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

From: Allison S. Ricketts []
Sent: Sunday, November 24, 2013 4:45 PM
To: TMFeedback
Cc: Susan Douglass
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.

I am a partner at Fross Zelnick Lehrman & Zissu, P.C., a New York City law firm specializing in trademarks. Our firm (in an email from Susan Upon Douglass) has already submitted comments on this topic. I am listed as the correspondent for about 1600 applications/registrations in the USPTO database, of which about 750 are currently active. I am submitting additional comments responsive to a few of the questions (questions are in red, my responses are in black).

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)?

They should be allowed at any time. Some applications remain pending for many years and technology may evolve during that time. But even if the application has not been pending a long time, I think such amendments should be allowed. Moreover, if an applicant files for "musical CD's" and then learns that "musical sound recordings" is equally acceptable and accurate, I think the applicant should be allowed to make such an amendment during the course of prosecution.

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?

I don't think a special process or showing should be required as a general rule. A Section 7 amendment for registrations, and a regular amendment or post-publication amendment during prosecution of pending applications, seems an adequate process, and can be subject to usual USPTO review as to whether the amendment is permissible. The Office should have the discretion to request information or specimens to show that the goods are actually offered by means of the new technology; and might also want to be able to request information to explain the nature of the technology when it is so "cutting edge" that it is not yet commonly known/understood.

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, the ability to make such an amendment should not be limited to specific categories of goods. It is impossible to predict the changes that may come about by technological evolution. For example, there could come to exist technology that allows consumers to create their favorite fragrance in their own home from molecules in the water and air, using recipes provided by a fragrance manufacturer. In such an instance, the fragrance manufacturer/owner of a registration covering "perfume" in Class 3 might be allowed to change its goods to cover the service of providing the means to create its perfume, rather than selling the end product itself.

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?

No. Even if the goods are not obsolete, there is no harm in allowing the goods to be updated to match new technology so long as the goods are also provided by means of the new technology.

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

Bear in mind that even under present-day practice, the first use date stated in a registration does not necessarily apply to all of the goods/services stated in the registration. The first use date needs to correspond to only a single item in a class. And, if the item(s) with the earliest first use date is deleted when the Section 8 is filed, there does not presently exist any requirement to amend the date of first use in the registration to match the remaining goods.

§ Example: Application in Class 9 covers:

* Sunglasses (date of first use 1982)

* Downloadable software (date of first use 2006).

§ Reg issues in 2007 with date of first use of 1982 in Class 9.

§ Section 8 filed in 2013 deletes sunglasses.

§ Registration now covers "downloadable software" with a first use date of 1982, before it was even possible to provide downloadable software.

Thus, the present system already allows for plenty of inaccuracy in the first use date.

Moreover, it is already the case that the mark itself in a registration can be amended to reflect modernization, and there is no requirement in such instances that the dates of first use be updated. By the same token, I do not see a problem with leaving the first use date "as is" when the goods are amended to reflect modernization.

10. Please provide any additional comments you may have.

A. I do not believe that parties who are using a mark and have established substantial goodwill through decades of use should lose their valuable registered trademark rights through no fault of their own, simply because of technology advances. Consumers continue to attribute strong source-identifying significance to the mark through evolution in technology, so allowing these registrants to update their registrations to match the current-day method of delivery of the goods/services seems fair. This is especially so since the way that goods/services are described in a trademark application is also subject to evolution in USPTO policy about sufficient specificity of the goods (for example, until the 1990's, the PTO would not accept "musical sound recordings" as sufficiently specific,- if registrants had been allowed to describe their goods in that way in earlier decades, then some of these registrants would not be facing the problem of not being able to maintain their registrations now).

B. Some ask why registrants with outdated goods/services cannot simply file new applications covering the new technology goods/services. While they can certainly do so, the problem is that sometimes they cannot obtain registration for these new applications, at least not easily and inexpensively. In intervening decades, other registrations may have issued for goods/services that were not considered "related" then, but that are now deemed closely related, prompting 2(d) refusals. It can be expensive to have to approach intervening registrants for consents, or to petition to cancel. Moreover, a mark might face a refusal to its inherent registrability under current Office practice (descriptiveness, geographic deceptiveness, for example), when it did not before.

Thank you for your consideration of these comments.



Allison Strickland Ricketts

Fross Zelnick