On February 7, 2020, the USPTO announced its publication of a new Examination Guide explaining the requirements of mandatory electronic filing and clarifying the specimen requirements that are impacted by the new rules. USPTO Examination Guide 1-20, “Mandatory Electronic Filing and Specimen Requirements,” Feb. 2020 (the “Guide”).
Shortly after releasing this Guide, the Trademark Public Advisory Committee held its quarterly public meeting. (See also the slides presented during the meeting – particularly beginning at Slide 19.) One of the topics for discussion was the impact of the Mandatory Electronic Filing Rule and its looming effective date of February 15, 2020. (See USPTO, “Changes to the Trademark Rules of Practice to Mandate Electronic Filing,” 84 Fed. Reg. 69330-69331 (Dec. 18, 2019)).
Applicant/Owner Email Address
This guide makes a number of significant changes to the way U.S. trademark lawyers typically practice. In particular, in order to obtain a filing date for a new application, all applications must now include an individual email address for each applicant, which cannot be:
- Outside counsel’s email address;
- A foreign law firm’s email address;
- An email address that is never monitored (a “black hole email address”); or
- An email address to which the applicant, registrant or party does not have access.
Guide at 6. The Guide also provides some specific examples of types of email addresses that would be acceptable, including an email address for the owner specifically to receive communications from the USPTO, provided that this email address is both accessible by the owner and routinely monitored. Id.
Owner Email Address Required to Complete Electronic Forms
Similarly, if a trademark owner needs to submit a post-registration filing, such owner must disclose an individual email address or the filing cannot be completed using the USPTO’s forms. Id. The USPTO confirmed in its response to public comments during the TPAC meeting that even though an individual owner’s email address is required in order to complete any filing after the February 15, 2020 implementation date, the USPTO will continue to only correspond with the attorney of record, if an applicant, registrant or party is represented by counsel. See also Guide at 7. At least, until the registration issues – at which point it will only correspond with the registrant unless a new power of attorney is filed for post-registration matters. (More on this point, below.)
Owner Email Address Will Be Available to the Public, But Not on TSDR Status Page
The Guide explains that while the trademark owner’s email address will not be shown in the TSDR status page, it will continue to be available to any member of the public who views the individual documents filed in connection with a particular mark. Id. at (In other words, if the owner’s email address is submitted in connection with filing a Statement of Use, such email address would not be viewable on the overall status page available at TSDR for that application, but any member of the public can find it by opening the actual Statement of Use, as filed.) Id.
Petitioning to Redact Owner Email Address – Extraordinary Situations
Trademark owners, or their attorneys, can petition to have this email address redacted from documents available in TSDR by filing a petition “in an extraordinary situation.” Id. (citing Trademark Manual of Examining Procedure (TMEP) § 1708). When asked during the TPAC meeting what would constitute an “extraordinary situation,” Acting Commissioner Meryl Hershkowitz responded that she did not have a precise answer, because this process was new, but imagined it might include an instance where an individual applicant did not want her email address available to the public because she wanted to avoid contact from someone who was harassing her.
USPTO To Only Contact Correspondent of Record – Until Registration Issues
Finally, both the Guide and comments made during the TPAC meeting also make it clear that the USPTO plans to contact only the trademark owner about matters relating to their files once registration has issued. Id. at 7 (providing that USPTO will contact trademark owner directly when it files a revocation of a prior power of attorney, the designated attorney is suspended or excluded from practice in trademark matters before the USPTO, or “recognition as the designated representative ends pursuant to Rule 2.17(g).”). Id. Rule § 2.17(g) provides that recognition of representation of an applicant by an attorney ends automatically “when the mark registers, when ownership changes, or when the application is abandoned.” 37 C.F.R. § 2.17(g) (available electronically by browsing under Title 37 at https://www.ecfr.gov/).
Similarly, Chief Judge Rogers confirmed in his remarks during the TPAC meeting today that the USPTO will only communicate with trademark owners (and not their attorneys) regarding cancellation petitions filed against their registrations – unless a post-registration power of attorney has been filed. See also Guide at 7 (“Except during the prosecution of a cancellation petition, the USPTO will not correspond directly with a represented party . . . .”) (emphasis added). As a result, it would not be shocking to see attorneys routinely provide their clients with new post-registration powers of attorney for execution, to allow the attorney to continue to receive communications from the Office in connection with completed matters. After all, if a company hires an attorney to handle its trademark portfolio, why would it want to suddenly deal with direct communications from the Office regarding the administrative details required to maintain that portfolio? (I.e., isn’t that what the company hired the attorney for?)
Potential Risks to Making Owner Email Addresses Publicly Accessible
In addition to the privacy/security risks to individual trademark owners resulting from publishing individual owner email addresses on a publicly accessible database (such as the harassment concern raised above), this accessibility also raises the concern that bad actors will have yet another way of impersonating the USPTO and transmitting fraudulent “invoices” to unsuspecting trademark owners, attempting to extort exhorbitant fees seemingly to “maintain” a registration. These invoices routinely bear the wrong mailing address for the USPTO and the wrong applicable deadlines for maintenance obligations. However, depending on which company employee(s) are charged with monitoring this email box, it is not unforseeable that such employee could simply forward that invoice to the accounting department for payment.
In July 2017, the USPTO held a lengthy public roundtable discussion attempting to educate the public about avoiding being duped by these nefarious solicitations. Webinar, “Fraudulent and Misleading Solicitations to Trademark Owners” (July 26, 2017) (video of presentation is still available); see also prior post “Don’t Assume Post-Registration Invoices for Trademark Fees are Legitimate,” Privacy and IP Law Blog (July 27, 2017). During the TPAC meeting today, the USPTO confirmed that it continues to work with the Department of Justice to prosecute these bad actors.
However, notwithstanding such education and enforcement programs, it goes without saying that even the most sophisticated client – upon receiving what appears to be a valid invoice relating to registered trademarks – could be duped into assuming this were a legitimate communication and acting on it as a matter of routine. Providing a direct email address of the trademark owner to the public just increases the risk that the invoice would be received and processed before the trademark attorneys (whether in house or outside counsel) are ever advised.
The Guide also provides some additional clarification about what kinds of specimens will be accepted once the mandatory electronic filing system goes into effect on February 15, 2020. To some degree, the Guide simply sets forth the revisions made to Rule 2.56 (37 C.F.R. § 2.56) as described in more detail on July 31, 2019. See USPTO, “Changes to Trademark Rules of Practice to Mandate Electronic Filing,” 84 Fed. Reg. 37081-37099 at 37090 (July 31, 2019). However, it also provides some important clarifications that are important to keep in mind while preparing to submit specimens online:
- Labels and tags supporting an application for registration of a mark used on specific goods must not only show the applicable mark as affixed to the goods but also must show “informational matter that typically appears on a label in use in commerce for those types of goods such as net weight, volume, UPC bar codes, lists of contents or ingredients or other information that is not part of the mark but provides information about the goods.” Guide at 9, 10; see also Slides from USPTO Webinar (Dec. 10, 2019) at 56-60.
- Any website specimen submitted must include print date and URL where the website appeared. Guide at 9, 10; see also Slides (Dec. 10, 2019) at 65-66.
- In addition to printer’s proofs being rejected, digital images that show “an artist’s rendering, . . . a computer illustration, . . . or similar mock up of how the mark may be displayed” are similarly unacceptable. In essence, these are merely “depictions” of the mark and fail to show actual use in commerce. Guide at 10.
Additional Resources Regarding Specimens:
- Overcoming Ornamental Refusals
- Specimen Refusals and How to Overcome Them
- Webinar on Mandatory Electronic Filing, including Specimen Rule updates (Dec. 10, 2019) (beginning at page 55 of the slide deck).
- Examination Guide 1-20 – “Mandatory Electronic Filing and Specimen Requirements” (Feb. 2020).
Examination Guide 3-19 – “Examination of Specimens for Use in Commerce: Digitally Created or Altered and Mockup Specimens” (July 2019).
Prior Privacy and IP Law Blog Posts:
- “Common Questions: How to Establish US Trademark Rights” (May 15, 2018).
- “Common Questions: How to Prove Use in Commerce (Specimens)” (May 29, 2018).