STACY J GROSSMAN

Controversial Trademark Office Rule Raises Privacy Concerns


by Stacy J. Grossman,

 

‘Tis the season to be jolly.  It’s also the season for trademark owners to be educated about new rules from the United States Trademark Office.
 
I usually write about fun IP issues, like copyright lawsuits stemming from dances in Fortnite, the Supreme Court’s decision about the FUC’T trademark, and HBO’s reaction to Presidential misuse of a slogan from Game of Thrones.
 
This article is not as fun, but truly important for trademark owners.  So please read on…
 
Until recently, trademark applicants and owners were not required to submit their own email addresses, telephone numbers or addresses to the United States Trademark Office when filing new applications to register trademarks, or when filing documents to maintain existing registrations.  
 
Because information submitted to the Trademark Office is included in a public, searchable database, some trademark owners – especially individuals and home-based businesses – preferred to withhold their personal information.  A party who wished to avoid the risks associated with the publication of private information had been able to file applications using its counsel’s contact information or a PO Box as its address.  
 
In addition to legitimate privacy concerns (many of which are laid out in a petition to the Trademark Office filed by Software Freedom Conservancy), there has been an increase in SPAM directed to trademark applicants and registrants – communications and solicitations from spurious vendors who send official looking invoices and fool many into paying unnecessary fees.  These fake solicitations have become such a problem that the Trademark Office published a cautionary notice about them.
 
In August 2019, largely in an effort to prevent fraudulent applications filed by parties outside the United States, the Trademark Office issued significant revisions to its rules, including the requirement that foreign trademark applicants be represented by U.S. counsel.  In connection with this rule, the Trademark Office issued a further requirement that all applicants and registrants provide a physical street address to establish their domicile – even if the trademark owner is represented by counsel.
 
On December 21, 2019, additional new rules will go into effect.  These rules require the electronic filing of trademark documents, and that trademark applications and renewal forms include the trademark owner’s e-mail address.  The rationale for the e-mail requirement is that the Trademark Office needs to be able to reach trademark owners with any post-registration issues.  (The power of attorney that exists during the trademark application process is presumed to end once a trademark registration certificate is issued.)  
 
Another significant change relates to specimens of use filed with trademark applications, allegations of use or renewals.  In order to prevent fraudulent specimens filed to prove use of trademarks in commerce, the Trademark Office will require (i) that specimens comprised of screenshots of websites also include the full URL of the web page on which the goods are offered for sale (or where the services are advertised and described), and show the date that the screenshot was taken; and (ii) product packaging specimens must include an image or description of the product, either on the packaging or in addition to the packaging itself.  For example, if the mark appears on a box that does not include a picture of the product, the trademark owner must also include a picture of the product next to the box.  Similarly, applicants will no longer be permitted to submit hangtags and labels alone: the tags and labels must be affixed to the actual goods in order to be accepted as specimens of use.
 
There are several important takeaway points for trademark owners:

  • Expect counsel to ask you for more information when filing new trademark applications, filing statements of use, or renewing existing registrations.
  • Establish a general email address for your business that is not your personal address, but that will be routinely monitored, in order to receive correspondence from the Trademark Office.
  • Ensure that you are making proper use of your trademarks, and that you are able to provide appropriate specimens to support your use.
  • Beware of SPAM from companies who send solicitations relating to your trademarks, and always consult with counsel before paying any fees to third parties.
  • If you have concerns about publishing private information, contact your attorney.  It may be possible to petition the Trademark Office for permission to use a c/o address in place of a personal domicile address in some circumstances.

If you are preparing a trademark application, statement of use, or renewal for an existing registration and have questions about these rules, feel free to contact us.  Of course, we will be in touch with our clients to discuss these matters in the New Year.