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

Fri Dec 13 15:24:34 UTC 2024

Hi, Laura,

Well, at least I can take pride that I am not afraid to be revealed to be
an idiot. :)

THANKS for smartening me up!

- Charles

On Fri, Dec 13, 2024 at 9:36 AM Winston, Laura <lwinston at offitkurman.com>
wrote:

>
>
> 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.
>
>
>
> Laura J.
>
>
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> Winston
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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
>
> 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
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>     Mail: 200 E. 10th Street, No. 816, New York, NY 10003
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