Author: Matthew D. Asbell | Co-Author: John Carl (JC) Zwisler | Practices: , , , | Tags: , , , , ,

Technology Evolution in the Media Industry Supported by Pilot Program Allowing U.S. Trademark Registrations to be Updated

Film Video Cassette, Memory CardMedia companies have changed the way they provide their goods and services to consumers as a result of ongoing evolutions in technology. A magazine that once distributed print copies may now provide access to its articles and advertisements online.

Record labels went from reel-to-reel, vinyl and 8-track to audio cassettes and optical discs to MP3 files and streaming audio. Film companies that may once have provided celluloid to theaters, later moved to video cassettes, optical discs, and ultimately MP4 files and online streaming content. Established media companies provide their goods/services under various brands that they protect in the United States through U.S. trademark registrations. Such registrations must be periodically renewed in order to maintain the benefits they provide.

Part of the renewal process includes the requirement to submit acceptable evidence of use to the United States Patent and Trademark Office (USPTO).

Also, there is a risk that another party may have adopted and registered the same or similar trademark for the updated goods/services, which could potentially block the new application from proceeding to registration.

Apart from potential issues with a new application, the lapse of the original registration is the loss of an asset, which may impact the company’s valuation and which may have been specifically referenced in important transactions, including licenses, mergers and acquisitions.

In order to address this issue, the USPTO launched the Technology Evolution Pilot Program (Program) in September 2015.

The Program allows amendments to a registration’s identification of goods/services under limited circumstances where due to evolving technology, the manner or medium by which the content or subject matter of products or services are provided to customers has changed.

Notably through this Program, Time Inc. was able to amend its 1932 registration for the mark THE MARCH OF TIME, which was originally used in relation to film newsreels.

In view of changes in how news was/is consumed, Time ultimately licensed the mark and the corresponding content for online download and streaming use. It was able to renew the registration in relation to those updated goods and services.

Amendments under the Program may be sought through a petition and must include a fee paid to the USPTO in the amount of $100.

A petitioner must declare that it is not possible to show use of the mark on the original goods/services due to evolution in technology, that the mark is still in use on the goods/services in their evolved form, and without the amendment, the petitioner would be forced to delete the original goods/services and lose protection afforded by the registration.

Following a registrant’s petition, the USPTO conducts a search for prior registrations and applications for the same or a highly similar mark in relation to the goods/services in their evolved form.

Proposed amendments that are likely to be accepted are published for a period of thirty days to allow interested third parties to raise objections. In the absence of objections, the petition is granted and the registration, renewed. Unlike applications, which are published in the Trademark Official Gazette, proposed amendments are published on a separate page of the USPTO website, which is also available to the public.

To date, approximately 150 petitions have been filed for the purposes of updating the goods and services in registrations due to evolved technology. Of these, approximately 60 have been granted and 20 have been published without issuance of a decision as yet.

The number of petitions that have been granted or published illustrates that trademark owners who seek to update their registrations in view of changes in technology are moderately likely to succeed.

However, the number of petitions filed seems low considering that the Program has been in operation for over two years, suggesting that the Program is not widely known among trademark owners and practitioners.

The Program allows businesses to maintain their valuable registrations with minimal additional effort instead of prosecuting a new application, which may require significant time and effort. Moreover, a trademark owner is able to retain the original priority date of the registration, which could prove beneficial in later disputes against third parties.

The registration record maintains both the original claimed dates of first use and the claimed dates of first use with regard to the evolved goods/services. However, the Program does not allow for a registration to maintain its incontestability status for the goods/services in their evolved form.

A petitioner must declare that it will not file, or refile, for incontestability for a period of at least five years from the date of acceptance of the amendment. Of course, sometimes changes in technology can be anticipated.

An applicant that looks prospectively may prevent the need to utilize the Program. Businesses should look ahead to new technologies that may feasibly be available for their goods/services at the time of filing in order to prepare applications that will anticipate potential technology evolutions they expect to adopt.

Specifically, businesses may elect to file U.S. trademark applications based on their bona fide intent to use the mark in relation to goods/services that it plans to adopt in future months or years. Of course, some evolutions in technology are not so easily predicted.

While the Program is a useful way for trademark owners to update their registrations, it has not yet been adopted as a permanent practice. While the Program currently does not have an end date, the results of the Program will aid in the determination of whether the USPTO will continue to allow such amendments in the future. However, those who utilize the Program need not worry as regardless of the Program’s outcome, amendments to registrations are permanent.

Lastly, although the Program has proven advantageous for some trademark owners, the process is not as quick as some might hope.

Evaluation of applicant petitions can take a significant amount of time, sometimes several months, to reach a decision and petitioners must often prompt the USPTO to take action.

However, those familiar with the Program should strongly consider making use of its benefits when evolving technology has changed the way goods/services are provided to consumers.

The article was originally published in the September/October issue of the Media Law International E-Zine.

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