Is Your Trademark Registration Outdated? Why It Might Be Time for an Update.  

As technology transforms how businesses deliver goods and services, many companies are modernizing their offerings to stay competitive. But have your trademark registrations kept pace?

If your products or services have shifted from physical to digital formats (e.g., cloud-based platforms, artificial intelligence-powered tools, or streaming media), your trademark registrations may no longer accurately reflect how your business operates. This disconnect can weaken your trademark rights and leave critical gaps in protection.

Fortunately, the U.S. Patent and Trademark Office (USPTO) offers a path forward. Under specific circumstances, trademark owners can petition to amend their registrations to reflect technological evolution — updating the means, method, or format of delivering goods or services — so long as the underlying content or subject matter has not changed. This process allows you to preserve your registration and priority rights without the cost and delay of filing a new application.

The USPTO has accepted amendments where the core offering remains the same, but the delivery method has evolved. Examples include:

• Publications: Printed materials now offered as downloadable e-books or online subscriptions
• Software: Products once sold on CD-ROMs now accessed via cloud or app stores
• Music: Audio cassettes featuring music now offered as downloadable musical sound recordings
• Entertainment: Programs once broadcast on cable television now delivered through streaming services via the Internet
• Retail: Physical storefronts replaced by online e-commerce platforms

However, this process is not available if you continue to offer goods or services in the original format. The USPTO requires a declaration confirming that the original format is no longer in use and that the evolved format reflects the same essential offering. This process essentially prevents registrants from losing their registrations when they cannot prove continued use of the mark with the outdated goods or services.

As part of the petition process, registrants must make the date of first use of the mark in connection with the updated technology of record and refrain from filing any declaration of incontestability for five years from the update. While not ideal to lose incontestable status on an existing registration, this process is still preferable to losing a registration in full.

Why this matters

Outdated registrations can limit your ability to enforce your rights or maintain your trademark. By proactively updating your registrations, you ensure that your brand remains protected in today’s digital-first marketplace without having to start from scratch.

What you can do

We recommend reviewing your trademark portfolio to identify registrations that may no longer reflect your current business model. If you find any, contact your Fish & Richardson attorney. We will assess your eligibility and guide you through the petition process to keep your registrations aligned and enforceable. In today’s fast-moving digital environment, up-to-date trademark registrations are essential to protecting your brand.