The US Patent and Trademark Office (USPTO) confirmed that new rules relating to email addresses required for trademark applicants and registrants and new specimens requirements will go into effect this week. A new examination guide was issued regarding these changes (Examination Guide 1-20). Here is what trademark applicants and registrants should do to comply with these rules.

The USPTO has also recently made its post-registration audit pilot program permanent, which means that evidence of use submitted with post-registration filings will receive increased scrutiny and any registration is subject to a possible audit that could require evidence of all goods and services listed in a particular registration. Many are protesting the new rules and urging the USPTO to delay and/or revisit them, but as of right now, they are set to go into effect on February 15, 2020.

Separate Email Address Must Be Listed for Applicant/Registrant

Previously, law firms were allowed to list their email address as the only email address in a trademark application or other filing with the USPTO. The USPTO is now requiring that an email address be submitted for the trademark owner. This email address must be separate from outside counsel’s email address. The USPTO has noted that the following types of email addresses will be acceptable for trademark owners: (i) a personal email address of an individual applicant/registrant or an officer/employee of applicant/registrant; (ii) an email address created for the purpose of communicating with the USPTO that is monitored by the trademark owner (i.e. trademarks@companyname.com); (iii) in-house counsel’s email address; (iv) the email address of an officer or partner of the applicant/registrant corporation or partnership; (v) the email address of a parent company officer or a holding company officer if the parent company or holding company is a related company to the applicant; or (vi) an entity’s email address (i.e. info@companyname.com) if it is monitored by the trademark owner.

The email address of the trademark owner will not be viewable on the USPTO website in TESS and TSDR, but it will be viewable in the application itself, which is public record and can be accessed by any individual in the TSDR Documents tab. Further, the USPTO will not allow for redaction of the email address unless there are extraordinary circumstances.

Therefore, trademark applicants and registrants should consider creating a new email address to use for these purposes (e.g., trademarks@companyname.com or info@companyname.com). Because the email address will be publicly available, a good deal of spam email is expected so it would be best not to use a personal email address or one that is receiving important email on a regular basis as the volume of email that may result from this change could be significant. In any event, as all messages coming into the proposed new email address will be related to the company’s trademark filings at the USPTO, they should be reviewed by trademark counsel before any response, so the authenticity of the messages can be verified.

Specimens of Use for Goods and Services

In an effort to combat fraud, the USPTO is becoming stricter with respect to the types of specimens of use that will be accepted. Digital images of goods will generally no longer be accepted. This includes any artist’s renderings, computer illustrations, or printer’s proofs. Moreover, if a label or tag is submitted, it should be shown attached to the goods themselves or the packaging for the goods. Moving forward, the specimens most likely to be accepted will be: (i) a photograph of the goods or the packaging for the goods bearing the mark, or (ii) a screenshot of a webpage showing the mark, a picture, or text description of the goods and sufficient ordering information (i.e., an “add to cart” button, etc.). Any website screenshot will have to include the URL and access/print date of the screenshot.

In addition, in an effort to clear marks not in use from the register, the USPTO has been conducting a post-registration audit pilot program that has now been made permanent. The USPTO is conducting random audits of registrations. If the registration is selected for audit, the USPTO will require additional proof of use for two goods/services in each class (other than the goods/services for which use has already been shown in the Declaration of Use). For example, if the registration includes “shirts; hats; pants; skirts; shoes” and the specimen submitted in the Declaration of Use shows use of the mark in connection with only shirts, the audit would ask for proof of use of the mark for two additional items (i.e., “hats; pants” or “skirts; shoes”).

If proof of use cannot be submitted, those goods/services will need to be deleted from the registration. If any goods/services are deleted in response to a post registration audit, proof of use for all remaining goods/services will be required.

Therefore, while only one specimen per class is required for declarations of use and renewal filings in the United States, trademark registrants should ensure that that all goods/services being kept in the registration are currently being provided under the mark and that they have an example of use available for each of the goods/services in case the registration is audited and additional proof of use needs to be submitted. If the trademark is not in use for specific goods/services, or a good specimen is not available, the registrant should consider deleting those goods in the declaration to avoid potential issues related to an audit.