You may remember the CD-ROM, that vestige of a technological age mostly past by now. This was software as a good, a tangible item for sale usable in several ways. Of course, as with time, so goes with new technology: change is inevitable. Nowadays, we download, stream, and access software without even so much as a disc drive on almost any computer.

With this change comes the need to rethink trademark portfolios that contain marks covering software. After all, trademark protection comes from using a mark in connection with specific goods or services. When the form of those goods or services changes, sometimes the registrations must change as well.

The USPTO distinguishes between software that is “good” and web-based software, which they classify as a “service” due to the lack of physical good involved. In thinking of software as a service (SaaS), they note that the service can be categorized as technological services, or it may more accurately be seen through the lens of its underlying service that just “happens to be provided by means of a global computer network.” Consider this example: you offer a service providing teaching in an artistic field deployed via web-based software, you would likely be better classified in educational services than as software as a service.

So, what to do if this situation applies to you? While you can attempt to renew under your goods-based registration for software, this is likely to become a roll of the dice more often as time goes on if the USPTO will accept the renewal – knowing that your software is more service than goods. If you want to be safe and get ahead of the curve, consider talking to your IP attorney about applying for a service-based application before your next renewal is up for a goods-based registration to maintain protection for your software. If you need any help with this, OG+S is always happy to help talk about trademark portfolio management.

Thanks for reading!