Update to U.S. Trademark Rules: Electronic Filing; Applicant Email; Specimens

3 min

UPDATE: On the eve of the day the new rule was to take effect, the U.S. Patent and Trademark Office changed the new rule requiring a non-lawyer e-mail address for all applicants and has confirmed they will allow a law firm e-mail address as long as it is different from the correspondence address. Rest assured the Trademark Group at Venable has numerous e-mail addresses it can use so we are prepared to comply with the new rule without needing additional information from our clients.

* * * * * * * * * *

Effective February 15, 2020, the United States Patent and Trademark Office (USPTO) will enact a series of rule changes that will have a significant impact on trademark filers. The widest-scale change is the requirement for electronic filing of all submissions to the USPTO. However, additional application and specimen requirements are likely to have a greater effect on applicants, as compared to prior practice.

First and foremost, in order to receive a filing date (i.e., meet the minimum filing requirement), new applications filed on or after February 15, 2020 must include an email address for each applicant. This rule applies even when the applicant is represented by an attorney. Registrants and parties to an inter partes proceeding before the Trademark Trial and Appeal Board (TTAB) must also maintain a valid email.

The email address must be one that is actually monitored by the owner. Examples include:

  • a personal email address;
  • an email address created for the purpose of communicating with the USPTO that is personally monitored by the trademark owner;
  • an in-house counsel email address; and
  • a general address (i.e., contact@ownercompany.com).

The email address may not be the address of outside counsel, a foreign law firm, a "black hole email address" where messages are automatically deleted, or an email address that the owner or party does not have direct access to for monitoring. Note: the email address will be public.

Second, the USPTO is tightening its specimen requirements and giving examiners more leeway to issue inquiries in order to clarify whether a specimen is actually in use in commerce:

  • When a label or tag is used as a specimen for goods, it must be shown to be physically attached to the goods. Additionally, the tag/label must show the mark in actual use in commerce, meaning that it must include informational matter that typically appears on a label for the particular goods (i.e., net weight, volume, UPC bar codes, list of ingredients).
  • If relying on a webpage, it must include the URL of the webpage and the date the page was accessed or printed. This information may appear on the webpage, in the TEAS form, or in a verified statement (if submitted later).

Finally, as of February 15, 2020, with very limited exceptions, all submissions to the USPTO must be filed electronically. This rule change follows similar rules regarding TTAB filings, as well as the USPTO's practice of disincentivizing paper filings with increased fees.

While the transition to electronic filing is in line with standard practice for most applicants, the requirement for an applicant email is a fundamental change that alters the minimum filing requirements. Foreign applicants and their attorneys seeking to file priority applications in the United States should keep this requirement in mind when meeting priority filing deadlines.

Furthermore, for applicants that rely on unaffixed labels and tags to show use, these methods should be updated with photos of the labels on actual goods.

For more information or questions, please contact Rebecca Liebowitz, Andrew Price, or Catherine Mitros.