Significant Updates to U.S. Trademark Practice
On February 7, 2020 the U.S. Patent and Trademark Office (“PTO”) released the “Mandatory Electronic Filing and Specimen Requirements” Examination Guide. These new guidelines will go into effect on February 15, 2020 and appear to be designed to reduce fraudulent filings at the PTO.
Most notably, the PTO will be requiring all trademark applicants, registrants, and parties to a proceeding at the Trademark Trial and Appeal Board (TTAB) to publicly disclose a valid email address for receipt of correspondence from the PTO. In addition, the PTO has developed stricter examination guidelines for specimens of use. We address these noteworthy rule changes below.
1. Email Address Requirement
The most significant and controversial change to the PTO rules is that, effective February 15, 2020, all trademark applicants, registrants, and parties to a proceeding at the TTAB must publicly disclose a valid email address separate and distinct from that of U.S. counsel.
Examples of acceptable email addresses for an applicant, registrant, or party include:
- A personal email address;
- An email address created for the purpose of communicating with the USPTO that is personally monitored by the trademark owner;
- In-house counsel’s email address for a corporation or legally created organization owner;
- A corporation or legally created organization owner’s email address, e.g., firstname.lastname@example.org or email@example.com, if it is personally monitored by the trademark owner (the email address does not have to be a corporate URL address).
Email addresses that cannot be used to directly contact the applicant, registrant, or party are unacceptable. Examples of unacceptable email addresses include:
- An email address of outside counsel;
- A foreign law firm’s email address;
- A designated email address where all messages sent are automatically deleted and are never stored or reviewed;
- An email address that applicant, registrant, or party does not have direct access to monitor.
While the email address of the applicant or registrant will not appear in the Trademark Status and Document Retrieval (TSDR) status tab, it will be viewable in the filed document in the TSDR document tab. Kindly note that the PTO will only grant a petition to redact the email address if (1) an extraordinary situation exists; (2) justice requires; and (3) no other party is injured. In our opinion, this change has the potential to greatly increase the number of potentially misleading offers and notices from private companies received by trademark applicants and registrants, a known problem already acknowledged by the PTO.
Accordingly, this new rule is highly controversial. Given the public nature of U.S. trademark filings, and the issue noted above, it is our strong recommendation, when possible, to use an email address that is created for the sole purpose of communication with the PTO (i.e. “firstname.lastname@example.org”).
2. Impact of Mandatory Email Address Requirement on Madrid Trademark Applications
The PTO will also apply the Email Address Requirement to Madrid applications designating the U.S. and post-registration maintenance documents for such applications.
An email address is not a filing-date requirement for a new Madrid application designating the U.S. If a Madrid application is otherwise in condition for publication, the Examining Attorney will not require the owner to provide an email address prior to publication. However, the PTO will require an email address for any subsequent submissions (i.e. response to office action; filing declaration of use).
3. Stricter Standards for Specimens of Use for Goods and Services
In an effort to reduce fraudulent filings at the PTO, stricter standards have been put in place for the examination of specimens of use for goods and services.
With respect to “goods”, the PTO is addressing the recent increase in fraudulent, “digitally altered” specimens.
Specimens for goods must show actual “use of the mark on the goods, on containers or packaging for the goods, on labels or tags affixed to the goods, or on displays associated with the goods.” For example, specimens for goods may include (1) a photograph or photocopy of actual goods bearing the mark, (2) an actual container, packaging, tag, or label for the goods bearing the mark, or (3) a point-of-sale display showing the mark directly associated with the goods.
On the other hand, the following are not acceptable specimens of use for goods: (1) an artist’s rendering; (2) a printer’s proof; (3) a computer illustration; or (4) a digital image, or a similar mockup of how the mark may be displayed.
In our experience, the best way to avoid a “digitally created or altered specimen” refusal is to submit a photograph of the goods bearing the mark, with something appearing in the background (i.e. a desk, papers, etc.).
Specimens for services must show “a direct association between the mark and the services” through use “in the sale of the services, including use in the performance or rendering of the services, or in the advertising of the services.”
Applicants and registrants regularly use website printouts as specimens of use for services. In an effort to reduce the fraudulent use of “transient” webpages created for the sole purpose of obtaining trademark protection, the PTO is now requiring the following to be provided to enable verification: (1) the URL for the web page of the specimen; and (2) the date the page was accessed or printed.
The URL and date can either be submitted (1) directly on the specimen webpage itself (header/footer), (2) within the TEAS form that submits the specimen; or (3) in a verified statement in a later-filed response.
Nath, Goldberg & Meyer is available to assist in protecting your valuable trademark rights. Please do not hesitate to contact us should you have any questions regarding the February 2020 “Mandatory Electronic Filing and Specimen Requirements” Examination Guide.
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