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30 March 2020
Effective 15 February 2020, the US Patent and Trademark Office (USPTO) enacted a series of rule changes that will have a significant impact on trademark filers.(1)
The widest-scale change is the requirement for electronic filing of all submissions to the USPTO. However, additional application and specimen requirements are likely to have a greater effect on applicants, as compared with prior practice.
First and foremost, in order to receive a filing date (ie, meet the minimum filing requirement), new applications filed on or after 15 February 2020 must include an email address for each applicant. This rule applies even when the applicant is represented by an attorney. Registrants and parties to an inter partes proceeding before the Trademark Trial and Appeal Board (TTAB) must also maintain a valid email address.
The email address must be one that is actually monitored by the owner. Examples include:
The email address may not be the address of outside counsel, a foreign law firm, a 'black hole email address' where messages are automatically deleted or an email address that the owner or party does not have direct access to for monitoring. (Note: the email address will be public.)
Second, the USPTO is tightening its specimen requirements and giving examiners more leeway to issue inquiries in order to clarify whether a specimen is actually in use in commerce:
Finally, from 15 February 2020, with very limited exceptions, all submissions to the USPTO must be filed electronically. This rule change follows similar rules regarding TTAB filings, as well as the USPTO's practice of disincentivising paper filings with increased fees.
While the transition to electronic filing is in line with standard practice for most applicants, the requirement for an applicant email is a fundamental change that alters the minimum filing requirements. Foreign applicants and their attorneys seeking to file priority applications in the United States should keep this requirement in mind when meeting priority filing deadlines.
Further, for applicants that rely on unaffixed labels and tags to show use, these methods should be updated with photos of the labels on actual goods.
For further information on this topic please contact Rebecca Liebowitz, Andrew D Price or Catherine S Mitros at Venable LLP by telephone (+1 410 244 7400) or email (email@example.com, firstname.lastname@example.org or email@example.com). The Venable LLP website can be accessed at www.venable.com.
(1) On the eve of the day that the new rule was to take effect, the USPTO changed the new rule requiring a non-lawyer email address for all applicants and has confirmed that they will allow a law firm email address as long as it is different from the correspondence address.
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