What You Say Is What You Get – Or Is It? (Amending Your Trademark’s Goods/Services Description to Match Evolving Technology)

Previously, after going through the long – and many times complicated – process of registering your business’s trademark with the United States Patent and Trademark Office (USPTO), changing the description of the goods or services that are covered by your federal trademark registration is usually completely prohibited.

The only option a business had when it changed the way it delivered its services, or changed the goods that it provided consumers because of the outstanding advancements in technology, was to file an application with the USPTO for a completely new trademark identifying the more technologically advanced goods or services.

Not long ago, to address the issue of evolving technology, and goods or services descriptions that in a vast number of trademark registrations were outdated, the USPTO started a pilot program allowing trademark owners, under certain circumstances, to amend the goods or services descriptions in their trademark registrations instead of requiring an entirely new registration.

There is a limit to the usefulness of this pilot program, however.  An owner may not take advantage of the program if it is still using the trademark in connection with the original goods or the original method or format of providing the services.

For instance, the following amendment to a description would be acceptable:

Original: Phonograph records and prerecorded audiotapes containing children’s songs.
Amended: Sound recordings containing children’s songs.

However, this amendment would not be acceptable:

Original: Printed children’s books
Amended: Downloadable children’s books and printed children’s books (this is unacceptable because the owner is still using the trademark on the original goods as well as in the updated form.)

If you or your business have a trademark registration that you think may have a stale goods or services description – this pilot program may be very useful for you.

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Kristy A. Christensen

Commercial Litigation and Dispute Resolution Attorney at McCarty Law LLP
Kristy specializes in helping clients protect their brands and intellectual property, with a focus on trademarks and copyrights. She also advises financial institutions and businesses of every size on a variety of creditor law and construction law matters.
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