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

From: Bruce Burdick [burdlaw@gmail.com]
Sent: Friday, September 06, 2013 3:22 PM
To: TMFeedback
Subject: Technology Evolution

to TMFeedback@uspto.gov

Re:“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.

Feedback: I have 40 years experience as a trademark prosecution attorney (I am also Reg. Pat. Atty 27422, since 1974). I am a trademark owner and practitioner. I own and am the managing attorney at a boutique intellectual property law firm bearing my name. I have handled thousands of trademark applications and registrations. For nearly 20 years I served as the chief trademark counsel for a multinational corporation (Olin Corporation). I am the top contributor in IP on the popular Avvo legal website www.avvo.com, and the owner and author of the popular IP blog http://burdlaw.com/blog 

  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?

Feedback: Yes, who does CDs anymore? Even DVDs are a dying technology. Jump drives and smart phones and tablets can hold the equivalent of thousands of DVDs Cassettes? Most kids under the age of 10 don’t even know what they are. VHS, VCR, LP, most young kids have never seen one of those antiques - to them music comes from iTunes or GooglePlay or Pandora or Spotify or Rhapsody or their MP3 player or smartphone.  ITunes is now the world’s largest music publisher and the biggest customer of every major label and every minor label that does any significant level of business in the music industry. It would be preposterous to say that a registration for example for BEATLES for an LP or VHS would need to be republished for iTune digital audio files. Digital audio files ARE the new LP or VHS. IDs should keep pace with technology and the PTO should remove the current obstacles to that occurring. The PTO should serve the public not hinder the public. Anything else is perpetuation of a deception.

  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)?

Feedback: For the reasons stated in my feedback to item 2 above, it should make no difference whether the ID is in an application or registration. The objective should be to reflect reality instead of perpetuating a deception.

  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?

Feedback: Just a showing that the applicant/registrant uses (or in the case of a 1 (b) application, intends to use) the mark on the new medium sought to be added or substituted. In addition, an antique medium should be required to be deleted from the ID if the applicant/registrant no longer uses that antique medium.

  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?

Feedback: No, instead a statement should be required and made that the new goods or services are modernized versions of the prior goods or services and that applicant/registrant has a good faith belief that consumers would believe them to be equivalent or likely to be confused, as to source. This could be done with a checkbox on TEAS or TEAS PLUS.

  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?

Feedback: No, instead, amendments for both should be permitted. The public deserves a TESS and TSDR that reflect reality. On TEAS and TEAS PLUS, I suggest just using a click-checkable statement that the product or service to be added is an evolved form of the currently listed product or service. Naturally the examiner would need to check to confirm such a statement and not just blindly accept it and actual use/intended use of the evolved form should be required as appropriate to reg or app in question.

  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?

Feedback: Depends on the meaning of “expanded”. In the sense “expanded” is used to prohibit expansion due to potential need to republish, NO it is not that kind of expansion. In view of the well-recognized changes and advances in technology, even though the ID might be expanded, the scope of coverage seldom is seldom expanded one iota in these situations, as legally there would normally be likely to be confusion as to source in having the modernized versions of products bearing identical trademarks to obsolete versions of the products, particularly where the same producer would be expected normally for both. So in effect, the scope of the registration is not expanded or changed at all, rather the ID is merely being updated to reflect modern usage. In such situations, republication would be a waste of time and resources by the PTO, so amendment should be allowed to the ID to reflect modernization of the previously listed goods and services. Otherwise, TESS and TSDR do not properly serve their notice function. Leaving antiquated IDs might very well tend to confuse novice users of the databases as to the actual scope of coverage of registrations. For example, a novice might think that since only LP and VHS are listed for a registration that use of the registered trade mark is okay for digital audio files, when anyone more experienced in trademarks knows that is not true and would, in fact, be extremely dangerous for a novice to do. And, this is not an idle observation, the PTO is well aware that these databases are widely used by novices, and they are rightly intended to be usable by novices. Of all the places that should understand technology changes, the PTO, which is so intimately involved in processing protection for such changes, should be foremost.

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

Feedback: Yes, however it would be useful to add a requirement that the applicant for such an amendment list the date of first use for the terms added by amendment as a condition for adding them. That would protect the public interest in preserving any challenge as to the added terminology. For example, if some third party had been using the identical trademark on the added goods or services for more than five years without objection by the applicant/registrant, it would be useful to have a clear indication of the date of first use of the added goods or services. Rather than have the prior user have to go through discovery to find that information, necessitated by action of the applicant/registrant in adding it, the PTO should require the date of first use for the added goods or services to be stated. This would have the great added benefit of being a tremendous source of documentation as to when such changes occurred. The patent examining corps would find such dates of value, I would think, as potential evidence in support of rejections based on public use. Such addition would not take away from the overall date of first use previously stated as respects the antique goods or services, but merely supplement with dates of change of medium should that be deemed pertinent by a Judge as to infringement issues.

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

Feedback: It would be positive and helpful. Not allowing it would be deceptive and confusing to novices (and Judges) as previously stated above for the reasons above stated.

  1. Please provide any additional comments you may have.

Feedback: Frankly, this seems like a no-brainer. Surely it is in the public interest that the TESS and TSDR databases keep up with changes in technology so they are not deceptive to novices.

Bruce Burdick
Inventive Protection SM

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