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

From: Finkelstein, William [mailto:wfinkelstein@steptoe.com]
Sent: Monday, October 21, 2013 10:22 PM
To: TMFeedback
Subject: Technology Evolution

 

Here are my responses to the ten questions.  These are my personal responses, not those of my firm.

 

1. I have been practicing trademark law for over 40 years, including 27 years as in-house IP Counsel at PepsiCo, Inc.  I am now at a law firm representing a wide variety of clients in various fields.  I would estimate that I have filed thousands of trademark applications, as well as a proportionately large number of Section 8-15’s and 8-9 renewals, through the years.

2. Yes, absolutely.  Such a change would be long overdue so as to reflect the “real” commercial world of continual modifications and progress.

3.  Amendments to ID’s should not be restricted to technology changes, as long as they do not broaden the ID, and should be allowed both post-registration and during the application process. Changes in the “real” world proceed irrespective of the PTO time line for applications.

4. The standard should be “non-material”, just as it is for other amendments, with similar considerations such as the kind of change that would not necessitate re-publication or that would not change another party’s position nor reaction to it.  in other words, if Party B wouldn’t have opposed Party A’s application with the original ID, would the changed ID  make such a difference that B might oppose it now?  The party requesting the amendment could produce evidence that the trade generally “no longer” uses the original language, including specimens of the new usage by the Party and its competitors.  It is, unfortunately, very hard to prove a “negative”, i.e., that language is no longer used, so this standard should not be draconian or absolute.  It should be enough that the more commonly accepted language is now currently used by a substantial number of parties in the trade.   A declaration from a trade association could be useful.  Secondary sources such as publications would also be helpful.

5. No. 

6. Both.  The Trademark Register should reflect the real world.  The real world is dynamic and fluid.

7. Not necessarily.  It really will depend on a case-by-case basis but I doubt this will be a problem.

8. No.  The file history will reflect what the original ID was and thus to what the dates pertain.  The Miscellaneous Statement box in TEAS could be used to reflect the history and evolution. If the goods are in essence the “same”, the dates apply to the new ID.

9. None.  If the goods are in essence the “same”, the public will find the mark in the database.

10.  This change is very necessary.  The tricky issue that I see for the PTO is its recent trend toward very, very specific IDs.  Taking music as an example, the way to solve the phonograph records to 8-tracks to cassettes to CDs problem is to allow any or all of these to have a “musical recording” ID to provide future flexibility.  If the PTO merely allows cassettes to be amended to CD’s at the time of an 8-15, that is a short-sighted solution for obvious reasons – a few years from now, there likely will be something new and then yet another amendment would need to be filed. I believe that right from the get-go, the ID should be musical recordings.  Frankly, although Madrid is given as supposed reason, I just don’t agree with this recent insistence on very detailed ID’s, especially from intent to use applicants who sometimes don’t know exactly what the goods or service might turn out to be.   I see nothing wrong with musical recordings, for example.  Please don’t allow this detailed ID trend to prevent  the change being proposed.

 

Thank you

William A. Finkelstein
Steptoe & Johnson LLP
2121 Avenue of the Stars
Suite 2800
Los Angeles, CA  90067
wfinkelstein@steptoe.com
phone 310-734-3266
fax 310 734-3166

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