Amending Your Registration’s Goods or Services When Technology Evolves

By Matthew Dickstein

The USPTO allows for trademark registration to be amended if the goods and services are now delivered in a new technology, allowing owners to keep their protections if the identification of original goods and services is no longer accurate. You can be eligible to amend the identification of an active registration if the new technology is the “same fundamental goods or services through an updated means, method, or format and the underlying content or subject matter has not changed.” Since the purpose of this program is to allow owners to keep their protections, the amendment will only be allowed if the owner has completely stopped offering the goods or services with the old technology and now only offers the new technology.

The USPTO has issued some examples of what can and cannot be amended under this procedure. Acceptable amendments include the migration of printed art history books to downloadable electronic art history books (switching from class 16 to class 9) or prerecorded video cassettes teaching math to video recordings featuring math instruction (both class 9). Acceptable amendments can also change the material covered under the registration from a good to a service. An example being a change from downloadable software for use in database management to software as a service featuring database management software (Class 9 to Class 42).  

There are several reasons why an amendment could be unacceptable. Changing from downloadable spreadsheets for accounting to online spreadsheets for business management would be unacceptable because the subject matter has changed. Changing from printed finance magazines to printed finance magazines and online finance magazines would be unacceptable because the goods are still being used in their original form in addition to the new technology. 

The USPTO has published guidance on amending your registrations goods and services when technology evolves, which can be found here. To file for an amendment due to technological evolution you must submit a Petition to Director form in the Trademark Electronic Application System (TEAS). The petition must include a declaration of fact, a specimen of current use, and payment of required fees (petition to director and section 7 filing amendment to registration fee). A sample declaration can be found here.

Amending your registration’s goods or services when technology evolves | USPTO

Sample declaration to be provided with a technology evolution petition | USPTO