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

[Sam Castree]

Yes, there is the issue of “Amending your registration’s goods or services
when technology evolves
<https://www.uspto.gov/trademarks/maintain/amending-your-registration-s-goodsservices-when>
.”  And, in fact, one of the PTO's examples is moving from "Downloadable
software for use in database management (International Class 9)" to "Software
as a service (SAAS) services featuring software for use in database
management (International Class 42)."  (Obviously, other kinds of software
beyond database management should be equally acceptable for this process.)

Cheers,

Sam Castree, III

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



On Fri, Apr 4, 2025 at 1:18 PM Boots, Daniel L via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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
>
>
>
> [image: D] +1 317 968 5361 <+13179685361>
>
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>
> Indianapolis
> <https://www.dentons.com/en/global-presence/united-states/indianapolis>
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> [image: Logo]
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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]*
> ------------------------------
>
> 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*
> ------------------------------
>
> Hinckley Allen
> <https://url.uk.m.mimecastprotect.com/s/Q0H1C59nBs00qnXWhyimck_yZN/>
> 28 State Street
> Boston, MA 02109-1775
> p: 617-378-4366 |  f: 617-345-9020
> amontgomery at hinckleyallen.com
>
>
> --
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