[E-trademarks] Sanity Check - DOFU (SaaS vs. Downloadable Software)

[Boots, Daniel L]

Check past Trademark Office bulletins on this. I seem to recall there was a special policy adopted at one point for software due to this exact phenomenon – Class 9 S/W that people would previously buy hard copies of transitioning almost universally into downloadable software. I’d go with the DOFU of the original software as it’s still the original product -- software – it’s just its means of delivery to the customer that has changed. Also, remember that the Classification System (i.e., Class 9 vs. Class 42) is an administrative tool set up for the convenience of implementing and maintaining the NICE trademark system - it does not necessarily have the same force of law. I can be, of course, corrected in any of the above and would indeed welcome any clarification.

Daniel L. Boots
Partner

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Montgomery, Alexander P. via E-trademarks
Sent: Friday, April 4, 2025 9:52 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Montgomery, Alexander P. <amontgomery at hinckleyallen.com>
Subject: [E-trademarks] Sanity Check - DOFU (SaaS vs. Downloadable Software)

[WARNING: EXTERNAL SENDER]
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Client has a registration on the Supplemental Register for downloadable software in Class 9. DOFU goes back decades.

Client transitioned to cloud-based software in Class 42 less than five years ago (same mark).

In a new application for the Class 42 software, can it claim first use going back to the DOFU for the downloadable software in Class 9? Or is the DOFU when it first provided the Class 42 software? My initial thought was the latter, as the cloud-based software is a different type of product.

I’m trying to figure out if a new application for registration on the Principal Register with a 2(f) claim based on five years’ use is viable, or if we should simply petition to amend the goods in the previous registration to cloud-based software based on technology evolution.

Alexander P. Montgomery <http://www.hinckleyallen.com/people/alexander-p-montgomery>
Partner
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Hinckley Allen <https://url.uk.m.mimecastprotect.com/s/Q0H1C59nBs00qnXWhyimck_yZN/>
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p: 617-378-4366 |  f: 617-345-9020
amontgomery at hinckleyallen.com<mailto:amontgomery at hinckleyallen.com>

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