Starting in February, all U.S. trademark applicants must provide e-mail address
In 2019, the USPTO released many systems and rules upgrades, and not all of them provided increased efficiency. Effective February 15, 2020, all trademark applicants will be required to provide an e-mail address on their trademark applications at the USPTO, regardless of whether they are represented by counsel. According to the USPTO, the purpose of this new rule coincides with its mandatory electronic filing rule to eliminate paper filings (except when there are computer outages requiring alternate submission). The USPTO says that often applicants and registrants miss important deadlines once a mark registers even when they may have been represented by counsel during the application stage. The trademark bar is not so convinced. Nevertheless, the new rule will become effective on February 15, 2020, and according to USPTO training materials, an application will not be able to be submitted without this information. If the applicant is represented by counsel, the lawyer’s email cannot appear in both places, and if it does, the application will not be able to be submitted. Kalamaras Law Office recommends represented clients create a special mailbox for legal correspondence that will be monitored and provide that information to us so that we can comply with the rules and still serve our clients. According to guidelines issued by the USPTO on Friday, the USPTO agrees. It suggests trademark owners can supply a personal email address or any email address owned and monitored by the applicant. The purpose of the new rule, according to the USPTO is to ensure the Trademark Office can reach the trademark owner in the event it needs to. According to the USPTO Commissioner’s Office, the applicant email addresses will not be publicly visible on the “status” page of the USPTO database, but if scammers or other solicitors want to find the information, they can find it by searching the original application. This has the trademark bar and privacy experts concerned. We will continue to keep you apprised as we learn more about the new requirements and the trademark bar continues to complain about this rule.
New Specimen guidelines
Also starting February 15, 2020, the USPTO has continued to refine its specimen guidelines. We have previously reported on the fact that for all specimens for services where a website is submitted, the URL and access date must now be submitted. The USPTO prefers that information to be on the screen shot, but if you are not able to include it on the screen shot, ensure, that information is in your filing somewhere. For goods, the USPTO has clarified that for any labels and tags related to goods, the specimen must show the mark as used in commerce. For instance, there must be indicia that the label and/or tag is being used in commerce (e.g., a UPC bar code, net. wt., government warning). If the label or tag appears to be temporary in nature, the specimen may be refused. Similarly, if you submit an outer shipping container, you must also show the goods that will ship in that container placed on top of the container for the specimen to be accepted.
These are the two big changes coming on February 15, 2020. If you have any questions about these or if we can help you with your trademark applications, please do not hesitate to contact us. This blog post was updated on February 9, 2020 based on the new USPTO examination guidelines issues on February 7, 2020.
Stacey C. Kalamaras is the founding partner of Kalamaras Law Office, LLC. She has extensive intellectual property experience with a particular focus on trademark prosecution and enforcement. She has protected some the world’s largest brands in more than 150 countries and specializes in helping small and medium sized businesses grow and protect their brands. Contact her at email@example.com.
Stacey is also the founder and lead instructor of Trademarkabilities®, an online trademark academy for lawyers, whose mission it is to prepare lawyers to be confident and effective practitioners before the USPTO. To learn more, please visit https://www.trademarkabilities.com/.