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

From: Plotkin, Steve []
Sent: Tuesday, November 26, 2013 09:09 PM Eastern Standard Time
To: TMFeedback
Cc: Plotkin, Steve
Subject: Technology Evolution

The Walt Disney Company ("Disney") has the following responses to the USPTO's specific inquiries on this policy change:

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.

Disney's subsidiaries and affiliates own thousands of pending U.S. trademark applications and issued U.S. trademark registrations.

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?

Disney supports permitting registrants to amend the goods and services recited in trademark registrations to reflect evolving technology for delivery of content, provided that (i) the field of the content contained on the media (e.g., "music" or "animated programming") in the amended recitation does not exceed the scope of content recited in the existing registration (for older registrations wherein the field was not required to be recited, any content that could have been contained on the media recited in the original registration should be deemed not to exceed its scope), and (ii) the proposed amended registration is published for opposition. Priority derived from an older registration should not be lost when the mark has remained in use for content but the manner or means by which the content is delivered has evolved. Nor should the registrant's other benefits derived from owning a federal registration be lost as long as the mark remains in use within the scope of the recitation of goods or services contained in the existing registration.

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)?

The same principles should apply to amendments to pending applications.

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?

The applicant/registrant seeking to amend the recitation to reflect evolving technology should only be required to evidence use of the mark for new content delivery means/media for the type of content initially indicated in the application/registration.

As noted above, the amendment process should include publication for opposition. Disney believes that it would be appropriate for registrants to be charged a fee for the service of amending the recitation and publishing the amended registration.

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?

Such amendments should be permitted only for goods/services for which a field, function, purpose or industry to which the content applies must be recited for sufficient specificity according to the current Acceptable Identification of Goods and Services Manual. Examples include publications (subject matter must be indicated), computer programs, motion pictures, and television programming.

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 irrespective of whether technology has been completely phased out, as there is usually a transition period during which content is delivered via the old means/media as well as the new.

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?

Disney does not believe that 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, as long as any limitation on the content initially stated in the registration/application is not expanded. For example, the consumer perception of a mark in use for musical content delivered via a phonograph record or delivered via a digital download is the same.

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

The original dates of use and priority date for the application/registration should be considered to remain accurate if the amendment is permitted.

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

As long as the amendment does not expand the scope of any content specified in the existing registration, the modification of the delivery means/method should not adversely impact the public policy objective of ensuring notice of the coverage afforded under a registration, particularly if the amended registration/application will be published for opposition.

10. Please provide any additional comments you may have.

Disney believes that an acceptable alternative to amending a registration would be to file a new application for the new content delivery means/media, as long as the dates of use and priority of the new application relate back to the dates of the existing registration.

Very truly yours,

Steven Plotkin |Corporate Legal - Intellectual Property Group

The Walt Disney Company - 500 S. Buena Vista St., Burbank, CA 91521-0643|Tel: 818-560-7646; tie-line 8228-7646; Fax: 818-848-6424|