Trademark Filings Need Publicly Viewable Email Addresses

February 13, 2020Alerts

[UPDATE: The Guidance document discussed in this alert was revised just prior to its effective date. Please also see our more recent alert – USPTO Revises Email Rule for Trademark Filings.]


As of February 15, 2020, trademark applications and registrations must include an email address for the trademark owner that is publicly available and viewable in documents filed electronically through TEAS, the Trademark Electronic Application System.

The USPTO outlined the new rules in Examination Guide 1-20.

The Guide mandates electronic filings for trademark applications and registrations and requires that all submissions – applications, responses to office actions and maintenance filings – include, in addition to the attorney’s email address, an email address for each applicant or registrant. The Guide provides that any email that can be used to directly contact the applicant or registrant and that is accessible and regularly monitored by the applicant or registrant is acceptable.

Examples of acceptable email addresses include:

Prohibited for use as the applicant’s email address are: email addresses of outside counsel, a foreign firm’s email address or an email address to which all messages sent are automatically deleted, not stored or not retrieved (i.e., a “black hole email address”).

For applications filed under Section 66(a) (which are transmitted to the USPTO by the International Bureau and do not include an email address for receiving USPTO correspondence), the requirement to provide and maintain a valid email address applies to any subsequent submissions after filing, including responses to office actions and maintenance filings. It also applies to filings before the Trademark Trial and Appeal Board (TTAB). 

The purpose of this requirement is to insure that the USPTO has an electronic means of contacting an applicant or registrant when the attorney of record is suspended or excluded from practice and when the representation ends. The USPTO will communicate with the trademark owner after the attorney’s representation ceases. The USPTO will continue to include the attorney email for courtesy reminders until a change of correspondence or revocation and new power of attorney is submitted.

Comments

The provision that raises serious concerns is the requirement in Examination Guide 1-20 that the email address of the trademark owner will be publicly available and viewable in the documents tab of the Trademark Status and Document Retrieval database (TSDR) of the USPTO. This provision is likely to result in a deluge of unwanted solicitations from unscrupulous actors who mine the records of the USPTO for addresses to direct unwanted solicitations using misleading names such as “Patent and Trademark Organization."

These communications are designed to resemble government correspondence and typically demand payment for a service which is not needed. Based on these concerns, which have been expressed in correspondence with the Commissioner of Trademarks, the USPTO is now working to “mask” or hide the email addresses of trademark owners. However, the details of any remedial action that may be taken have not been announced.

It should also be noted that providing an incorrect, invalid or “phony” email address for the trademark owner – resulting in failure of the email transmission – may result in an application becoming abandoned or a registration being cancelled. However, this should occur only in cases where the representation by the attorney of record has ceased because, as explained above, the USPTO will continue to correspond with the attorney of record until the representation ceases.

If you have any questions about these new requirements, please contact your Fox Rothschild trademark attorney.