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

From: Adam Vieda []
Sent: Monday, December 02, 2013 2:20 AM
To: TMFeedback
Subject: "Technology Evolution"

Dear Ladies and Gentlemen:

Due to the intervening (holiday) weekend, please accept this submission as timely.
Thank you.

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.

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?

Answer: Absolutely not.

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)?

Answer: Absolutely not. If it does not comply with the existing rule, such a proposed amendment should be rejected.

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 NEW application should be required.

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?

A NEW application should be required.

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?

A NEW application should be required. How else will third parties have sufficient notice of trademark claims for the other goods? This will merely lead to even more unnecessary litigation and more costly litigation.

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?

YES - it certainly can be and often is. For example, providing content via a website (which can be and often is provided by small to medium sized companies) website is typically a much different type of service than providing comparable content via satellite, which is typically limited to large companies operating in completely different channels and often catering to different consumers.

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

No, they certainly would not be. How can use related to eight-track tapes be comparable to use for flash drives or MP3 files? These are totally different goods and in fact different industries altogether.

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

This kind of amendment would essentially obliterate fair notice to third parties and would merely cater to a few large and mostly uninformed entities that unfortunately control the most influential interest groups.

10. Please provide any additional comments you may have.

The USPTO has previously taken the position that such amendments impermissibly expand the scope of a registration, in contravention of Trademark Rule 2.173(e).

The advocates of this change do not appreciate the importance of these rules, and wrongly believe that such a quick fix will solve problems with descriptions of goods that are most often the result of poor communication with clients by an attorney or uninformed or careless application prosecution in general.

The rules concerning amendments for descriptions of goods serve the important purpose of placing the public (including trademark owners) on notice of the breadth of rights to be afforded a mark by a (future) registration. Providing a broad exception to these rules would merely add confusion to the prosecution and litigation of trademark applications and cases, as well as opposition and cancellation proceedings.

For example, how would a small to medium-sized business owner with earlier rights protect her rights when a party with later rights that did not correctly or completely identify its goods during prosecution seeks to change its listed goods to more closely resemble those of the earlier owner? It is not difficult to imagine scenarios in which this liberalized exception to the rule would be prolifically abused by those who file and prosecute applications in a sloppy and haphazard manner by failing to accurately identify their goods and services in their initial application as currently required. How would the PTO prevent registrants from amending their goods to goods that would have resulted in a refusal for confusing similarity if listed in the original application? These and other similar problems will needlessly lead to more litigation and more complex and costly litigation.

Those of us who competently practice trademark prosecution and enforcement have no difficulty abiding by the current rules; so there is no reason to amend them. To maintain the soundness of our trademark application and registration system, this proposal should be firmly, promptly and permanently rejected.