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.

Amendments to Acceptable Specimens

As promised during recent presentations by the USPTO, this Final Rule also includes revisions to the specimen requirements. 84 Fed. Reg. at 37084 (regarding specimen requirements); with respect to the presentations suggesting that this revision would be included, see TPAC Meeting Slides (July 26, 2019) (archived video recording not yet available); USPTO Seminar on What Happens if my Trademark Registration Gets Audited? (July 29, 2019) (archived video recording not yet available).

In particular, the Final Rule amends 37 C.F.R. § 2.56 to require that any web site evidence in support of a claim of use in U.S. commerce must show the URL (i.e., uniform resource locator, or the web site address) and the date on which the page was accessed or printed. 84 Fed. Reg. at 37084. The Final Rule also clarifies that any evidence of use in commerce must show “use of the mark placed on the goods, on containers or packaging for the goods, or on labels or tags affixed to the goods.” Id. During the July 29 Seminar on Random Audits, USPTO staff made it clear that the goods must be visible in connection with the mark. Thus, where one previously may have submitted a specimen showing the mark used on shipping containers, now, that specimen must show the container open, with a view of the goods bearing the mark visible inside the container.

Other Changes to Trademark Filings

Among other changes noted in this Final Rule:

• The TEAS RF (Reduced Fee) application form will become the default form to be completed with a new application, and will be renamed “TEAS Standard.” Id.  at 37083.
• A new regulation has been created – at 37 C.F.R. § 2.147 – which explains the process for requesting acceptance of paper submissions. Id.  The USPTO explained the limited circumstances in which paper submissions would be accepted:
  • Applicants who are from countries that are signatories to the Trademark Law Trade and not the Singapore Treaty on the Law of Trademarks may still submit their filings on paper.  Id. at 37084. This section lists the countries whose nationals will qualify for this exception.
  • Specimens for non-traditional trademarks such as scent or flavor. Id.
  • Filers can also submit Petitions to the Director seeking permission to file on paper, but only in three cases:
    • If TEAS is unavailable on the date of a deadline, although proof will be required. If a user receives an error message, the USPTO expects that the user will try again before resorting to the petition process. Id. at
      • This will not apply if the outage is due to regularly scheduled maintenance at the USPTO – such scheduled outages will be published on the USPTO Systems Status and Availability Page on the USPTO’s Website.
    • If a previously-filed but timely paper submission cannot be resubmitted electronically within the operative deadline. Id.
    • Certain case-by-case situations that qualify as “extraordinary situations”. Id.
  • Postal-System Outages or Interruptions – which will also be noted on the System Status Page – and certain non-statutory deadlines will be waived. Id. at 37085.
    • NOTE: The USPTO does not have the authority to waive statutory deadlines – if you are approaching a statutory deadline and cannot access the TEAS system, consider one of the paper filing alternatives so that you do not miss your deadline. Id. at 37086 (very last sentence on the page).
  • Applications and Post-Registration documents filed before the Effective Date of this Rule. Id. These applications will continue to follow the prior rules until the application registers, or is abandoned and cannot be revived.
• If email transmissions by the USPTO to the Correspondent of record were to fail, such as if an incorrect email address was provided, the recipient’s mailbox is full or the recipient’s provider has a service outage, the USPTO will not attempt to reach the Correspondent by other means – instead, it is the Applicant’s or Registrant’s responsibility to monitor the TSDR status of each application for any potential updates. Id. at 37083
  • One commenter to the Proposed Rule objected to this requirement, suggesting that the USPTO continue its practice of sending such correspondence by regular mail in the event of email transmission failure.  Id. at 37088.
  • The USPTO responded that such a practice would be administratively burdensome to the USPTO and would be counterproductive to the goal of providing end-to-end electronic processing. The USPTO also noted that under 37 CFR § 2.18(c), Applicants and Registrants were required to maintain current and accurate correspondence email addresses and to monitor the status of their filings through TSDR. Id. at 37088-37089.
• In contrast to what was initially proposed, in this Final Rule, the USPTO revised 37 C.F.R. § 2.22(a)(3) to limit the names and citizenship of general partners of U.S.-based partnerships, and require instead the names and citizenship of “active members” of U.S.-based joint ventures. Id. at 37084.
• If an applicant or registrant communicates by email with the USPTO, the USPTO will presume that the originating email address is authorized and the USPTO will send all future correspondence to that email address.  Id. at 37085.
• Applicants’ and Registrants’ email addresses must be provided to the USPTO, even if they are represented by counsel. This allows the USPTO to continue to correspond with the owner of the application/registration if the legal representation ceases, such as if the counsel of record were to be suspended or excluded from practice before the USPTO. However, all owner email addresses are currently masked from public view – so that providing the direct email address of the Applicant or Registrant should not expose them to any additional fraudulent solicitations or scam communications. Id. at 37087-37088.

A few additional observations noted in the USPTO’s Responses to Comments Received on the Proposed Rule:

• Fax submissions will no longer be accepted as a backup if the TEAS system is not working. Id. at 37086.
• Applications submitted on a scanned PDF form are essentially the same as paper submissions and would require the same manual processing that paper submissions would, and thus would be counterproductive. Paper forms scanned to PDF format therefore will not be accepted. Id. at 37087.

A full copy of the affected regulations – as amended – is included at the end of the Final Rule.