Late last week, the Trademark Office made waves when it published Examination Guide 1-20, which contains the latest update on the procedures for filing and examining trademark applications. The Guide focuses on the Trademark Office’s efforts to move away from paper to a fully electronic system and to prevent the filing of fraudulent specimens. Indeed, as of February 15, 2020, except for special circumstances, the Trademark Office will no longer accept paper submissions. All applications, responses to Office Actions, maintenance filings and the like must be submitted electronically through TEAS.
As part of the move to digital, the Guide also requires that applicants provide email addresses in order to receive an application filing date. Importantly, applicants must have direct access to any email addresses provided. This means that email addresses for outside counsel or, in the case of foreign applicants, for foreign counsel will not suffice. Companies may give addresses for their in-house counsel, although the address must be different from the address for the attorney of record, even if in-house counsel is the attorney of record. Email addresses will not be listed on the TSDR informational page, but they will be publicly accessible through the documents filed and maintained on TSDR.
The Trademark Office implemented this requirement as part of its move to digital, saying that it will use applicant email addresses to contact applicants if an attorney of record withdraws or the representation otherwise comes to an end. However, because email addresses will be publicly available, trademark lawyers and others have expressed concern that this will lead to an increase in the number of letters sent directly to brand owners by scammers. Already, there is a raft of organizations that mine the trademark database for addresses and send mass mailings to brand owners, using names that look like the United States Patent and Trademark Office (e.g., Patent and Trademark Organization) and seeking to defraud brand owners into paying fees for bogus monitoring services or registration renewals that are never filed. There is concern that publicly available email addresses will only make this easier for scammers.
Law360 reported this morning that, in response to the public reaction, the Trademark Office suggested that it may explore a means of redacting applicant email addresses from public databases, but there is no timeline for this. For now, the new rules will still go into effect next week. Brand owners should remain vigilant, read any and all correspondence that purports to be from the Trademark Office carefully, and remember that, if the correspondence comes directly from the Trademark Office, it will be from the “United States Patent and Trademark Office” in Alexandria, Virginia, and all emails will be from the domain “@uspto.gov.” If there is any doubt, brand owners should contact their attorneys, who can confirm that the correspondence is legitimate.
P.S. For those curious about the new specimen requirements, applicants submitting labels and hang tags must either show that those labels and hangtags are physically affixed to the goods, or that they otherwise have the kind of information typically contained on hang tags and labels (e.g., net weight, volume, UPC codes, list of contents or ingredients). Webpage specimens must include the URL and an access or print date.