New USPTO guide requires email address for trade mark applicants

US flag background with TRADE MARK UPDATE text

The United States Patent and Trademark Office (USPTO) issued new Rules and Regulations which will take effect on 15 February 2020.

The new guide, entitled ‘Mandatory Electronic Filing and Specimen Requirements’, has a number of changes including new exceptions for filing paper submissions, and confirmation of the requirements for filing specimens of use. Readers might recall that last year the USPTO implemented several new rules requiring all applicants not domiciled in the United States to engage US licensed attorneys to file and prosecute trade mark applications, in an effort to combat fraudulent filings and clean up the register. 

Email address to be submitted by all registrants and applicants

The USPTO will require all applicants and registrants to (1) provide a valid email address for correspondence and (2) to keep that email address current.

The new guide states that new applications “must include an email address for each applicant” even if there is an appointed attorney. Failure to provide an email address when filing a new application or prosecuting an existing application may prevent necessary documents from being filed, which may result in an application being abandoned.

The new requirements are causing some concerns with respect to applicants and privacy, especially in light of new data protection and privacy laws in California (CCPA) and the European Union (GDPR). The supplied email address, which has to be monitored by the trade mark applicant, will be posted in the USPTO’s online public repository of documents filed in trade mark applications.

Privacy is not the only issue causing concern; we believe we may see a significant increase in scamming activity. We remind trade mark owners to please be aware of suspicious or unsolicited invoices and to contact your attorney for confirmation before attending to payment.

If you have any questions about the US trade mark registration process or you are interested in seeking US trade mark protection, please contact Kellie or Geraldine and we would be pleased to assist.