U.S. Patent and Trademark Office Launches Pilot Program Allowing Owners to “Catch-up” Their Trademark Registration  

The U.S. Patent and Trademark Office (“USPTO”) has recently launched a pilot program that provides some trademark owners the opportunity to amend their identifications of goods or services that would otherwise be beyond the scope of the current identification.

In other words, the program allows owners to “catch-up” their trademark registrations and close the technology gap. For example, if your company at one time obtained a trademark registration covering “printed newsletters” and now offers “downloadable online subscriptions” or had a registration for “phonograph records featuring music” that is now offered as “downloadable music files,” there is an opportunity to “catch-up” the trademark protection. Here are some other examples of the types of amendments the USPTO will be accepting.

Since trademarks must be used in commerce on goods and services identified in their federal registration in order for the registration protection to be maintained, trademark owners must first demonstrate such use by filing a declaration of use.  In the declaration of use, the trademark owner indicates the use in connection with all the goods or services between the 5th and 6th anniversary of the registration, then again between the 9th and 10th anniversary of the registration, and then every ten years thereafter.

Trademark owners should review their trademark portfolio to see if this new pilot program may be of benefit.