On Friday, the United States Trademark Office ("USPTO") announced changes to the trademark rules of practice that will go into effect on February 15th, 2020. While most of the changes are innocuous, such as requiring that all filings are made electronically, one change is significant – the USPTO will now require the inclusion of an email address specific to the applicant, and will no longer accept an email address from the applicant's counsel of record.
The rule change was announced this past Friday, February 7th and was met with a wave of criticism from brand owners and outside counsel. The change raises a host of troubling issues including privacy concerns, a potential increase in exposure to scams and junk email. While the stated goal of the rule is understandable (the USPTO's effort to achieve complete electronic processing of trademark procedures) and the implied goal is also understandable (another effort to curtail nefarious trademark filings by foreign actors), this change is a step too far and may cause disruption for U.S. brand owners and individuals.
As of this posting, the new rules are set to go into effect this week. Brand owners need to select an email address that would be appropriate to provide to the USPTO. This alert provides a comprehensive overview of the rule change in its entirety including details about some of the less controversial changes scheduled to take effect this Saturday, February 15th.
The Trademark Trial and Appeal Board ("TTAB") has also updated the standard protective order ("SPO"), effective February 5th. Notably, the SPO has not been amended to allow for in-house counsel to have automatic access to documents marked as "attorneys eyes only". This alert reviews these changes as well.
Trademark Filings Must Include a Separate Email Address for the Applicant
The USPTO now mandates that trademark applicants include their own email address and expressly forbids identifying an outside lawyer's email address or an email address created for the purposes of filing trademark applications. If an in-house attorney files on behalf of the company, a second email address must be included: one for the "owner" of the email address field and one for the "filing correspondent" email address field.
The Examination Guide 1-20 includes this advisory:
In order to receive a filing date, new applications filed on or after February 15, 2020 must include an email address for each applicant and, if represented by an attorney, the name, postal address, and email address of the attorney. See 37 C.F.R. §2.21(a)(1)-(2). In addition, applicants, registrants, and parties to a proceeding must maintain a valid email address for correspondence, unless an exception noted in sections II.A or II.B.1 applies. See 37 C.F.R. §2.23(b)-(c).
Even if there is an appointed attorney, a separate email address for the applicant, registrant, or party is required under 37 C.F.R. §2.32(a)(2), so that the USPTO can contact them if representation ends. Any email address that can be used to directly contact the applicant, registrant, or party (i.e., an address that is accessible and regularly reviewed by the applicant, registrant, or party) will be acceptable. Examples of acceptable email addresses for the applicant, registrant, or party 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;
- In-house counsel's email address for a juristic entity owner;
- An officer's or partner's individual email address for a corporate or partnership owner;
- A holding company officer's individual email address, if the holding company is a related company per TMEP §1201.03; or
- A juristic entity owner's email address, e.g., email@example.com or firstname.lastname@example.org, if it is personally monitored by the trademark owner (the email address does not have to be a corporate URL address).
However, email addresses that cannot be used to directly contact the applicant, registrant, or party are unacceptable. Examples of unacceptable email addresses include:
- An email address of outside counsel; under Rule 2.32(a), a separate (and different) email address for the applicant is required so that the USPTO can contact them if representation ends;
- A foreign law firm's email address;
- A designated email address to which all messages sent are automatically deleted and are never stored or reviewed (i.e., a "black hole email address"); or
- An email address that the applicant, registrant, or party does not have direct access to monitor.
In connection with these requirements, the TEAS forms will require email addresses for the applicant, registrant, or party and its attorney, if one is appointed. For in-house counsel and attorneys representing themselves in a matter, the TEAS forms will still require two different email addresses: one for the owner email address field and one for the attorney email address field. For technical reasons related to the TEAS forms, these addresses cannot be identical.
While the USPTO will not make the email address of the applicant, registrant or party visible in the Trademark Status and Document Retrieval ("TSDR") status tab, the email address will be viewable in the TSDR documents tab. An applicant may petition the USPTO to redact the email address, but that request will only be granted in an "extraordinary situation." See TMEP §1708.
The requirement for valid email addresses also applies to applications filed pursuant to Section 66(a) and post-registration maintenance documents. If the email address fails for any reason, the USPTO will not attempt to contact the correspondent by any other means.
We hope to make the implementation of this change as seamless as possible for our clients. Our goal is to determine an appropriate email address that will meet the new requirements while also protecting our clients' privacy interests.
Additional Information for Specimens Required To Combat Fraudulent Filings
The USPTO has amended the rules concerning certain specimens to conform with existing statutory requirements and precedential case law. For example, a website printout must include the uniform resource locator ("URL") and the access or print date. Labels and hang tags will be accepted if they are shown affixed to the goods. A label or hang tag that is not physically attached to the goods will only be accepted if, on its face, the specimen shows that the mark is in actual use in commerce. The Examination Guide provides that "to clearly show use in commerce, the tag or label would, in addition to showing the mark, include information matter that typically appears on a label in use in commerce for those types of goods such as net weight, volume, universal product codes ('UPCs'), lists of contents or ingredients or other information that is not part of the mark but provides information about the goods."
The amendments concerning acceptable specimens is another way in which the USPTO has implemented changes to address the rise in digitally altered specimens and fraud on the USPTO. Last August, the USPTO enacted a rule that required all foreign applicants to engage U.S. counsel, which has led to a decline in fraudulent filings by foreign applicants. While the changes concerning specimens may impose additional hurdles on U.S.-based applicants, those requirements should be able to be easily met for those that are legitimately using a mark in commerce.
In-House Counsel Continue to Be Denied Access to AEO Materials
Over the past two years, the TTAB sought comments from stakeholders regarding changes to the SPO. The most controversial potential change involved whether in-house counsel should be given access to confidential information marked as "Confidential – For Attorneys' Eyes Only" (Trade Secret/Commercially Sensitive). The TTAB received a number of comments coming down on both sides of this issue. Because the scale did not tip decidedly in the favor of allowing in-house attorneys automatic access, the TTAB decided to keep the rule the same. As such, the SPO does not provide access to AEO material by in-house counsel unless such access is specifically stipulated to by the parties.
What Does this Mean for You? What Steps Should You Take?
- Designate an email address that is dedicated to USPTO filings. For individuals, we suggest creating a new email address for this purpose, which is monitored, but is not one that is used for personal business.
- For in-house counsel, the SPO may not be ideal if you want access to all documents produced in a TTAB proceeding (which would be helpful for you to assist with strategy development and arguments presented by outside counsel). The parties should negotiate modifications to the SPO during the initial discovery conference.
- Make sure labels and hangtags are affixed to the goods or that they include information showing that the goods are actually sold, like a UPC code.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.