If your company has moved from selling physical media but now sells downloads or streaming services, you have an unusual and very helpful opportunity for your previous trademark registration.  The U.S. Patent and Trademark Office has a new program to extend trademark protection to your new products.

Ordinarily, if a trademark owner’s products change so much that they be in a different into a new goods and services classification, they will

“EdisonPhonograph” by Norman Bruderhofer, www.cylinder.de – Licensed under CC BY-SA 3.0 via Wikimedia Commons

need to file a new application to register that same trademark for the new things.  And if they stop selling the original things, like CDs and DVDs, the initial registration would expire.  Because trademark registrations gain more rights and stronger priority over time, that would be bad.

The ability to change goods and services under the same registration is a new thing for the USPTO.  Here are some of the rules:

1. You can only amend the description of your products.

2. It is permissible to change the description from goods to services or vice versa. (This one is important, because it means you can go from DVDs, physical goods, to streaming video, which is considered a service.)

“Disc drive (287665619)” by aussiegall from sydney, Australia – Disc drive Licensed under CC BY 2.0 via Wikimedia Commons

3. You must have ceased entirely to use the mark on the goods/services (for example, DVDs or CD-ROMs) in the initial trademark registration, and must now be using the mark only on the new products that represent some evolved form of technology.

4. The basic subject matter and content of the products must not have changed.

Trademark owners whose products and services have changed over time due to technological advancements would do well to look into this USPTO pilot program sooner rather than later.  It is an opportunity to bring their existing trademark registrations up to date with their products.  Because it is a pilot program, however, the USPTO is not making any promises that it will be a permanent change in their procedures, or that the program itself won’t change over time.

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