Public Comments on Proposal to Allow Amendments to Identifications of Goods and Services Due to Technology Evolution

From: Stuart Nickles []
Sent: Monday, November 03, 2014 4:21 PM
To: TM Policy
Subject: Technology Evolution
Importance: High


Computer Sciences Corporation ("CSC") greatly appreciates the USPTO's continued efforts to seek feedback on the Proposal to Allow Amendments to Identifications of Goods and Services Due to Technology Evolution.  CSC was founded 1959 by two young computer analysts working in the aerospace industry who saw the opportunity for a new kind of business. They set out to provide computer manufacturers with complex programs, thereby expanding the potential markets for computers.  CSC's first computer software programs were distributed on media different than the manner in which they are today.  Since 1959, CSC has grown from two visionary men to a Fortune 500 company that is an Information Technology leader, offering its clients a wealth of experience and unparalleled services across numerous industries.

CSC supports a change in USPTO practice that would allow amendments to identifications in registrations to due technology evolution.  Trademark owners such as CSC have built up a substantial amount of goodwill in their trademarks.  The important trademark rights flowing from registration under the Lanham Act should not be extinguished merely due to changes in the manner or media in which goods or services are distributed, where the public still associates such underlying goods/services (and not primarily the manner of distribution) with the trademark owner.  In cases where the manner of distribution evolves due to changes in technology, amendments to the identification involving the manner of distribution should be permitted.

As to the specific USPTO proposals in the Proposal to Allow Amendments to Identifications of Goods and Services Due to Technology Evolution, for which comments from the public are sought:

1)  The USPTO proposes that in order to qualify for an amendment, the petitioner must declare that "the underlying content or subject matter remains unchanged."  In determining whether such standard is met, this must be determined by solely considering the express language in the original identification (no matter whether such original identification is acceptable under current USPTO practice).  For example, if the original identification in a registration (before amendment due to technology evolution) is "[computer] programs in the form of punch cards, magnetic tapes, and punch tapes," the "underlying content or subject matter" for these purposes should be considered to be any type of "computer programs"—regardless of the specific type and/or function of the computer programs with which the mark was being used at the time of the technology evolution.  Such a rule is fair to registrants and the public because the language in the original identification (such as in the example above) was originally acceptable to the USPTO; and the registrant was not required to amend to greater specificity in previously maintaining such a registration under Lanham Act § 8.  By contrast, if the original identification was "computer programs for word processing sold on disks," then the more specific wording "computer programs for word processing" would be considered the "underlying content or subject matter" for these purposes.  In summary, the plain, express wording of the identification, before amendment, should control in determining whether "the underlying content or subject matter remains unchanged."  If the registrant is still using the mark on goods or in connection with services that fall within the scope of the recited identification before amendment, then this should satisfy the requirement that "the underlying content or subject matter remains unchanged."

2)  The USPTO also proposes that identifications for technology evolution amendments must otherwise comply with current requirements regarding specificity.  CSC urges the USPTO not to adopt this specific proposal.  By analogy, under Section 7 of the Lanham Act, limited amendments to goods/services identifications and classifications are currently permitted.  See TMEP §§ 1609.03 and 1609.04.  However, there is no requirement that such Section 7 amendments comply with current USPTO requirements regarding specificity in identifications.  Likewise, for amendments of identifications due to technology evolution, CSC believes that there also should be no requirement that current requirements regarding specificity be met.  Such a proposed requirement would unfairly limit the scope of a registrant's granted registration; and also would not be consistent with the procedures of Lanham Act § 7.  Instead, if another person believes that a registration is overly broad, Section 18 of the Lanham Act provides a potential mechanism for a partial cancellation to be filed by such person at any time, in order to avoid a likelihood of confusion.  See TBMP § 307.02(a).  Read together with the USPTO's proposal that the petitioner must abandon any prior "incontestable" status under Trademark Act § 15 when petitioning to amend the identification, CSC asserts that there would be no measurable third-party harm.  In summary, proposed amendments should not have to comply with current requirements regarding specificity.

3) The USPTO also proposes that amendments that change the classification be considered.  CSC believes the USPTO should allow international classification amendments, when appropriate with the underlying amended identification.  Classification changes in registrations under Lanham Act § 7 are already currently permitted, where appropriate and in compliance with the Nice Classification.  See TMEP § 1609.04.  Thus, the USPTO must allow classification changes in amendments due to technology evolution, where appropriate under the Nice Classification.  For example, if a registration identifies "programs in the form of punch cards, magnetic tapes, and punch tapes" in Class 16, an amendment to "computer programs" must be classified in Class 9; or an amendment to "providing on-line computer programs" in Class 42.   In summary, changes in classification must be allowed where consistent with Nice Classification.

4)   The USPTO also proposes that amendments that change the identification from goods to services be considered.  CSC urges the USPTO to allow amendments from goods to services, and vice versa, when the underlying goods are computer programs or computer software.  Due to technology changes, many computer software programs are now provided "as a service," or via the web rather than on a medium.  Such a change in the method or media of delivery of the programs to customers does not cause the associated marks to lose their source-identifying significance for software in the minds of relevant consumers.  Thus, such amendments should be permitted.  Moreover, USPTO practice currently allows certain amendments of computer software identifications and classifications from Class 9 to Class 42; because this is not a material alteration.  See TMEP § 1402.07(c) ("If the applicant specifies 'computer programs in the field of accounting,' the applicant may only amend to specify computer programs within the scope specified, i.e., those programs concerning accounting.  The applicant may not amend to any service, other than 'providing temporary use of non-downloadable computer programs in the field of accounting.'")  Changes from services to goods where the underlying goods/services are computer software should also not be foreclosed.  In the future, delivery of software as a service could evolve to a purely downloaded or transmitted format.

In conclusion, CSC supports the adoption by the USPTO of new rules that permit amendments to identifications in registrations, where the manner or media in which such goods/services are delivered to consumers evolves, due to changes in technology.  However, CSC urges the USPTO to adopt specific rules consistent with the comments above.  CSC thanks the USPTO for the opportunity to comment on these important proposed changes.

Respectfully submitted,

Stuart Nickles
Assistant General Counsel

10301 Wilson Blvd., Blythewood, SC 29016
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