Update Your Trademark Registration to the Digital Era

Articles / Publications

In light of rapidly evolving technology, the United States Patent and Trademark Office (USPTO) will now allow you to amend your federal registration to modernize it. It is quite common for trademark applications to have listed such descriptions as "downloadable software for use in database management," "floppy discs for computers for word processing," "phonograph records featuring music" or "prerecorded video cassettes in the field of ...". While current when originally obtained, these registrations are now virtually obsolete.

To address this issue, as of September 1, 2015, the USPTO now has a process that may allow you to update your federal trademark registration to account for evolving technology.

There is no question that the digital age has significantly changed the goods and services offered by suppliers. Manufacturers, suppliers, vendors and distributors have modified their goods and services to remain desirable and marketable in this digital world. The digitization of goods and services has caused CD's to become digital sound records, downloadable software to be delivered in the software as a service (SAAS) model and cable television to be internet broadcasts.

In the software space, the ability to modify your trademark registration from "downloadable software for use in ..." to "software as a service (SAAS) featuring software for use in...", would be of considerable benefit. Now, it is possible. Through the USPTO Pilot Program, you now have the ability to modify the recitation of services of your federal registration to be modernized, and to account for current technology. The following are some examples of amendments that would most likely be accepted:

In contrast, it would most likely not be allowable to amend "downloadable software for use as a spreadsheet in the field of accounting" to "providing online non-downloadable software for use as a spreadsheet in the field of business management" because accounting and business management would be too different, based upon technology modernization.

We would encourage you to review your trademark and service mark registrations to determine if you wish to take advantage of this program. The USPTO has not informed us of the duration of its program, and it is anticipated that the duration will depend upon the volume of requests for amendments. Therefore, the sooner you evaluate your registrations to see if you could benefit from an amendment to reflect current technologies, the greater the chance you have of effectuating such an amendment.