The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 10. Presenting a live 60-minute webinar with interactive Q&A Leveraging USPTO Technology Evolution Pilot Program Amending Identifications of Goods and Services in Trademark Registration Today’s faculty features: 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific TUESDAY, DECEMBER 15, 2015 Farah Bhatti, Shareholder, Buchalter Nemer, Irvine, Calif. Beth A. Seals, Esq., Squire Patton Boggs, San Francisco
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The audio portion of the conference may be accessed via the telephone or by using your computer's
speakers. Please refer to the instructions emailed to registrants for additional information. If you
have any questions, please contact Customer Service at 1-800-926-7926 ext. 10.
Presenting a live 60-minute webinar with interactive Q&A
Leveraging USPTO Technology
Evolution Pilot Program Amending Identifications of Goods and Services in Trademark Registration
• Limited number of registrations to which this applies
• Expansion of trade protects most registrations
• Does not affect amendments that are currently allowed under TMEP
1402.07(c)
• e.g. “newsletters in the field of accounting” (Class 16) to “providing
online newsletters in the field of accounting” (Class 41)
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IMPACT ON TRADEMARK REGISTRATIONS
• HOW WILL THIS AFFECT OTHER TRADEMARK OWNERS OR THOSE FILING
NEW APPLICATIONS
• Previously “dissimilar” registrations could become potential citations as
re-classification is possible.
• Monitor competitor’s registrations to see if they have filed to expand the
scope
• Broaden searches in anticipation of owners amending their registrations
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GUIDANCE FOR LEVERAGING
• Evaluate existing trademark portfolio for any registrations which include
“old technology”
• Look for the following “old technology” terms and determine if any can
be updated:
• Phonographs
• Prerecorded video cassettes
• Videotapes
• Floppy discs
• Telephone banking services
• Entertainment services, namely, ongoing comedy series providing
through cable television
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GUIDANCE FOR LEVERAGING
• Review trademark registrations for any goods for which a specimen
cannot be filed to determine if amendment would allow a specimen to
be submitted
• When filing a Section 8, if a specimen is not available, you must delete
the goods from the registration
• If a specimen is submitted and the mark is not in use on such goods,
registration is susceptible at least to partial cancellation
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GUIDANCE FOR LEVERAGING
• Subject matter cannot be changed
• e.g., subject matter of software must stay the same
• If the goods are used in the old form and the current form, the old form cannot be amended.
• Consider whether you want to admit that the goods are no longer in use on the old goods. If amendment is not allowable, then the admission is public record. The Trademark Office will not automatically delete such goods.
• Amendment only applies if the failure to amend would result in a loss of rights due to an old technology that has now evolved.