Josh Gerben Quoted in World Trademark Review on USPTO Pilot Program

The United States Patent and Trademark Office has initiated a new program in which, under limited circumstances, a registrant may amend their trademark registrations if they are no longer able to show proof of use because of the evolution of technology. A registrant’s application will have to endure another search by the USPTO and a 30-day period where interested parties may comment on the proposed amendments before they will be published.

Josh Gerben was quoted by World Trademark Review about his thoughts on the new program:

“[The program will not affect trademark counsel] because a registrant should not be allowed to add goods and/or services that would be outside the scope of the original application.  […]  Moreover, if the publication is handled in the same manner as new applications, it should not make the monitoring any more difficult.”

“As technology evolves many clients find out that they need to file new trademark applications on old trademarks.   The drawback to having to file a new trademark application (especially in the US) is that you can lose your ‘incontestability status’ on your older registration. […] This can have a significant impact on the ability to police the trademark, and potentially open up new challenges to the registration that the trademark owner would not have faced if the registration had remained incontestable.”


Source: Little, T.  “USPTO Pilot Programme Welcomed Despite Limited Practical Impact.”  September 03 2015.

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