We recognize that technology is always changing. Trademark owners sometimes adjust the way they do business to stay competitive in rapidly evolving fields. For instance, they may offer their goods or services in an updated format when those listed on their registration become outdated or obsolete. This petition option offers these trademark owners, under limited circumstances, an opportunity to amend their registrations.
Trademark owners with active registrations may petition the Director to allow amendment to the identification of goods or services. You may be eligible if you provide the same fundamental goods or services through an updated means, method, or format and the underlying content or subject matter has not changed.
For example, if your registration identifies your goods as “printed children’s books,” but you no longer provide the books in a printed format, you may file a petition requesting to amend the goods to “downloadable electronic children’s books.” The goods or services in their new form are the “evolved” goods or services.
All amended identifications are published in the Trademark Official Gazette in conjunction with the issuance of an updated registration certificate (URC).
How to submit a technology evolution petition
1. Open the Petition to Director form in the Trademark Electronic Application System (TEAS).
- Select the radio button labeled “Allow an amendment due to technology evolution.”
If this option does not appear on the form, select “Other” and enter “Petition to allow amendment due to technology evolution” in the “Enter Explanation” field.
- In the free-text area of the Petition to Director form, provide both the information needed on the petition and the proposed amendment to the identification of goods or services under section 7. View a sample declaration to provide with the petition. Request a waiver of the “scope” rule, (Trademark Rule 2.173(e), 37 C.F.R. §2.173(e)), which states that no amendment to the identification of goods or services in a registration will be permitted except to restrict the identification or change it in ways that would not require republication.
- Provide a declaration of facts stating the following:
a) Based on changes due to evolving technology in the manner or medium by which products and services are offered for sale and provided to consumers, petitioner cannot show use on the original goods or services;
b) Petitioner currently uses the trademark on goods or services in a manner or medium reflecting the evolved technology, and the underlying content or subject matter remains unchanged; and
c) Absent an amendment of the identification, petitioner would be forced to delete the original goods or services from the registration, and thus lose protection in the registration in relation to the underlying content or subject matter of the original goods or services.
d) Petitioner agrees not to file or refile an affidavit or declaration of incontestability under section 15 of the Trademark Act, 15 U.S.C. section 1065, as to the evolved goods or services for at least five years from the date of acceptance of the amendment.
- Provide both dates of use anywhere and in commerce for the goods or services in their evolved form. Although the original dates of use would remain in effect in the registration, the “evolved” dates would become part of the public record.
- Enter your current and proposed identifications within the free-text portion of the form. Use the Trademark ID Manual to help you choose the best description for your evolved goods or services.
a) All proposed identifications must comply with current requirements regarding specificity and classification.
b) Identify the final identification of goods or services, which includes both the evolved goods or services and any remaining goods or services (not subject to technology evolution) for all International Classes.
c) In certain circumstances, an additional International Class fee may be required.
2. Attach a specimen that shows current use of your trademark in commerce on or in connection with each of your evolved goods or services.
3. Provide an affidavit or signed declaration under Trademark Rule 2.20, 37 C.F.R. section 2.20, to verify the information provided in your request.
4. Pay both the “Petition to Director” fee and the section 7 “Filing Amendment to Registration” fee.
Your technology evolution petition may be granted if:
- You own a registered trademark for goods or services that contain content or feature subject matter (for example, audio tapes featuring music, printed books in the field of science and technology);
- You provide the same fundamental goods or services in an evolved form and the underlying content or subject matter of the goods or services have not changed;
- You no longer provide the original form of the registered goods or services;
- You no longer provide any goods or services identified in your registration that contain the same underlying content or subject matter
- Your proposed amendment to the identification of goods or services complies with current requirements regarding specificity and classification
- Your petition includes all of the requirements outlined in the above section; and
- We search our records of existing registrations and pending applications while reviewing the petition and do not uncover any potential third-party harm.
Your technology evolution petition may be denied if:
- You still use the trademark on the original goods or services or on other goods or services identified in the registration containing the same underlying content or subject matter.
For example, if your registration identifies your goods as “phonograph records and audio tapes featuring music,” you would not be eligible to amend the goods to “phonograph records and compact discs featuring music.” This is because you still provide phonograph records, which have the same underlying content as your evolved goods. Instead, you would need to delete the goods or services that are no longer in use from the registration and file a new application to seek registration of your mark for the evolved goods or services.
- The identification of goods or services in your registration is broad enough to include your evolved goods or services.
For example, if your registration identifies your goods as “newsletters in the field of accounting” (International Class 16), it can be amended to “providing on-line newsletters in the field of accounting” (International Class 41) without a petition. Instead, you can file a Section 7 Request form to narrow the scope of your goods or services. See TMEP section 1402.07(c) for more information.
If your petition omits certain requirements, we will issue an inquiry letter providing you with 30 days to provide the missing elements.
Meeting a maintenance filing deadline
If you have an upcoming maintenance filing deadline and are awaiting a decision on a technology evolution petition that you submitted, please do the following:
- File your maintenance filing for the evolved goods or services, since the original goods or services are no longer in use.
- Use the miscellaneous section of the form to explain that you have filed a technology evolution petition and request that the Post Registration Division defer review of your maintenance filing until the petition decision issues.
If you fail to submit a required maintenance filing under sections 8, 9, or 71 of the Trademark Act, your registration will be canceled or expire and you will not be able to reinstate it.
Additional considerations
Madrid-based registrations
Because Madrid-based registrations are based on the underlying international registrations, there are additional considerations that may limit your ability to amend the identification due to technology evolution. The scope of your amended goods or services may not exceed the scope of the original goods or services listed in your international registration. Additionally, you may not change the classification of your goods or services.
Incontestable status
If your right to use your trademark is incontestable, that incontestable right will not transfer to your amended goods or services. You may not file or refile an affidavit of incontestability for at least five years following the issue date of your electronic updated registration certificate.
Examples of acceptable and unacceptable amendments due to technology evolution
Acceptable amendments
| Original identification | Amended identification |
|---|---|
| Phonograph records featuring music (International Class 9) | Musical sound recordings (International Class 9) |
| Prerecorded video cassettes in the field of mathematics instruction (International Class 9) | Video recordings featuring mathematics instruction (International Class 9) |
| Floppy discs for computers for word processing (International Class 9) | Providing on-line non-downloadable software for word processing (International Class 42) |
| Downloadable software for use in database management (International Class 9) | Software as a service (SAAS) services featuring software for use in database management (International Class 42) |
| Printed books in the field of art history (International Class 16) | Downloadable electronic books in the field of art history (International Class 9) |
| Entertainment services, namely, an ongoing comedy series provided through cable television (International Class 41) | Entertainment services, namely, an ongoing comedy series broadcast via the Internet (International Class 41) |
Unacceptable amendments
| Original identification | Petition to amend | Reason denied |
|---|---|---|
| Downloadable software for use as a spreadsheet in the field of accounting (International Class 9) | Providing on-line non-downloadable software for use as a spreadsheet in the field of business management (International Class 42) | The subject matter of the spreadsheet software has changed from accounting to business management. |
| Printed magazines in the field of finance (International Class 16) | Printed magazines in the field of finance (International Class 16) and Providing on-line magazines in the field of finance (International Class 41) | The petitioner is still using the goods in their current form. The petitioner may file a new trademark application for the services in International Class 41. |
| Phonograph records featuring music (International Class 9) | Streaming of audio material in the nature of music (International Class 38) | The underlying goods or services have changed. The petitioner originally provided musical recordings, but now provides a service that transmits music. An amendment would be permitted from “phonograph records featuring music” in International Class 9 to “providing on-line music, not downloadable” in International Class 41, which is a service of providing content in a new manner, i.e., “online.” |
| Video game tape cassettes and video game cartridges (International Class 9) | Video game discs and video game cartridges (International Class 9) | Although the petitioner is no longer using the trademark on "video game tape cassettes," the petitioner is still using the trademark on "video game cartridges." Without the amendment, the petitioner would not lose protection in relation to the underlying content of the original goods. The petitioner may file a new trademark application for "video game discs" in International Class 9. |
| Re-recorded DVDs featuring physical fitness instruction (International Class 9) | Downloadable videos featuring physical fitness instruction (International Class 9) | The type or underlying nature of the “videos” have not been identified with sufficient specificity to comply with the current identification requirements. For example, an amendment to “downloadable video recordings featuring physical fitness instruction” would be acceptable in International Class 9. |
| Magazine for financial services marketing professionals (International Class 16) | Providing online non-downloadable magazine in the field of financial services (International Class 41) | The language in the original identification identifying the particular target audience is missing. The limiting language must be included for the identification to be acceptable, for example, “providing online non-downloadable magazine in the field of financial services for financial services marketing professionals”, in International Class 41. |
Information on the original pilot program
Throughout the pilot program, we published all proposed amendments that appeared likely to be acceptable prior to amending the registration. Interested parties had 30 days from the publication date of the amendment to comment on proposed amendments and such comments factored into assessing the third-party harm aspect of the Petition to Director under Trademark Rule 2.146, 37 C.F.R. section 2.146, to amend the identification.
During the more than seven years of the pilot program, we received only one comment from the public in response to a published proposed amendment. The USPTO stopped publishing proposed amendments on July 7, 2023 and is no longer reviewing comments regarding the amendments.
Now, every amended identification is published for notice purposes in the Trademark Official Gazette with other amended registrations under section 7 of the Trademark Act in conjunction with the issuance of an updated registration certificate (URC).