On February 14, 2020, the United States Patent and Trademark Office issued Revised Examination Guide 1-20, which addressed new mandatory electronic filing and specimen requirements and became effective on February 15, 2020. The new requirements require that all formal correspondence pertaining to a trademark application or registration be filed electronically and that all new applications filed on or after February 15, 2020 include an email address for each applicant.

Background on the Examination Guide

The new rules were first published in the Federal Register on July 31, 2019 at 84 Fed. Reg. 37081, although the effective date of the rules was delayed until February 15, 2020 due to feedback from external stakeholders. The USPTO then published Examination Guide 1-20 on February 7, 2020 to clarify the new rules and re-issued a revision on February 14, 2020.

New Mandatory Requirements for Trademark-Related Filings

One important note for trademark applicants and practitioners is that all formal correspondence on or after February 15, 2020 regarding a trademark application or registration must be filed electronically through the Trademark Electronic Application System (TEAS). There are, however, certain exceptions for the acceptance of paper submissions.

Another important note for trademark applicants is that new applications filed on or after February 15, 2020 must include an email address for each applicant in addition to the email address of the applicant’s attorney. The email address for each applicant cannot be identical to the attorney’s email address, even if the attorney is in-house counsel or representing themselves. The USPTO thus encourages the use of a unique email address that is only for correspondence with the USPTO, and this email address can be created by the trademark applicant or its attorney.

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