Evolution Pilot Program Amending Identifications of Goods and - - PowerPoint PPT Presentation

▶
evolution pilot program
SMART_READER_LITE
LIVE PREVIEW

Evolution Pilot Program Amending Identifications of Goods and - - PowerPoint PPT Presentation

Apr 01, 2023 592 likes •867 views

Presenting a live 60-minute webinar with interactive Q&A Leveraging USPTO Technology Evolution Pilot Program Amending Identifications of Goods and Services in Trademark Registration TUESDAY, DECEMBER 15, 2015 1pm Eastern | 12pm

slide-1
SLIDE 1

The audio portion of the conference may be accessed via the telephone or by using your computer's

  • speakers. Please refer to the instructions emailed to registrants for additional information. If you

have any questions, please contact Customer Service at 1-800-926-7926 ext. 10.

Presenting a live 60-minute webinar with interactive Q&A

Leveraging USPTO Technology Evolution Pilot Program

Amending Identifications of Goods and Services in Trademark Registration

Today’s faculty features:

1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific TUESDAY, DECEMBER 15, 2015

Farah Bhatti, Shareholder, Buchalter Nemer, Irvine, Calif. Beth A. Seals, Esq., Squire Patton Boggs, San Francisco

slide-2
SLIDE 2

Tips for Optimal Quality

Sound Quality If you are listening via your computer speakers, please note that the quality

  • f your sound will vary depending on the speed and quality of your internet

connection. If the sound quality is not satisfactory, you may listen via the phone: dial 1-866-570-7602 and enter your PIN when prompted. Otherwise, please send us a chat or e-mail sound@straffordpub.com immediately so we can address the problem. If you dialed in and have any difficulties during the call, press *0 for assistance. Viewing Quality To maximize your screen, press the F11 key on your keyboard. To exit full screen, press the F11 key again.

FOR LIVE EVENT ONLY

slide-3
SLIDE 3

Continuing Education Credits

In order for us to process your continuing education credit, you must confirm your participation in this webinar by completing and submitting the Attendance Affirmation/Evaluation after the webinar. A link to the Attendance Affirmation/Evaluation will be in the thank you email that you will receive immediately following the program. For additional information about continuing education, call us at 1-800-926-7926

  • ext. 35.

FOR LIVE EVENT ONLY

slide-4
SLIDE 4

Program Materials

If you have not printed the conference materials for this program, please complete the following steps:

  • Click on the ^ symbol next to “Conference Materials” in the middle of the left-

hand column on your screen.

  • Click on the tab labeled “Handouts” that appears, and there you will see a

PDF of the slides for today's program.

  • Double click on the PDF and a separate page will open.
  • Print the slides by clicking on the printer icon.

FOR LIVE EVENT ONLY

slide-5
SLIDE 5

Leveraging USPTO Technology Evolution Pilot Program

Beth Seals

slide-6
SLIDE 6

6

squirepattonboggs.com

6

squirepattonboggs.com

What is the pilot program?

  • Allows amendments to identifications of goods/services that would otherwise

be beyond the scope of the current identification.

  • Amendment requirements:
  • Evolving technology has changed the manner or medium of delivery to consumers
  • Must be same underlying content or subject matter
  • Would not permitted under current practice because they would be beyond the

scope of the current identification

slide-7
SLIDE 7

7

squirepattonboggs.com

7

squirepattonboggs.com

What is the authority for the pilot program?

  • No amendment to the identification of goods/services in a registration will be

permitted except to restrict the identification or change it in ways that would not require republication.

  • Trademark Rule 2.173(e)
  • Director may waive any provision of the rules that is not a provision of the

statute, when:

  • an extraordinary situation exists;
  • justice requires; and
  • no other party is injured.
  • Trademark Rules 2.146(a)(5) and 2.148
slide-8
SLIDE 8

8

squirepattonboggs.com

8

squirepattonboggs.com

Procedures for pilot program

  • File a post-registration petition to the Director under Trademark Rule 2.146

AND a Section 7 request for amendment.

  • TEAS: “Petition to the Director under Trademark Rule 2.146,” form number 3
  • Caption: “Petition to Allow Amendment Due to Technology Evolution”
  • Use free-text area to provide the information needed on the petition and the

proposed amendment under §7

  • Payment of fees:
  • Petition fee: $100
  • Filing amendment to registration fee: $100
slide-9
SLIDE 9

9

squirepattonboggs.com

9

squirepattonboggs.com

Procedures for pilot program

  • Submit a specimen
  • Provide dates of use for the goods/services in their evolved form
  • original dates of use remain in effect in the registration
  • the “evolved” dates would be made of record
slide-10
SLIDE 10

10

squirepattonboggs.com

10

squirepattonboggs.com

Contents of petition

  • Request to waive Trademark Rule 2.173(e)
  • Declaration
  • based on changes due to evolving technology in the manner or medium by which

products and services are offered for sale and provided to consumers, the petitioner cannot show use on the original goods/services;

  • the petitioner still uses the mark on other goods/services reflecting the evolved

technology, and the underlying content or subject matter remains unchanged; and

  • absent an amendment of the identification, the petitioner would be forced to delete

the original goods/services from the registration, and thus lose protection in the registration in relation to the underlying content or subject matter of the original goods/services.

slide-11
SLIDE 11

11

squirepattonboggs.com

11

squirepattonboggs.com

Limitations of pilot program

  • Available only with respect to registrations, NOT applications
  • Amendments must comply with all applicable rules and requirements
  • §66(a) registrations
  • During the five year period that §66(a) registrations are based on the underlying

international registration, the scope of the international registration will factor into determining the acceptability of the amendment.

  • Amendments that cause a change in class are not permitted since the classification cannot

be amended from that assigned by the International Bureau.

slide-12
SLIDE 12

12

squirepattonboggs.com

12

squirepattonboggs.com

What will happen after petition is filed?

  • New search will be conducted to assess possible third-party harm
  • Proposed amendments that are likely acceptable will be posted on a

webpage accessible from the Official Gazette

  • Interested parties have 30 days to comment
  • Comments will factor into assessing the third-party harm factor
  • Comments may be included in the record
  • http://www.uspto.gov/trademark/trademark-updates-and-announcements/proposed-

amendments-identifications-goods-and-services

slide-13
SLIDE 13

13

squirepattonboggs.com

13

squirepattonboggs.com

What will happen after petition is filed?

  • If approved:
  • Accepted amendments will be published in the Official Gazette with other accepted

§7 amendments for notice purposes; and

  • An updated registration certificate will issue.
  • If denied, the identification will not be amended.
  • The new goods/services will not be added; and
  • The original goods/services will not be deleted.
slide-14
SLIDE 14

14

squirepattonboggs.com

14

squirepattonboggs.com

Pros of program

  • Can substitute in a different good/service without having to file a new

application

  • Can change classification of goods/services (except §66(a))
  • Can change the identification from goods to services (or vice versa)
slide-15
SLIDE 15

15

squirepattonboggs.com

15

squirepattonboggs.com

Cons of program

  • Risk
  • Registrant declares that it cannot show use on the original goods/services.
  • Incontestability
  • Any “incontestable” status that applied to the original goods/services will not apply to

the newly amended goods/services in their evolved form.

  • Registrant must declare that it will not file declaration of incontestability as to the

evolved goods/services for at least five years from the date the amendment is accepted.

slide-16
SLIDE 16

16

squirepattonboggs.com

16

squirepattonboggs.com

Timing for pilot program

  • Pilot program commenced September 1, 2015
  • Duration depends on the volume of requests
  • At the conclusion of the pilot period, the Office will assess whether such

amendments should be permitted on a permanent basis, and if so, whether modified guidelines are appropriate.

  • Registrants can file a petition at any time
slide-17
SLIDE 17

17

squirepattonboggs.com

17

squirepattonboggs.com

Current use of pilot program

  • As of November 2015
  • 13 petitions filed
  • 3 have published for comment
  • 10 were incomplete and did not comply with all pilot requirements
  • 30-day letters were issued
slide-18
SLIDE 18

18

squirepattonboggs.com

18

squirepattonboggs.com

Resources

  • Beth Seals blog post
  • http://www.iptechblog.com/2015/09/uspto-pilot-program-trademark-registration-
  • wners-may-now-be-able-to-broaden-their-goods-and-services/
  • USPTO announcement
  • www.uspto.gov/sites/default/files/documents/Technology_Evolution_Pilot_Program.

docx

  • USPTO sample declaration
  • www.uspto.gov/sites/default/files/documents/Sample_Declaration_Under_the_Pilot.

docx

  • Proposed amendments
  • http://www.uspto.gov/trademark/trademark-updates-and-announcements/proposed-

amendments-identifications-goods-and-services

slide-19
SLIDE 19

19

squirepattonboggs.com

19

squirepattonboggs.com

Contact Information

Beth Seals Squire Patton Boggs (US) LLP 275 Battery Street, Suite 2600 San Francisco, California 94111 +1 415 954 0245 Beth.Seals@squirepb.com

slide-20
SLIDE 20
slide-21
SLIDE 21

IMPACT ON TRADEMARK REGISTRATION

  • Insigni

ignifica icant t imp mpact ct

  • Limited

ed number er of registrations trations to which h this applies es

  • Expan

ansi sion

  • n of trade prot
  • tects

cts most t registrati trations

  • ns
  • Does

s not

  • t affect

ct amendmen ments ts that are currentl tly allowed ed under TMEP 1402.07(c) 7(c)

  • e.g. “newsletters in the field of accounting” (Class 16) to “providing
  • nline newsletters in the field of accounting” (Class 41)

21

slide-22
SLIDE 22

IMPACT ON TRADEMARK REGISTRATIONS

  • HOW WILL THIS AFFECT

CT OTHER R TRADE DEMAR ARK OWNERS ERS OR THOSE FILING NEW APPLICA CATION ONS

  • Previously “dissimilar” registrations could become potential citations as

re-classification is possible.

  • Monitor competitor’s registrations to see if they have filed to expand the

scope

  • Broaden searches in anticipation of owners amending their registrations

22

slide-23
SLIDE 23

GUIDANCE FOR LEVERAGING

  • Evalua

uate e existi ting ng tradema mark k portfol

  • lio

io for any registrations trations which include e “old technology”

  • Look for the following “old technology” terms and determine if any can

be updated: ed:

  • Phonographs
  • Prerecorded video cassettes
  • Videotapes
  • Floppy discs
  • Telephone banking services
  • Entertainment services, namely, ongoing comedy series providing

through cable television

23

slide-24
SLIDE 24

GUIDANCE FOR LEVERAGING

  • Review

w tradema mark k registrati trations

  • ns for any goods for which a specim

imen en canno not t be filed d to det etermine ine if amendme dment nt would allow a specim imen en to be submi mitt tted

  • When filing

g a Section

  • n 8, if a speci

cimen men is not

  • t availab

ilable, e, you must delet ete the goods s from the registrati tration

  • n
  • If a specimen

men is submi mitt tted ed and the mark is not

  • t in use on such goods,

s, registr strat atio ion n is suscept eptib ible e at least t to partial cancel ellat ation

  • n

24

slide-25
SLIDE 25

GUIDANCE FOR LEVERAGING

  • Subje

ject ct matter cannot

  • t be changed

ged

  • e.g., subject matter of software must stay the same
  • If the goods are used in the old form and the current

t form, m, the old form canno not t be amended. ded.

  • Consider

sider whet ether er you want to admit t that the goods s are no longer er in use

  • n the old goods.
  • s. If amendme

ment nt is not

  • t allowable

ble, , then the admiss ssio ion n is public ic record.

  • d. The

e Tradema mark Office ice will not

  • t automa

mati tica cally delet ete such goods ds.

  • Amend

ndmen ment t only applies es if the fa failure e to amend d would result in a loss of rights ts due to an old technol

  • logy
  • gy that has now evolved.

ed.

25

slide-26
SLIDE 26

GUIDANCE FOR LEVERAGING

  • Examples

mples of acceptabl able e amendments: ents:

Original inal Goods Proposed sed Amendme dment nt DOS-based application software to manage and forecast inventory for the direct marketing industry Application software to manage and forecast inventory for the direct marketing industry Videotapes, videocassettes, all on the subjects of ancient peoples and cultures around the world Video recordings on the subjects of ancient peoples and cultures around the world Videotapes featuring basketball instruction Video recordings featuring basketball instruction

26

slide-27
SLIDE 27

CONTACT INFORMATION

Farah h P. Bhatti ti Bucha halter er Nemer 18 18400 0 Von Karman Ave, Suite 800 Irvine ne, , Californi rnia 92612 (94 949) -224-62 6272 72 Fbhatti@ tti@buc ucha halter.co .com

27