STACY J GROSSMAN

Update: E-Mail Address Requirement for US Trademark Owners


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 were scheduled to go into effect on February 15, 2020.  Because of pushback from US trademark attorneys, the USPTO amended the examination guide on February 14, 2020 – one day before the February 15 implementation date of the new rule. This post addresses the new e-mail address requirement for US trademark owners. 

The February 7 Rule, discussed here, required that applicants, registrants and parties to Trademark Trial and Appeal Board proceedings provide and maintain a valid email address for receipt of correspondence from the USPTO.  An email address was required to be provided - even if the trademark applicant or registrant was represented by counsel.

The USPTO's rationale for the email address requirement is to ensure that trademark owners receive courtesy copies of communications from the Trademark Office in the event that representation ends, or an attorney is remiss in its obligations to clients. Also, under current US law, the USPTO considers an attorney's representation of a client to cease upon registration of a mark. (Nothwithstanding this presumption, most firms, including mine, docket all of their clients' marks, and continue to provide notices and act for clients until formally disengaged.)

Concerned counsel objected to the February 7 Rule for several reasons, including privacy concerns for individual applicants who might not want to disclose their email addresses, and the confusion that might arise when foreign trademark owners received unfamiliar correspondence, SPAM and confusing solicitations related to their US trademarks. As a result, the Trademark Office amended its revised examination guide, just one day before implementation. 

The new rule provides, in pertinent part:

Even if there is an appointed attorney, a separate email address for the applicant, registrant, or party is required ... so that the USPTO can contact them if representation ends...

Trademark applicants and registrants who are represented by an appointed attorney may provide an email address of their choice in the owner email field of the TEAS forms... [T]he email address can be a unique email address created specifically for this purpose by the owner or their attorney. To avoid receiving unsolicited communications at a personal or business email address, applicants and registrants may wish to create an email address specifically for communication and correspondence related to their trademark filings at the USPTO.

The rule has only been in effect for a few weeks, so this guidance may change, but the current thinking is this:

- Individuals who wish to maintain privacy can either create a unique email address for the purpose of receiving communications from the Trademark Office or request their attorney to do this on their behalf.

- US companies should create a unique email address, or provide an existing address that can be used for this purpose (e.g.: info@company.com).

- Foreign companies can either create a unique email address, provide an existing address, or request their local counsel to create an email address for them. We are aware that foreign firms providing instructions to US counsel might wish to receive communications from the USPTO on their clients' behalf.  There is some uncertainty about whether or not foreign firms can use a single address for all of their clients, such as USPTO@foreignfirm.com.  If this is something a foreign firm wishes to consider, please discuss with your US counsel.

Regardless of the email address used, we caution that such addresses will surely receive misleading solicitations and SPAM, as noted in this advisory from the USPTO, and clients should be appropriately warned.

While more clarity might emerge regarding this rule over the coming months, it is clear that an additional email address must be provided to the USPTO - a US attorney address alone is no longer sufficient. To avoid delays in filing applications, office action responses, renewals and other communications with the USPTO, we ask that clients and foreign associates be prepared to provide us with an appropriate email address when sending instructions.

If you have questions or would like to discuss this rule, please be in touch.