UPDATE: USPTO revises controversial new email requirement


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Last week we communicated here that the United States Patent and Trademark Office (USPTO) issued a new examination guide that was due to be effective as of 15 February 2020.

USPTO faced criticism that its new rules would put users at risk, especially around privacy and a potential rise in scams targeting unsuspecting trade mark applicants.

After receiving backlash from users and input from US trade mark practitioners, the USPTO has revised portions of the most recent guide, just before the mandatory electronic filing requirements went live over the weekend.

Below is a summary of the main changes since the last update we provided you:

1. Applicants are not required to provide an email address for USPTO records. 

The USPTO have changed this requirement, taking note of the widespread concern about increased unsolicited and fraudulent third party trade mark-related communications.

When filing on behalf of our clients (applicants) and providing details to USPTO, we can now use:

  • an email address of the trade mark owner/applicant;
  • our US associate’s (representative’s)  email address; or
  • an MBIP email address.

2. If the applicant’s residential address is different than their mailing address, then the residential address needs to be provided to the USPTO (it will be masked from the public records). In most cases, P.O. boxes and “care of” addresses will not be accepted.

We will keep you updated if there are any further changes. As always, please contact our Trade Marks team Kellie Jukkola or Geraldine Rimmer if you have any questions.