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Dear esteemed list,<br><br>
Well, now I know....
<dl>
<dd>
<a href="https://www.uspto.gov/trademarks/maintain/amending-your-registration-s-goodsservices-when" eudora="autourl">
https://www.uspto.gov/trademarks/maintain/amending-your-registration-s-goodsservices-when</a>
<dd>Amending your registrations goods or services when technology
evolves
</dl>Thanks to someone on the list for wising me up.<br><br>
But now I have a more specific question...<br><br>
Is being granted the amendment a "sure thing" for the
transition from downloaded software to SaaS / PaaS and so on? This
must be an extremely common request.<br><br>
The change from software to SaaS is very small from the customer's point
of view (Microsoft Word, for example, still looks like Word), even though
from the vendor's side it's a whole new world (storing and dating mining
the product of its customers' use of Word -- creating clearly new
services outside the original registration).<br><br>
- Charles<br><br>
<br>
At 01:52 AM 12/13/2024, Charles B. Kramer wrote:<br>
<blockquote type=cite class=cite cite="">Software has evolved in how it
is delivered -- from physical delivery, to download, to access online as
part of a service that stores the files created.<br><br>
The evolution is ongoing, with a proliferation of acronyms to match:
SaaS, PaaS, IaaS, as this chart helps explain:
<a href="http://www.leanix.net/en/wiki/apm/iaas-vs-paas-vs-saas" eudora="autourl">
www.leanix.net/en/wiki/apm/iaas-vs-paas-vs-saas</a><br><br>
In some ways, the distinctions between those things are meaningful --
both as to the mechanics (where the software is installed), how people
work (log into the cloud from anywhere) and to the big business of data
mining (the aggregate of all stored files from all customers analyzed for
the benefit of AI).<br><br>
In general:<br><br>
- software = Class 009<br><br>
- services (SaaS, PaaS, etc.) = Class 042<br><br>
But the distinction between software ("goods") and SaaS (a
"service") is somewhat artificial. SaaS often involves
some software download (if only a browser applet) and business software
is usually sold with an associated update and support service. And,
to customers, the product (for example, Microsoft "Word") is
the same product from the same seller -- despite all those evolutions of
how it is delivered.<br><br>
<b><i>And now it's trademark renewal time...<br><br>
</i></b>Presumably a registration for downloadable software cannot be
renewed when the vendor has moved to a SaaS model (even though for both
software and SaaS an acceptable specimen includes a screenshot of a
software opening screen showing the mark).<br><br>
Ditto a registration for SaaS cannot be renewed when the vendor has moved
on to PaaS (or whatever).<br><br>
This seems a bit unfair to registrants, who may never achieve
"incontestable" status, and who incur the expense of repeated
new applications. In fact, the registrant may have built up
trademark recognition over decades, but his registration cannot reflect
that.<br><br>
In theory, one should identify goods/services in a way to make it
impervious to changes which are irrelevant from a customer's point of
view -- "word processing" without regard to the technicalities
of how it's delivered. But I don't know any way to do that (for my
client's product, anyway).<br><br>
Alternatively, one could argue to a renewals Examiner that the fact the
client's website has evolved from touting SaaS to touting PaaS (or
whatever) is not material, and a PaaS specimen should be accepted to
renew a SaaS registration (good luck with that!).<br><br>
<b>Does anyone see a flaw in my analysis?<br><br>
</b>The Trademark Office seems to have struggled with this issue. A
search for "software"
<a href="https://idm-tmng.uspto.gov/id-master-list-public.html" eudora="autourl">
https://idm-tmng.uspto.gov/id-master-list-public.html</a> reveals a
remarkable number of identifications that got deleted. <br><br>
- Charles<br><br>
<br><br>
===========================================<br>
Charles B. Kramer, Esq.<br>
~ ATTORNEY ~ <br>
Linkedin:
<a href="http://www.linkedin.com/in/charleskramer" eudora="autourl">
www.linkedin.com/in/charleskramer</a> <br>
Tel: +1 917-512-2721<br>
Email: charles.b.kramer@gmail.com <--- for direct
responses (I don't monitor CharlesBKramer.TM@gmail.com)<br>
Mail: 200 E. 10th Street, No. 816, New York, NY
10003<br>
</blockquote>************************** <br><br>
<br><br>
<br><br>
<br><br>
<br>
<b>===========================================<br>
Charles B. Kramer, Esq.<br>
</b><i>~ ATTORNEY ~ <br>
</i><b>Linkedin</b>:
<a href="http://www.linkedin.com/in/charleskramer" eudora="autourl">
www.linkedin.com/in/charleskramer</a> <br>
<b> Tel</b>: +1 212-254-5093<br>
<b> Email</b>: charles@charlesbkramer.com <b><--- for
direct responses</b> (I don't monitor CharlesBKramer.TM@gmail.com)<br>
<b> Mail</b>: 200 E. 10th Street, No. 816, New York, NY
10003<br>
<b> Blog</b>:
<a href="https://www.provideocoalition.com/CharlesBKramer/" eudora="autourl">
https://www.provideocoalition.com/CharlesBKramer/<br>
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