[E-trademarks] Identification of software -- relevance to specimens for renewal

Fri Dec 13 14:35:55 UTC 2024

You can file a petition to amend the goods due to technology evolution. But you are correct that you can’t claim incontestability status until the evolved goods/services have been in use for 5 years.

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Charles B. Kramer via E-trademarks
Sent: Friday, December 13, 2024 1:52 AM
To: e-trademarks at oppedahl-lists.com
Cc: Charles B. Kramer <charlesbkramer.tm at gmail.com>; charles.b.kramer at gmail.com
Subject: [E-trademarks] Identification of software -- relevance to specimens for renewal

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.

The evolution is ongoing, with a proliferation of acronyms to match: SaaS, PaaS, IaaS, as this chart helps explain: www.leanix.net/en/wiki/apm/iaas-vs-paas-vs-saas

<http://www.leanix.net/en/wiki/apm/iaas-vs-paas-vs-saas>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).

In general:

 - software = Class 009

 - services (SaaS, PaaS, etc.) = Class 042

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.

And now it's trademark renewal time...

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).

Ditto a registration for SaaS cannot be renewed when the vendor has moved on to PaaS (or whatever).

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.

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).

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!).

Does anyone see a flaw in my analysis?

The Trademark Office seems to have struggled with this issue.  A search for "software" https://idm-tmng.uspto.gov/id-master-list-public.html<https://idm-tmng.uspto.gov/id-master-list-public.html> reveals a remarkable number of identifications that got deleted.

  - Charles

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