From: Karen Lee [klee@tlolawfirm.com]
Sent: Wednesday, November 13, 2013 11:07 AM Eastern Standard Time
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.
This comment is from Thomas & LoCicero PL, a Florida law firm representing more than 30 trademark owners. Our firm currently administers more than 500 active U.S. trademark applications and registrations. Our firm has 12 attorneys, all of whom are involved to some extent in our trademark practice.
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 allowed both prior to registration and post-registration. Because intent-to-use applications can be pending for up to three years, changes in media or technology can occur while an application is pending. Applicants ought to be permitted to modify designated goods and services accordingly.
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?
A short statement explaining the basic nature of the goods or services and the change in media or technology ought to suffice. Requests to amend goods or services ought to be one of the options in the TEAS filing forms for Combined Declarations of Use and Incontestability under Sections 8 & 15, Combined Declarations of Use and/or Excusable Nonuse/Application for Renewal of Registration of a Mark under Sections 8 & 9; and Amendments to Allege Use/Statements of Use. Requests to amend goods and services at times other than when regular filings are due could be submitted using the current form for a Request for Amendment Under Section 7.
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?
Amendments should not be limited to certain goods, services or fields. As technology continues to evolve, goods and services in more and more fields will likely be delivered through new technology sources. Any limits created could become outdated quickly.
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?
Amendments should be permitted for both categories of products. As noted above, it is not currently possible to predict which particular products will evolve or be phased out in the future.
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?
No. If the basic nature of the goods and services remains the same, and only the delivery medium or related technology has changed, the scope of protection is not being expanded.
8. Would the original dates of use remain accurate if such amendments are permitted?
Yes. The owner of a registered mark should retain all rights it has established under the initial date of first use on the registration for the original goods or services despite changes in media or technology, because to the consumer, the basic purpose of the goods or services remains the same.
9. What would the impact of such amendments be on the public policy objective of ensuring notice of the coverage afforded under a registration?
Such amendments would be consistent with that policy, because the amendments would not broaden the basic scope of the registration. In addition, amended descriptions of goods and services could be published in the Official Gazette, and amended descriptions could appear in the electronic data displayed via TESS and TSDR. Language added to the descriptions could be designated by pre-determined punctuation marks, possibly French or curly brackets { }, in the manner that square brackets [ ] are currently used to designate goods or services deleted from registrations.
10. Please provide any additional comments you may have.
Thank you for your consideration.
Please note our new street address --- 601 S. Boulevard, Tampa, FL 33606
Karen Lee
Florida Registered Paralegal
Thomas & LoCicero PL
Focused on Business Litigation, Media and IP Law
klee@tlolawfirm.com | tlolawfirm.com
ph: 813.984.3060 | direct: 813.984.3067
fax: 813.984.3070 | toll-free: 866.395.7100
601 South Boulevard, Tampa, FL 33606
Tampa | South Florida