IP Tech Knowledgy

Trademark registrations can be amended to reflect the new way the goods or services are delivered, but only in limited situations. The US Patent and Trademark Office (PTO) will modify the registration if a product or service is now contained in or delivered by a new technology that the owner did not initially use. However, the PTO will only allow a modification if the owner has completely migrated to the new technology and no longer offers goods or services with the old technology.

This is a significant departure from the general rule at the PTO. Generally, once a registration lists particular goods and services for which the mark is registered, that list cannot be amended, other than dropping goods or services out of the identification.

A common situation where the PTO allows the change is when the registration lists that software is delivered on disks, thumb drives, or downloaded to computers, but with the evolved technology, the software is now available only as a service on the cloud. Other examples include books that were offered in print are now available only as downloadable, or online publications and services offered by one technology now offered by another, such as telephone banking services evolving to online banking services.

The PTO refers to the allowed modification as “changes due to evolving technology in the manner or medium by which products or services are offered for sale or provided to consumers.” The process is that the registrant must file a “Petition to Allow Amendment Due to Technology Evolution.” Any petition must include the date the goods and services were first offered in their evolved form in interstate commerce and confirm that the goods or services are not offered via the old manner or medium. 

Ned T. Himmelrich
410-576-4171 • nhimmelrich@gfrlaw.com