THROUGH AN UNDERUTILIZED PILOT PROGRAM, LADAS ASSISTED TIME INC IN UPDATING ITS LONGSTANDING US TRADEMARK REGISTRATIONS DUE TO TECHNOLOGICAL EVOLUTION

Ladas attorney Matthew Asbell assisted Time Inc. in successfully updating two longstanding U.S. trademark registrations up for renewal, where the goods and services changed as a result of evolved technology.

THE MARCH OF TIME film series appeared in upwards of 50,000 movie theaters from 1935 to 1951, followed by airings on television through 1967, distribution on home videotapes in the subsequent years, and ultimately as streaming video on the internet. U.S. Trademark Registration No. 0330900 for THE MARCH OF TIME in stylized characters was registered since December 17, 1935 and renewed several times for films. At the time that the registration became due for renewal in 2017, the series had ceased to be available on film, but Home Box Office, Inc. had restored and reproduced it as part of a media library for clip licensing. As U.S. law has traditionally not allowed amendment of a trademark registration to expand the scope of the goods or services it originally covered, registrants previously had to file new applications for updated goods or services. However, Ladas attorney Matthew Asbell worked with the client to take advantage of a little known pilot program that had recently been implemented by the USPTO in order to update the registration. The pilot allows, under limited circumstances, trademark owners to amend the goods and/or services identified in their trademark registrations when the technology has evolved such that the originally registered goods were rendered obsolete. Time Inc. was able to renew the registration for the updated identification of services of “providing non-downloadable online videos featuring historical newsreel” in Class 41.

TIME LIFE’S LOST CIVILIZATIONS documentary series about ancient peoples and cultures was originally available on videocassette in 1995, but today’s version is on DVD. When U.S. Trademark Registration No. 2031484 for TIME LIFE’S LOST CIVILIZATIONS & Device, registered in 1997 and subsequently renewed, again became due for renewal in 2017, Ladas attorney Matthew Asbell worked with the client to successfully update the registration to cover the series in its newer medium.

Prior results do not guarantee a similar outcome.