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

[Sam Castree]

Dear Charles,

This might not be a bad case for a Petition to the Director "to allow
amendment due to technology evolution
<https://www.uspto.gov/trademarks/maintain/amending-your-registration-s-goodsservices-when>
<https://www.uspto.gov/trademarks/maintain/amending-your-registration-s-goodsservices-when>."
The PTO even gives an example of "Downloadable software for use in database
management"  à  "Software as a service (SAAS) services featuring software
for use in database management."

I don't have all of the details of your client's case, but based on what
you wrote, it seems to me that this might be a decent option under the
circumstances.

Cheers,

Sam Castree, III

*Sam Castree Law, LLC*
*3421 W. Elm St.*
*McHenry, IL 60050*
*(815) 344-6300*



On Fri, Dec 13, 2024 at 12:54 AM Charles B. Kramer via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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
>
> 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 reveals a
> remarkable number of identifications that got deleted.
>
>   - Charles
>
>
>
> ===========================================
> Charles B. Kramer, Esq.
> ~ ATTORNEY ~
> Linkedin: www.linkedin.com/in/charleskramer
>      Tel: +1 917-512-2721
>    Email: charles.b.kramer at gmail.com <--- for direct responses (I don't
> monitor CharlesBKramer.TM at gmail.com)
>     Mail: 200 E. 10th Street, No. 816, New York, NY 10003
>
> --
> E-trademarks mailing list
> E-trademarks at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20241213/ea1bd080/attachment.html>