is expanded if an amendment is allowed to alter the medium of the goods/services?

No. As noted above, the medium of distribution should be irrelevant where the products are perceived by the registrant and consumer to be what is distributed not the media upon which they are distributed. The general policy overall should be changed to ignore medium of distribution, unless the medium of distribution somehow distinguishes a specific recognized market which is distinct from markets defined by other media (and I can’t think of any examples where that would be applicable).

  1. Would the original dates of use remain accurate if such amendments are permitted?

Yes. If the goods as defined by producer and consumer are distinct from the medium of distribution, as noted above, then the date of use for sale of a musical recording does not change if the original sale was on an Edison cylinder and today’s sales are by means of MP3 download.

  1. What would the impact of such amendments be on the public policy objective of ensuring notice of the coverage afforded under a registration?

None. For musical recordings, for example, the consumer has always viewed such products as “records” and has made no distinction as to source of the recording because a particular recording happens to be on reel-to-reel tape or cassette or vinyl or CD - for most of the time from the 1950’s technology was evolving so fast that the consumer actually expected the producer to have more than one format available (78/45/33rpm records coexisted through the 50’s, later on vinyl recordings came in mono and stereo, still later stereo vinyl coexisted with eight-track and cassette tapes, still later vinyl records were phased out while the same music was phased in on cassettes and CDs, and so on). The consumer would have been confused to be told that there was any difference between the product in its various formats other than the machine used to play them.

  1. Please provide any additional comments you may have.

I don’t see why it ever made any difference what medium was used, where the product was, and remains, what is on the medium. The registrants have always thought of their business as selling musical recordings, not cassettes or vinyl records or MP3 downloads, and the same is true of consumers of the products. In fact, most producers of musical recordings have always sold in as many different formats as they could economically support given the technology available at the time - if someone selling eight-track tapes in 1970 was not also selling vinyl records, they certainly would have done so if they felt they could. The consumer shopped for the music on whatever format suited their playback machinery, and if a particular song was available on eight-track and vinyl (or cassette and CD, or DVD and electronic download), they would not have thought for a minute that the source of the song would be different. The same would apply to vendors of computer software which might once have been provided on reel-to-reel tape or tape cartridge, then on eight-inch floppy disks, then on 5.25” or 3.5” floppies, then on CD or DVD, and are now downloaded over the Internet - the product is the word processor or accounting program, not the medium which contains it for upload onto a user’s computer. If the product was listed as “Digital images downloaded in TIFF format”, what matter if they are now in JPG format, or ten years from now in some format yet to be developed?

 

Sincerely,

Mike Brown

 

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