STACY J GROSSMAN

Client Alert - New USPTO Rules Effective February 15, 2020


by Stacy J. Grossman,

 

On February 7, 2020, the United States Patent and Trademark Office (“USPTO”) issued a new examination guide, called “Mandatory Electronic Filing and Specimen Requirements.”  These requirements are scheduled to go into effect on February 15, 2020.

We anticipate a period of adjustment as these rules are implemented.  In the meantime, we urge our clients and foreign associates to send us new application, statement of use, renewal and other filing instructions well in advance of deadlines.

NEW E-MAIL ADDRESS REQUIREMENT

Trademark applicants, registrants and parties to Trademark Trial and Appeal Board proceedings will be required to provide and maintain a valid email address for receipt of correspondence from the USPTO.  An email address must be provided even if the trademark applicant or registrant is represented by counsel.  New applications will not be accepted without a valid email address.

Examples of acceptable email addresses for the applicant, registrant, or party include:

  • A personal email address;
  • An email address created for the purpose of communicating with the USPTO that is personally monitored by the trademark owner;
  • In-house counsel’s email address for a corporate owner;
  • An officer’s or partner’s individual email address for a corporate or partnership owner.


Examples of unacceptable email addresses include:

  • An email address of outside counsel;
  • A foreign law firm’s email address;
  • A designated email address to which all messages sent are automatically deleted and are never stored or reviewed (i.e., a “black hole email address”); or
  • An email address that the applicant, registrant, or party does not have direct access to monitor.


Going forward, when sending filing instructions, please provide us with an appropriate email address. 

In order to minimize spam, protect our client’s privacy, and ensure that emails are not tied to a single employee, we recommend that clients use (or create) an email address specifically for USPTO matters.  Examples include: info@company.com or USPTO@company.com.  Please expect to receive spam and misleading solicitations at this email address, and do not pay any fees to third parties without consulting us.


DOMICILE ADDRESS REQUIREMENT

The USPTO now also requires trademark applicants, registrants and parties to proceedings to provide a domicile address.  There has been great criticism of this requirement, including because some trademark owners do not have permanent domicile addresses and some trademark owners are concerned about their privacy. 

To assuage these concerns, Trademark Office forms will include two address fields: one will be part of the USPTO’s public database and can include a PO Box or “care of” address; the other address should not be accessible to the public, but does require an actual domicile address.

Please provide us with an appropriate domicile address when sending filing instructions.


CLARIFICATION OF RULES REGARDING SPECIMENS

The USPTO also clarified its rules with respect to specimens.  It made clear that specimens that appear to be digitally altered, or that don’t appear to show actual use of a mark in commerce will not be accepted.  Further, when webpages are used as specimens, applicants and registrants must provide the URL and the access or print date. 

***

If you have questions about these rules, or if you have privacy/security concerns and want to petition to keep your information confidential, please be in touch with Stacy Grossman.