USPTO Program Lets Trademark Rights Adapt as Technology Evolves

A USPTO program available this fall allows owners to amend their trademark registrations in cases where the goods or services originally identified with their marks have become obsolete and are no longer marketed and newer technologies have emerged.

This pilot program, which was initiated on September 1st, may be particularly helpful, for example, to companies or bands marketing music in an industry that has seen seismic technological shifts (think 8-tracks to digital downloads), or for software companies that may have valuable trademark rights associated with floppy disks but now rely on SaaS models of distribution.

Before the program, trademark owners could not take advantage of their all-important priority of use rights tied up in obsolete technologies to cover new ones. Instead, a new application was required to cover use of their marks with emerging technologies that differed from the goods or services on the original application. Key requirements identified by the USPTO for petitioners are:

  • a specimen showing current use of the mark in commerce on or in connection with the amended goods/services; and
  • dates of use for the goods/services in their evolved form, both verified with an affidavit or signed declaration. Although the original dates of use would remain in effect in the registration, the “evolved” dates would be made of record within USPTO records.

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