Public Comments on Proposal to Allow Amendments to Identifications of Goods and Services Due to Technology Evolution

From: Gruber, Jennifer [mailto:Jennifer.Gruber@turner.com]
Sent: Thursday, October 30, 2014 1:09 PM
To: TM Policy
Subject: USPTO Request for Comment on Post-Registration Amendment of IDs

Dear Ms. Cohn:

Turner Broadcasting System, Inc. (hereinafter, “Turner”), a leader in the media industry appreciates the opportunity to provide comments in response to the United States Patent and Trademark Office’s Proposal to Allow Amendments to Identifications of Goods and Services Due to Technology Evolution (the “Proposal”).

Amendment of Registrations (and Applications) Due to Changes in Evolving Technology:

Turner generally favors a change to the current amendment policy to allow for changes in technology insofar as there is no expansion of the goods and services in the recitation as amended and such amendments are directly necessitated by a change in technology or manner of delivery of the goods and/or services.

Waiver of Applicable “Scope” Rule and Showing that an Extraordinary Situation Exists:

Turner views the Proposal’s amendment process that requires submission of a Section 7 request for amendment for registered marks, in addition to a  petition to the Director requesting a waiver of the applicable “scope” rule (Trademark Rule 2.71(a), pre-registration, or Rule 2.173(e), post-registration) pursuant to Trademark Rule 2.146 and to make a showing that an “extraordinary situation” exists as overly complex, limiting and costly. This process would require declarations by the owner that the mark in question is no longer used in connection with the original registered or applied for goods and/or services, and that the  owner is using the mark in connection with goods and/or services reflecting an evolution in technology. If the amendment of a given registration does not result in a material alteration of the goods and services or change in scope, then a waiver of the applicable “scope” rule and a showing of an “extraordinary situation” seems unnecessary.

Owners should not have to declare that they are no longer using their marks in connection with the original goods and/or services of the registration, while additionally declaring that their marks are in use for the goods and/or services of the evolving technology.  Again, an amendment that is based on a non-material alteration should not be required to request a waiver showing that an “extraordinary situation” exists.  Such a requirement could in fact prejudice owners of both outdated and evolving technologies. For example, an amendment of a registration for the CARTOON NETWORK logo in class 9 with a recitation of “multi-media software recorded on CD-ROM featuring cartoons and family entertainment programming, video game software” to remove the delivery method of “recorded on CD-ROM” and replace it with “DVDs” would result in loss of incontestability for the underlying content of the “multi-media software featuring cartoons and family entertainment program, video game software” when that content has actually been  in use and protected for an amount of time that it should be allowed to retain its incontestability status regardless of the delivery method. 

Abandonment of  “Incontestable” Status Under § 15 of the Trademark Act, 15 U.S.C. § 1065:

Turner believes that the Proposal regarding abandonment of the “incontestable” status is unclear and limiting. If the amendment is based on a non-material alteration of the goods and services, driven by evolving technology, where the old technology is obsolete, such evolving technology should be viewed as a continuation rather than a new starting point that allows for the preservation of the original incontestable status and dates of first use.  Indeed, it is the underlying content, not the method of delivery, represented by the brand. 

It appears from the language in the Proposal that incontestability is impacted only to the changed recitation.  As a result, a multi-class registration or application could have two different incontestability dates. There are questions surrounding how such a difference in dates could be tracked and whether having two or more different dates of incontestability in one registration or application would necessitate a further Petition to Divide.

Turner also disagrees with the Proposal’s requirement that prohibits owners from filing an affidavit or declaration of incontestability until five years after the date of the amendment of the goods and/or services. If an owner can show at least five years of continuous use of the mark in connection with the evolved technology goods and/or services of the amendment there does not seem to be a valid reason why the owner has to wait five years from the date of the amendment to file for Incontestability under Section 15, as long as the other requirements under the statute are met.

Dates of First Use: 

As noted above, Turner favors the preservation of the owner’s incontestability claim and the original dates of first use.  The Proposal states that “[a]lthough the original dates of use would remain accurate, the “evolved” dates would be made of record within the TSDR database.”  It is unclear what is meant by the phrase “remain accurate.”   Turner is concerned that there could be unfavorable repercussions by having the “evolved” dates, and not the original first use dates, recorded in the TSDR. 

Regards,

Jennifer Gruber

Jennifer M. Gruber l Senior Counsel  l Turner Broadcasting System, Inc. l One CNN Center, Atlanta, GA 30303 | 404.827.5122  jennifer.gruber@turner.com

This e-mail message is intended for the sole use of the intended recipient(s) and may contain information that is confidential, privileged and/or attorneys' work product.  Any review or distribution by any other person is prohibited.  If you are not the intended recipient, please immediately contact the sender and delete all copies.