I ran across some news recently about a program from the U.S. Patent and Trademark Office that enables trademark owners to expand the definition of goods and services in their existing registrations. This program – the Technology Evolution Pilot Program – gives trademark owners a chance to petition the USPTO to update their description of goods and services when the changes are required due to a technological change in the way the business provides the goods or services. For example, if you registered a mark for “prerecorded videocassettes in the field of mathematics instruction” (Class 9) the USPTO might allow you to amend your registration to say “video recordings featuring mathematics instruction” (Class 9) (examples provided by the USPTO). In this example, the change is the byproduct of changing technology.
However, a trademark owner must be able to establish that the mark can no longer be used with the goods and services in its original registration and must attest that the modification is necessary due to the evolution of technology. The USPTO is drawing a fine distinction, however, and appears to construe these criteria very narrowly.
The program just started on September 1, 2015, and it may be most significant for owners of large trademark portfolios. But we’ve all seen the rapid pace at which new media and new technologies make older ones obsolete. So the program could have cost savings and other benefits for smaller companies who have invested in their brands but find themselves pivoting their business models to adapt to technological change. If you can amend an existing registration to reflect current technology, your costs could be substantially less than filing a new registration for the same mark.
