The U.S. Patent and Trademark Office (USPTO) has published a new Examination Guide, enacting certain requirements that will go into effect this Saturday, February 15, 2020. Among the new requirements are two important changes.
Most significantly, the USPTO will now require all new applications to list an email address for the applicant, even where the applicant has appointed an attorney, so that the USPTO can contact the applicant in certain situations. The email address cannot be outside counsel’s or a foreign law firm address. The USPTO will not use the email address to communicate directly with the applicant if the applicant has appointed an attorney, unless the communication relates to a cancellation action or the representation ends.
While the applicant’s email address will not appear in the Trademark Status and Document Retrieval (TSDR) status tab, it will be publicly viewable in the filed document in the TSDR documents tab. Scam emails and solicitations may increase as a result. The trademark community has objected to the new rule for this reason. If you receive a suspicious communication, always check the sender’s address, as USPTO communications will always come from a USPTO.gov address. If you worked with a law firm or an attorney to register your trademark, communications should be going to that attorney unless they pertain to a cancellation action or the representation has ended. The USPTO says it will not correspond directly with a represented party otherwise, unless it deems the representation has ended (for instance, if the party files a revocation of attorney or, for an application, once the registration has issued).
Going forward, applicants should designate an email address to fulfill this requirement (e.g., a general email address for the applicant’s legal department or a specific email address such as email@example.com). It may be preferable to use a general address rather than a personal or individual address of a representative or in-house counsel. However, this address should be monitored, because if an email transmission from the USPTO fails for any reason, the USPTO will not attempt to contact the trademark owner by any other means.
The other major change is that all formal correspondence concerning trademark applications and registrations will have to be filed electronically. There are a few narrow exceptions—for instance, if there is a widespread Trademark Electronic Application System (TEAS) outage or a natural disaster. Additionally, certain applications are “grandfathered” such as those submitted prior to February 15, 2020 that were filed on paper.
Lastly, the USPTO has tightened its requirements for acceptable specimens of use. These changes include stricter requirements for web page specimens. The new rules also expressly prohibit as specimens: an artist’s rendering, a printer’s proof, a computer illustration, a digital image, or a similar mockup of how the mark may be displayed, including a mockup of a label or tag.
For the full Examination Guide, click here.