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

From: John McCormick []
Sent: Tuesday, December 03, 2013 08:57 PM Eastern Standard Time
To: TMFeedback
Subject: Technology Evolution

Comments of John P. McCormick Regarding:

"Requests for Comments: Post Registration Amendments to

Identifications of Goods and Services Due to Technology Evolution"

Summary of the Current

Treatment of Amendments to Registrations Based on § 1 or § 44:

The Trademark Manual of Examining Procedure offers specific guidance on the treatment of amendments to the identification of goods and services on Trademark Registrations based on § 1 or § 44. The specific section dealing with this issue, i.e., Amendment of Identification of Goods or Services is found at TMEP 1609.03. The relevant portion of TMEP § 1609.03 reads as follows:

Amendment of Registration Based on §1 or §44 Application

In registrations based on applications under §§1 and 44 of the Trademark Act, amendments may be made to the identification of goods/services to restrict the identification or otherwise to change it in ways that would not require republication of the mark. However, goods/services may not be added to a registration by amendment. See 37 C.F.R. §2.173(e). Changed circumstances (e.g., new technology) will not render acceptable an amendment that is not otherwise permissible. See In re Capp Enterprises, Inc. , 32 USPQ2d 1855 (Comm'r Pats. 1993); In re Fortex Industries, Inc. , 18 USPQ2d 1224 (Comm'r Pats. 1990); In re Carter Hawley Hale Stores, Inc ., 200 USPQ 179 (Comm'r Pats. 1978). For example, if the goods in the registration are identified as "phonograph records," the identification of goods cannot be amended to "compact discs."

In a multiple-class registration, deletion of less than all the goods or services in a single class constitutes an amendment, whereas deletion of an entire class constitutes a surrender of the registration for cancellation as to the class deleted. See 37 C.F.R. §2.172. See TMEP §1608 regarding surrender.

The above, TMEP § 1906.03, also references a number of cases which show how courts have dealt with the issue of amending the identification of goods and services, specifically: In re Capp Enterprises, Inc. , 32 USPQ2d 1855 (Comm'r Pats. 1993); In re Fortex Industries, Inc. , 18 USPQ2d 1224 (Comm'r Pats. 1990); In re Carter Hawley Hale Stores, Inc ., 200 USPQ 179 (Comm'r Pats. 1978).

In In re Capp Enterprises, Inc., 32 USPQ2d 1855 (Comm'r Pats.1993), Capps Enterprises, Inc. sought to amend the identification of goods and services for the mark FEARLESS FOSDICK from "comic drawings, published in daily and Sunday newspapers" to "reproductions of comic drawings..." in book form. Capps Enterprises, Inc. sought this amendment because the author of the comics had passed away, and as such the mark was no longer in use for reproduction of comic books in newspapers. The Commissioner of Patent and Trademarks rejected the argument that the change in circumstances merited allowing an amendment where it would normally be rejected. The opinion states:

[A]n amendment to a registration which is not otherwise permissible cannot be rendered acceptable simply because of changed circumstances. If the focus of petitioner's business has changed, it is free to file a new application for registration of the mark on or in connection with the goods on which the mark is now used. Id. at 8-9.

In In re Carter Hawley Hale Stores, Inc., 200 USPQ 179 (Comm'r Pats. 1978), Carter Hawley Hale Stores, Inc. petitioned the Commissioner to amend its NEIMAN-MARCUS registration from "men's clothing - namely, overcoats, suits, jackets, sport coats, trousers, slacks, outer shirts, robes, bathrobes, beach shirts, swimming trunks, hosiery, garment belts, neckties, and hats" to "men's clothing." The Director of Trademark Examining Operations rejected this amendment, because although deletions are normally allowed, by deleting qualifying language and retaining only the general term, it worked to expand the scope of the registration. The Commissioner upheld this decision, finding that it did act to expand the identification of goods and services, despite the extent of the enumerated items in the original filing.

In In re Fortex Industries, Inc., 18 USPQ2d 1224 (Comm'r Pats. 1990), Fortex Industries, Inc. (Fortex) petitioned the Commission to amend its FORTIFLEX mark. Fortex argued "animal feeders" could be added to its identification because the United States District Court for the Eastern District of New York had found that Fortex was able to use its mark on "Animal Feeders" and "Industrial Containers," when such use was challenged in that court. Fortex moved to have the Commissioner amend it's FORTIFLEX registration to reflect the district court's decision, such that it was amended to include "animal feeders" and industrial containers, where previously had not. However, the Commissioner rejected Fortex's argument that the registration should automatically be amended, and instead held that it must go through the administrative process, including payment of fees and publication for opposition, to ensure that there was no likelihood of confusion with any other mark, because the court had only considered the issue as to the mark that was challenging Fortex's use in commerce. The Commissioner notes that Fortex already has a registration for most of the goods, and that "[i]t will only be denied a registration if an unknown third-party that was not a party to the litigation establishes superior rights in the mark on animal feeders and/or industrial containers. Certainly the court did not intend to prejudice the rights of third-parties who had no notice of Fortex's attempt to register the mark for these goods." Id. at *15.

Responses to Particular Inquiries:

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.

I am third-year law student at the University of New Hampshire School of Law (formerly Franklin Pierce Law Center) which has long been recognized as one of the top institutions for the study of Intellectual Property. I am currently a Student Intern for the University of New Hampshire Intellectual Property and Transaction Clinic, the participants of which are part of the United States Patent and Trademark Office's pilot program granting Student Interns limited practice rights before the Trademark Office. On top of my clinic experience, I have taken extensive course work in the field of Trademark Law, including: Fundamentals of Intellectual Property, First Amendment Law, Trademarks and Deceptive Practices, Federal Trademark and Copyright Registration Practice, Advanced Topics in Trademarks, and Online Brand Management.

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?

The USPTO should not allow amendments to a registration's identifications of goods/services based on changes in the manner or medium by which products and services are offered for sale and provided to consumers. It seems that the only reason that a registrant would seek such an amendment is because they are making a business decision to move in a new and/or different direction with use of their mark, because that is what is really occurring when technology changes. This reason does not justify allowing amendments where such changes have never been allowed, and indeed where courts have specifically stated: "An amendment to a registration is not otherwise permissible cannot be rendered acceptable simply because of changed circumstances." In re Capp Enterprises, Inc., 32 USPQ2d *1, at *8-9 (Comm'r Pats. 1993).

If the amendment is sought because of a newly developed manner or medium by which products and services are offered for sale and provided to consumers, then the decision to use the mark in association with the new development is a different use of the mark; therefore, if it is to receive protection, it should withstand the already established administrative process to confirm its validity. Most trademark owners will not start to use their mark in connection with a new technology without careful thought. It is a business decision to pursue a new avenue that might be appealing to some consumers. That decision to utilize the new technology means that the mark will be used in connection with a technology with which the good or service was never before affiliated. This also means that the Trademark Examiner did not consider any potential likelihood of confusion at the time it was going through the examination process. To allow a blind expansion of the identification of goods and services could lead to infringement of the rights of others without any opportunity for those third parties to defend their mark.

If the new goods or service identification is as substantially related as those seeking the amendment make it seem, then there should be no issue registering the mark in connection with those goods. The registrant's pre-existing registration will help them get through the examination process, and should also have acted as defense against others using a confusingly similar mark in relation to such a good or service identification. The costs to trademark owners to file a new registration is minimal, while the risk to unknown third parties is potentially of great significance.
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)?

These amendments should not be permitted either prior to, or post registration. If the registrant wishes to amend their identification of goods and services before the mark has gone through to the Notice and Opposition period, then they are able to withdraw their pending application and start over, or file a second application for the new technology aspects. To allow applicants to make amendments at any point prior to registration is a threat to the efficiency of the process. Given the significant number of trademark applications received by the USPTO, to slow the process down and allow applicants to add elements throughout the process could be catastrophic to efficiency.

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?

If the registrant/applicant wants to amend their identification of goods/services, then they should have to undergo the entire process again, regardless of pre- or post-registration. No matter what, the registrant/applicant needs to comply with the requirements set forth by the Commissioner in In re Fortex Industries, Inc.:

[A]ll of the statutory requirements governing applications, which have not been complied with in relation to the new class, should now be complied with. These requirements include: providing specimens of the mark as used on those goods, paying the filing fee for the new class, conducting a search for the added goods and class, publishing the mark in the new class for opposition.

There is already a process in place for such a filing. It is a new application that must go through the established process so no rights are accidentally infringed.

In other words, if registrants seek to amend applications in such a way as to broaden their identification of goods and services, they must go through the entire process of clearing the mark, complete with likelihood of confusion analysis, Publication for Opposition, and a fee.

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?

The amendments should not be allowed, regardless of which field it is. To allow amendments in certain situations is a significant slippery slope risk, as well as threat to efficiency. To allow amendments in some situations would make it difficult in drawing the line as advances in technology and means blends goods, services and fields as they are currently conceived. Similarly, allowing an opening for these amendments to exist makes it more likely that with constant pestering (lobbying) it would become common place. The risk to other marks is too severe to allow otherwise.

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?

There should be no distinction between products, regardless of whether technology is evolving or phased out. Deciding to use your mark on a different product as it is currently used is not a simple decision. The goodwill that you have established with the original mark may not transfer as easily when applied to a different medium. It is a risk that mark owners make, and a distinct business decision. The importance of that decision, and the question of whether goodwill will transfer is exactly why there should not be an exception just because a technology is phased out or evolving. New uses constitute new risks for owners, and one of those risks is whether they can easily transition into that market with their already established mark. It is likely that they will be able to, given the similarity of the uses during the likelihood of confusion analysis, but to blindly allow such an amendment is too great a risk to third parties who may already have an established mark.

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?

It certainly is expanded. To add items to the identification of goods and services expands the breadth of protection to what was previously identified and the added items. In other words, one plus one always equals two; it is not one plus one still equals one.

This applies even if a registrant petitioned to remove qualifying language from the registration. The court addressed this issue in In re Carter Hawley Hale Stores, Inc., where the company sought to amend its identification of goods and services in its NEIMAN-MARCUS brand from "men's clothing - namely, overcoats, suits, jackets, sport coats, trousers, slacks, outer shirts, robes, bathrobes, beach shirts, swimming trunks, hosiery, garment belts, neckties, and hats" to "men's clothing." The Commissioner rejected this expansion because "by elimination of qualifying language from the recitation of goods, petitioner's registration is broadened to cover every conceivable item of men's clothing."

8. Would the original dates of use remain accurate if such amendments are permitted?

This all depends on how well the registrant describes the identification of goods and services in their new registration. If it is written in such a way that it includes prior use of their mark, as well as the new use, then the specimen they must provide can be satisfied by the original use and thereby the original date of use. However, if they submit a new registration and their identification of goods and services is too different to use the original specimen and date of first use, then their date of first use would be different.

In a situation where the date of first use is different, then possibly a new statement within the Additional Statements can be added, namely: "Prior Registration [Reg. No. ______] under an earlier used technology, namely _______."

9. What would the impact of such amendments be on the public policy objective of ensuring notice of the coverage afforded under a registration?

If amendments to the identification of goods and services were allowed without undergoing a publication for opposition, then other trademark holders and senior users have a significant risk of having their rights infringed. Even if it seems like a small change they are making to their identification of goods and services, that small distinction may have been what allowed them to receive their registration originally, or it might even provide a backdoor for trademark owners who previously had agreements limiting the extent of their use. Without a chance for opposition, these rights and agreements could easily be ignored to devastating effect.

10. Please provide any additional comments you may have.

There does not seem to be a good justification to allow amendments expanding the scope of protection, but instead every reason not to. Registrants will always have to deal with developing technology, and to provide easy expansion into a new market without proving their right to be there poses to great a danger to other mark holders. It might be convenient to some, but considering the minimal risk in filing a new registration if there is such strong evidence of use of that mark and the substantial risk of harm to others, these amendments should not be allowed. Indeed, the risk/benefit analysis dictates that to allow the amendments would be irresponsible and against the public good.