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

From: Robert O. Fox [mailto:rfox@luedeka.com]
Sent: Monday, September 09, 2013 9:08 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. Trademark practitioner.  President of 11 attorney IP firm.  Our firm files ~150 trademark applications per year.

2.  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.

3.  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)? Amendments should be available at all times, during the application phase and post registration.

4.  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? No

5.  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? No. For example, dental floss used to be made primarily of silk in days past.  Today, polymeric materials are the primary material. 

6.  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.

7.  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? Not necessarily.

8.  Would the original dates of use remain accurate if such amendments are permitted? Technically no-under the current excessively specific description requirements.  An original broader description should be permitted.  Any actual change in use, be it in the presentation of the mark or the goods would still have to meet the tacking requirements  in a civil action.  That is, owners must still prove their use when they bring an action to enforce their rights. 

9.  What would the impact of such amendments be on the public policy objective of ensuring notice of the coverage afforded under a registration?  The amendments would not have any significant impact.

10.  Please provide any additional comments you may have.  I believe exact descriptions as required today are problematic, and one of the reasons this present issue has arisen.  20 years ago, a perfectly fine description of goods for class 25 was Clothing.  The current trend is to require very specific recitations, such as button down dress shirts. So, 5, 10 years down the road as the business grows and changes with fashion trends, the trademark owner may find that it is not selling button down dress shirts, but is selling pants.  Perhaps returning to broader- and briefer descriptions would eliminate this whole issue and eliminate the need for such amendments.  That said, I understand why very broad descriptions may not give the information often necessary for consideration of channels of trade and other issues involved in a 2(d) analysis.  But, the current trend of over-specificity is not good either.

 

Robert O. Fox, Esq.

 Patent & Trademark Attorney

 

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