Amending your registration’s goods/services when technology evolves

What is the technology evolution pilot program?
How long will the pilot last?
Am I eligible to participate in the pilot? 
How will the USPTO process my request?
What should I do if I have an upcoming required maintenance filing deadline?
Are there additional considerations?
How do I submit my technology evolution pilot program request?
Examples of acceptable and unacceptable amendments
Pilot statistics
More information


The United States Patent and Trademark Office (USPTO) recognizes that technology is always changing. Trademark owners sometimes adjust the way they do business to stay competitive in rapidly evolving fields. They may offer their goods/services in an updated format when those listed on their registration are outdated or obsolete. This pilot program offers these trademark owners, under limited circumstances, an opportunity to amend their registrations. 

What is the technology evolution pilot program?

We have initiated a pilot program that allows certain trademark owners to amend the goods/services identified in their trademark registrations. You may be able to participate if you provide the same fundamental goods/services through an updated means, method, or format. For example, if your registration identifies your goods as “printed children’s books,” you may be eligible to amend the goods to “downloadable electronic children’s books” if you no longer provide the books in a printed format. We call the goods/services in their new form the “evolved” goods/services. For more examples, see below

How long will the pilot last?

The pilot does not currently have a termination date. The results of the pilot will help us determine if we will continue to allow such amendments in the future. Registration amendments are permanent, regardless of the outcome of the pilot program.

Am I eligible to participate in the pilot?

You are eligible to participate if you meet all of the following requirements:

  • You own a registered trademark
  • You provide goods/services in their evolved form with the same underlying content or subject matter as the original goods/services
  • You no longer provide the original form of your goods/services
  • You no longer provide any goods/services identified in your registration that contain the same underlying content

See below for examples of acceptable amendments.

You are not eligible to participate if:

  • You still use the mark on the original goods/services or on other goods/services identified in the registration containing the same underlying content. 

    For example, if your registration identifies your goods as “phonograph records and audio tapes featuring music,” you would not be eligible to amend the goods to “phonograph records and compact discs featuring music.” This is because you still provide phonograph records, which have the same underlying content as your evolved goods.  Instead, you would need to delete the goods/services that are no longer in use from the registration and file a new application to seek registration of your mark for the evolved goods/services.
     
  • If the identification of goods/services in your registration is broad enough to include your evolved goods/services.

    For example, if your registration identifies your goods as “newsletters in the field of accounting” (International Class 16), it can be amended to “providing on-line newsletters in the field of accounting” (International Class 41) without a request under the pilot program. Instead, you can file a Section 7 request to narrow the scope of your goods/services. Preview the section 7 form here.  See TMEP §1402.07(c) for more information.

See below for examples of unacceptable amendments. 

How will the USPTO process my request?

We will review your request within two months to determine if it is eligible and complies with all pilot requirements. If your request is not eligible for the pilot, it will be dismissed.  If your request is incomplete, we will send you a letter to notify you of the missing requirements. You must respond to the letter within 30 days or your request will be denied. When your request is complete, we will publish your proposed amendment for public comment on our website.

We will review all public feedback submitted within 30 days of publication. We will also search our database of registered and pending marks to determine if any marks conflict with your amendment. Both of these steps help us assess the risk of third-party harm. If either the search or public comments uncover potential third-party harm, it may be a basis for not granting the petition.

If we allow your amendment, it will be published in the Trademark Official Gazette. You will receive an updated registration certificate that includes your amended goods/services and any other goods/services in the registration not covered by your request.

What should I do if I have an upcoming required maintenance filing deadline?

If you submit a request under the pilot program and have an upcoming maintenance filing deadline, we recommend that you do the following:

  1. File your maintenance filing for the evolved goods/services since the original goods/services are no longer in use.
  2. Use the miscellaneous section of the form to explain that you have filed a request under the technology evolution pilot program and request that the Post Registration Division defer review of your maintenance filing until a decision has been reached on the request under the pilot.

If you fail to submit a required maintenance filing under Sections 8, 9 or 71 of the Trademark Act, your registration will be canceled or expire.

Are there additional considerations?

Madrid-based registrations

Because Madrid-based registrations are based on the underlying international registrations, there are additional considerations.  The scope of your amended goods/services must not be beyond the scope of the original goods/services listed in your international registration. Additionally, you may not change the classification of your goods/services.

Incontestable status

If your mark has incontestable status, it will not be transferred to your amended goods/services. You may not file or refile for incontestability for five years following the approval date of your amendment.

How do I submit my technology evolution pilot program request?

1. Open the “Petition to the Director under Trademark Rule 2.146” form in the Trademark Electronic Application System (TEAS) to submit a combined Petition to the Director and Request for Amendment Under Section 7. You can find a link to this form on the petition forms page. You must submit your request through TEAS to participate in the pilot program.

2. Enter the title “Petition to Allow Amendment Due to Technology Evolution” at the top of the free-text portion of the form.

3. Enter your petition information within the free-text portion of the form. View a sample of the text.

  • Request a waiver of the “scope” rule(Trademark Rule 2.173(e), 37 C.F.R. §2.173(e)) which states that no amendment to the identification of goods/services in a registration will be permitted except to restrict the identification or change it in ways that would not require republication.
  • Provide a declaration of facts that addresses the following:
    • Based on changes due to evolving technology in the manner or medium by which products and services are offered for sale and provided to consumers, you cannot show use on the original goods/services;
    • You currently use the mark on other goods/services reflecting the evolved technology, and the underlying content or subject matter remains unchanged; and
    • Absent an amendment of the identification, you would be forced to delete the original goods/services from the registration, and thus lose protection in the registration in relation to the underlying content or subject matter of the original goods/services.
    • You agree not to file or refile an affidavit or declaration of incontestability under §15 of the Trademark Act, 15 U.S.C. §1065, as to the evolved goods/services for at least five years from the date of acceptance of the amendment.           

4. Provide dates of use anywhere and in commerce for the goods/services in their evolved form.  Although the original dates of use would remain in effect in the registration, the “evolved” dates would become part of the public record.

5. Enter your current and proposed identifications within the free-text portion of the form. View a sample of the text. Use the Trademark ID Manual to help you choose the best description for your evolved goods/services.  All proposed identifications must comply with current requirements regarding specificity and classification.   

6. Attach a specimen that shows current use of your mark in commerce on or in connection with your amended goods/services.

7. Provide an affidavit or signed declaration under Trademark Rule 2.20, 37 C.F.R. §2.20, to verify the information provided in your request.

8. Pay both the “petition fee” and the Section 7 “filing amendment to registration fee.” 

For additional information about the petition and amendment requirements, please see the announcement of the pilot program.

Examples of acceptable and unacceptable amendments under the pilot

Acceptable amendments

  • Original: “Phonograph records featuring music” (International Class 9)
    Amended: “Musical sound recordings” (International Class 9)
     
  • Original: “Prerecorded video cassettes in the field of mathematics instruction” (International Class 9)
    Amended: “Video recordings featuring mathematics instruction” (International Class 9)
     
  • Original: “Floppy discs for computers for word processing” (International Class 9)
    Amended: “Providing on-line non-downloadable software for word processing” (International Class 42)
     
  • Original: “Downloadable software for use in database management” (International Class 9)
    Amended: “Software as a service (SAAS) services featuring software for use in database management” (International Class 42)
     
  • Original: “Printed books in the field of art history” (International Class 16)
    Amended: “Downloadable electronic books in the field of art history” (International Class 9)
     
  • Original: “Telephone banking services” (International Class 36)
    Amended: “On-line banking services” (International Class 36)
     
  • Original: “Entertainment services, namely, an ongoing comedy series provided through cable television” (International Class 41)
    Amended: “Entertainment services, namely, an ongoing comedy series broadcast via the Internet” (International Class 41)

Unacceptable amendments

  • Original: “Downloadable software for use as a spreadsheet in the field of accounting” (International Class 9)

    Amended: “Providing on-line non-downloadable software for use as a spreadsheet in the field of business management” (International Class 42)
    Why it’s unacceptable: The subject matter of the spreadsheet software has changed from accounting to business management.
     
  • Original: “Printed magazines in the field of finance” (International Class 16)

    Amended: “Printed magazines in the field of finance” (International Class 16) and “Providing on-line magazines in the field of finance” (International Class 41)
    Why it’s unacceptable: The petitioner is still using the goods in their current form. The petitioner may file a new trademark application for the services in International Class 41.
     
  • Original: “Phonograph records featuring music” (International Class 9)

    Amended: “Streaming of audio material in the nature of music” (International Class 38)
    Why it’s unacceptable: The underlying goods/services have changed. The petitioner originally provided musical recordings, but now provides a service that transmits music.  An amendment would be permitted from “phonograph records featuring music” in International Class 9 to “providing on-line music, not downloadable” in International Class 41, which is a service of providing content in a new manner, i.e., “on-line.”
     
  • Original: “Video game tape cassettes and video game cartridges” (International Class 9)

    Amended: “Video game discs and video game cartridges” (International Class 9)
    Why it's unacceptable: Although the petitioner is no longer using the mark on "video game tape cassettes," the petitioner is still using the mark on "video game cartridges." Without the amendment, the petitioner would not lose protection in relation to the underlying content of the original goods. The petitioner may file a new trademark application for "video game discs" in International Class 9. 
     

Pilot statistics

These statistics reflect the total number of petitions (requests) since the pilot began on September 1, 2015.

  • Petitions received: 135
  • Petitions granted: 68
  • Petitions dismissed or denied: 34
  • Petitions published for public comment (no decision yet): 23

(updated September 30, 2017)


More information

Request for comments on proposal
Comments on proposal
USPTO Roundtable
Request for comments on USPTO policy on this subject
Comments on USPTO policy on this subject