USPTO Revises Email Rule For Trademark Filings

Fox Rothschild LLP

Fox Rothschild LLP

Just one day before new trademark filing rules were set to take effect, the U.S. Patent and Trademark Office (USPTO) issued a revised a guidance document on Feb. 14, 2020 in response to growing concerns about potential misuse of trademark owners' email addresses.

In an announcement, USPTO said it is "continuing to explore additional improvements, including potentially masking email addresses."

Despite the last-minute changes, the effective date of Feb. 15 was unchanged in the Examination Guide 1-20 (Revised).

The issue that was specifically addressed in the revised Guide concerns the requirement that 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.

As initially drafted, neither the email address of the U.S. counsel of record nor a foreign firm’s email address could be used as the trademark owner’s email address in an application or maintenance filing; only the trademark owner’s own email address could be used. Thus the trademark owner’s email address would become publicly viewable subjecting trademark owners to unwanted solicitations.

The revised Guide now permits the use of the outside counsel’s email address and that of foreign counsel. However, the revised Guide provides that email address of the trademark owner “cannot be identical to the listed primary correspondence email address of their attorney.” The revised Guide further states that the trademark owner’s email address may be created by the trademark owners or their attorney and that the trademark owner no longer needs to regularly monitor the email address provided.

These revisions appear to raise additional questions that will need to be clarified. We will be monitoring the USPTO's actions closely for any additional modifications of the rules.

[View source.]

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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