Petition Decision

United States Patent and Trademark Office (USPTO)

 

U.S. Application Serial No. 79047033   U.S. Registration No. 3561283   Mark:  RED BULL
Correspondence Address:         Joseph V. Myers III        Seyfarth Shaw, LLP        1075 Peachtree St., #2500        Atlanta GA 30309
Owner:  Red Bull GmbH
Reference/Docket No. 104002030150   Correspondence Email Address:         tmatlanta@seyfarth.com

 

 

PETITION DECISION

 

 

Issue date:  January 21, 2020

 

 

Dear Mr. Myers:

 

This acknowledges receipt on January 22, 2019 of Red Bull GmbH’s (petitioner’s) Section 7 request and petition to the Director of the United States Patent and Trademark Office (USPTO) to waive Trademark Rule 2.173(e) to allow an amendment to the identification of goods for the above-referenced registration due to technology evolution.  See 37 C.F.R. §2.173(e).  Upon review of the proposed amendment, the Director has determined that the proposed amendment cannot be allowed.  The above registration is based on an extension of protection of petitioner’s International Registration No. 945573 pursuant to Trademark Act Section 66(a).  15 U.S.C. §1141f(a). 

 

On September 1, 2015, the United States Patent and Trademark Office (USPTO) launched a pilot program to allow, under limited circumstances upon petition to the Director, amendments to identifications of goods and services in trademark registrations that would otherwise be beyond the scope of the current identification, but are deemed necessary because evolving technology has changed the manner or medium by which the underlying content or subject matter of the identified products and services are offered for sale or provided to consumers (Pilot).  See Announcement of Pilot Program to Allow Amendments to Identifications of Goods and Services in Trademark Registrations Due to Technology Evolution at http://www.gov.uspto.report/sites/default/files/documents/Technology_Evolution_Pilot_Program.docx.

 

However, an extension of protection of an international registration remains part of (and dependent on) the international registration even after registration in the United States.  15 U.S.C. §1141j .  Therefore, the holder of a registered extension of protection can only request a change to the goods or services under Section 7 of the Trademark Act if the change is to limit or partially delete goods, services, or classes.   TMEP §1609.01(a) (emphasis added).

 

In this case petitioner seeks to amend the following wording:

 

-          Magnetic data carriers, namely, video discs in the field of aviation, sports, aerobatics, flying competitions, entertainment, athletic competitions, and exhibitions; in International Class 9

 

to

 

-          Magnetic data carriers, namely, video discs in the field of aviation, sports, aerobatics, flying competitions, entertainment, athletic competitions, and exhibitions; automatic vending machines; entertainment machines, namely, electronic video game machines, in International Class 9.

 

While petitioner declares that the amendment is needed because of evolved technology, based on the international registration, the requested amendment (deletion of ‘magnetic data carriers’) is outside the scope of the original identification of goods as notified to the USPTO and as such is not permissible under the Madrid Protocol.

 

Because the petition is not permissible, it is DISMISSED.  The $100 petition fee and $100 Section 7 amendment fee will be refunded in due course. See TMEP §405.04.[1]     

 

Please contact me if you have any questions.  However, petitioner is not without a remedy.  Petitioner can file a new application for the evolved goods.  The USPTO encourages that new applications be filed electronically using TEAS at www.uspto.gov .

 

 

 

/Karen M. Strzyz/

Attorney Advisor

Office of the Deputy Commissioner for Trademark Examination Policy

571-272-9419

karen.strzyz@uspto.gov