USPTO Delays Effective Date for Mandatory eFiling of All Trademark Filings

Today the US Patent and Trademark Office (USPTO) announced that it was delaying the effective date of the new rule requiring the electronic filing of all trademark documents and the provision of accurate email addresses for purposes of correspondence with the USPTO relating to all applications and registrations. The new effective date will be December 21, 2019.

The USPTO explained that the delay was intended to provide the USPTO with more time to prepare internally for implementation and to allow the public more time to “fully comprehend the nature of, and prepare to comply with, the new requirements before they are effective.” Supplementary Information, Sept. 24, 2019.

For more information about the requirements of the Rule, please note the following:

USPTO Expands Random Audit Program

On July 29, 2019, the USPTO hosted a panel discussion outlining the details of its newly-expanded random audit program, as part of its ongoing efforts to declutter the U.S. federal trademark Register.

Originally launched as a pilot program in 2012, the Random Audit Program was made permanent in November 2017, requiring additional proof of use for goods and services covered by over 4,600 registrations. The USPTO has now announced that it plans to expand the program to audit approximately 5,000 registrations each year and has reemphasized that the U.S. trademark registration system protects only those trademarks and service marks actually in use in U.S. commerce – and can not be used as a reservation of rights system.

What Kinds of Registrations are Subject to Audit? Continue reading

USPTO Published Final Rule Mandating Complete Trademark Electronic Filing

Today the USPTO published the long-awaited final rule mandating “complete end-to-end” electronic filing in all trademark matters. “Changes to the Trademark Rules of Practice to Mandate Electronic Filing,” 84 Fed. Reg. 37081 (July 31, 2019); additional details can be found on the Federal Register’s summary page. The rule becomes effective on October 5, 2019.

Continue reading

Why Trademark Filers Should Keep Their Correspondence Addresses Updated

The USPTO recently issued updated guidance to trademark filers about letters of protest and requesting duplicate certificates of registration, and slipped in a revision relating to how rights holders will be notified of communications from the USPTO. See Examination Guide 3-18 (Sept. 18, 2018). This guidance has now been codified in the updated Trademark Manual of Examining Procedure (“TMEP”), released October 31, 2018.

All trademark applicants are required to designate a contact person, authorized to receive correspondence from the USPTO on the applicant’s behalf.  Under the new rules, this Correspondent must also designate an email address to be used for official correspondence with the USPTO.

Prior to the release of this Examination Guide, however, if notices the USPTO sent to the email address of record for the Correspondent on the file were returned as “undeliverable”, the USPTO would send a paper copy of that message to the Correspondent’s physical mailing address, and thereby attempt to deliver the message through alternate means:

“If outgoing e-mail to a primary e-mail correspondence address of record is returned as undeliverable, the USPTO will send a paper copy to the correspondence address of record.  See TMEP §§ 304–304.09 regarding e-mail communications.” TMEP § 403 (Oct. 2017).

On May 30, 2018, the USPTO issued a Notice of Proposed Rulemaking, outlining new requirements for trademark filers to make all submissions to the Office electronically, except in certain, very narrowly defined, circumstances. Amid the straightforward requirements, there was also a single sentence on the top of page four of the notice, that confirmed that paper copies will no longer be mailed to filers after an email directed to the Correspondent of record is returned to the Office as undeliverable.  See Changes to the Trademark Rules of Practice to Mandate Electronic Filing (“Trademark Rules”), published at 83 Fed. Reg. 24701 (PTO-T-2017-0004, May 30, 2018).

During the public comment period, the ABA-IPL Section submitted comments to the proposed Trademark Rules which explained the concern:

“The Section would be concerned if the USPTO does ‘not attempt to contact the correspondent by other means’ when an email transmission fails. Email addresses frequently change as companies adopt new domain names and as staff turns over. Further, technical issues due to hardware malfunction, software bugs, or malicious cyber-attacks increase the chances for electronic communication to be disrupted. Therefore, the Section strongly encourages the USPTO to continue its practice of attempting to contact the correspondent by other means if the address of record is undeliverable, including physical correspondence by mail. TMEP §§ 403, 717.01 (Oct. 2017).”

ABA-IPL Section Letter to Hon. Mary Boney Denison at 3 (Aug. 20, 2018).

The September 18, 2018 Guidance from the USPTO (as now embodied in TMEP) confirmed that the USPTO will no longer send out paper copies of correspondence to applicants or registrants by regular mail if delivery to the email address of record (for the Correspondent) fails. See Updated Version of TMEP §§ 403, 717 (Oct. 31, 2018) (compare with the prior versions – §§ 403, 717 (Oct. 2017)). Instead, the USPTO rests the obligation on the trademark filers to keep their contact information updated.

As a result, trademark filers should be diligent in keeping their correspondent’s address updated and frequently check TSDR for any necessary updates that need to be made to their records so that no reminder emails – or other emails requiring a response – are missed.

USPTO’s Recently Announced Pilot Program on Fraudulent Specimens

This is Part III in a series on establishing use in commerce in the US for federal trademark purposes. Part I was “Common Questions: How to Establish US Trademark Rights.”  Part II was “Common Questions: How to Prove Use in Commerce (Specimens)“. This Part III will discuss a recently announced pilot program of the USPTO to minimize the submission of fraudulent trademark specimens in support of applications for registration.

On March 6, 2018, the USPTO announced that it was launching a pilot program to uncover fraudulent specimens filed in support of use-based applications. The USPTO described these specimens as “digitally altered” or manipulated. For instance, the USPTO recently refused registration to the following use-based applications for which the specimens were held to be fake: Continue reading