Starting in February, all U.S. trademark applicants must provide e-mail address

In 2019, the USPTO released many system upgrades and rule updates, 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 requirement to eliminate all paper filings (except under extraordinary circumstances). The USPTO says that often applicants and registrants miss important deadlines once a mark registers, even when they may have been previously represented by counsel.  The trademark bar is not so convinced. Nevertheless, the new rule will become effective in just over two weeks and according to USPTO training materials, an application will not be able to be submitted without providing this information. If the applicant is represented by counsel, the lawyer’s email address cannot appear in both places or the application will not be able to be submitted. Kalamaras Law Office’s recommendation is that represented clients create a special e-mail box 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 effectively. According to the USPTO Commissioner’s Office, the applicant email addresses will not be publicly visible on the “status” page of the USPTO database. However, if scammers or other solicitors want to find the information, they will be able to, as the original application form will be visible in the USPTO database. This has the trademark bar and privacy experts concerned.  We will continue to keep you apprised as we learn more about the new requirements after the rule goes into effect, 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 also be submitted.  The USPTO prefers that information to be on the website screen shot, but if you are not able to include it on the screen shot, you must ensure that the information is included elsewhere with your filing submission.  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.