Imagine, for a moment, a successful software company, Agave, that owns the trademark PHOTOCHOPS for a popular image-editing program. Being a diligent trademark owner, Agave registered the trademark PHOTOCHOPS in 2005, right when the original PHOTOCHOPS launched, in connection with “downloadable computer programs for creating and manipulating graphic images on a computer” in International Class 9. Over the years, the PHOTOCHOPS platform slowly shifts from downloadable software to a pure software-as-a-service (SaaS) platform, where the software is hosted entirely server-side. In 2010, Agave is able to file a Section 8 declaration of continued use, because it is still permitting existing customers to download some legacy software. By the time the PHOTOCHOPS registration is due for renewal in 2015, however, it’s all SaaS all the time.
No Expansion, No Luck
Agave is in a difficult position, because in order to renew the PHOTOCHOPS registration, it must attest that the mark continues to be used in connection with downloadable software. Because of changes in technology, however, it’s not. Further, Agave would traditionally be precluded from amending its goods ID from “downloadable computer software” to “SaaS” because this would be deemed an impermissible expansion beyond the scope of the original filing, and indeed is classified in an entirely different Class — International Class 42 as opposed to International Class 9. Thus, Agave would be forced to allow its registration to be canceled in due course, and would have to file a new application to register PHOTOCHOPS in connection with SaaS. This isn’t the end of the world — Agave would still have its common law trademark rights dating back to 2005 — but the loss of its longstanding registration is inconvenient at best, and its cancellation could otherwise create problems across the board for Agave, potentially affecting traditional policing and enforcement, U.S. Customs enforcement, domain name acquisition strategy, and more. In the meantime, its new PHOTOCHOPS application will take time to mature to a registration, and could conceivably encounter intervening trademark registrations and increased exposure to third-party challenges.
The Pilot Program
The USPTO’s recently launched “Pilot Program to Allow Amendments to Identifications of Goods and Services in Trademark Registrations Due to Technology Evolution” looks to provide some relief to the Agaves of the world by setting forth a method by which a trademark owner would be permitted a waiver from the normally strict PTO “no expansion” policy. In addition to the software-to-SaaS amendment that would solve Agave’s problems, a successful waiver would permit amendments such as the following:
- “Phonograph records featuring music” in International Class 9 to “Musical sound recordings” in International Class 9;
- “Printed books in the field of art history” in International Class 16 to “Downloadable electronic books in the field of art history” in International Class 9; and
- “Telephone banking services” in International Class 36 to “On-line banking services” in International Class 36.
Examples of additional acceptable (and unacceptable) amendments under the Pilot Program are available in the program’s announcement document.
To take advantage of the program, a trademark owner must file a petition to the USPTO Director under Trademark Rule 2.146, requesting a waiver of the “scope” requirement because (1) the situation is extraordinary, (2) justice so requires, and (3) no other party will be injured by the waiver. In order to demonstrate such an extraordinary situation, the trademark owner/petitioner must declare that:
- It cannot show use of the mark on the original goods/services due to evolving technology in the manner or medium by which products are offered for sale and provided to consumers;
- It duly uses the mark on other goods/services reflecting the evolved technology, and the underlying content or subject matter otherwise remains unchanged; and
- Absent an amendment to the ID, it would be forced to delete the original goods/services and thus lose protection.
The petitioner must also provide a new specimen of use and new first use dates for the “evolved” goods (though the original first use dates will remain in effect).
Third Party Harm
In considering the petition, the USPTO must evaluate whether the waiver would result in harm to any third parties, and has implemented additional procedures to reduce the possibility of injury. First, it will conduct a trademark search to identify possible trademark conflicts. Second, the petitioner must agree not to file a new Declaration of Incontestability as to the “evolved” goods/services for at least five years, which in the case of older registrations expands the opportunity for third-party cancellation challenges. Finally, to provide a mechanism for “interested parties” to comment regarding the proposed amendments, the USPTO will publish petition details on a new page available from the Trademark Official Gazette website.
This doesn’t mean that trademark owners should rest on their laurels and assume that (a) this pilot program will result in a permanent shift in USPTO policy, (b) that a petition will be successful, or (c) that a successful petition is a panacea. First, it may be the case that a petition would be available only where an entire class — as opposed to only certain of the goods and services therein — is at risk due to evolved technology. Second, as noted above, an “extraordinary situation” doesn’t exist if the trademark owner is still using the mark, at least in some part, on the “legacy” goods. Third, an amendment to a goods/services ID probably won’t affect foreign trademark filings that were based on the original U.S. filing — both because this situation is unlikely to manifest during the five-year dependency period of the Madrid Protocol, and also because an expansion of the goods/services ID (and especially one that results in an International Class shift) wouldn’t be permitted by WIPO or local trademark offices in any event. Conversely, U.S. registrations that are based on §66(a) of the Trademark Act (registration via the Madrid Protocol) may be denied relief during their own dependency period. For all of these reasons, trademark owners are encouraged to be proactive by filing new applications in the ordinary course when shifts in technology would merit an expansion of trademark coverage.