On February 7, 2020, and effective February 15, 2020, the USPTO issued a new examination guideline titled, Mandatory Electronic Filing and Specimen Requirements (Guide 1-20) that requires applicants and registrants to file all trademark submissions electronically through the Trademark Electronic Application System (TEAS) and to provide an email address for receiving USPTO correspondence, with limited exceptions.
Of particular interest, to receive a filing date after February 15, 2020, all new applications must include an email address for each applicant, even if represented by an attorney. In addition, all applicants, registrants, and parties to a proceeding must maintain a valid email address for correspondence.
Even if there is an appointed attorney, a separate email address for the applicant, registrant, or party is required under 37 C.F.R. Section 2.32(a)(2) so the USPTO can contact them if representation ends. While the email address will not appear in the Trademark Status and Document Retrieval (TSDR) status tab, it will be viewable in the document filed with the USPTO and thus a potential target for future SPAM communications.
Based upon this important policy change, we recommend that our clients create a new general email alias specifically for PTO communications going forward (i.e., “trademarks@[company URL].com) and assign internal responsibility for at least weekly, if not daily, review of its contents (or otherwise forward the email alias to the responsible point of contact for trademark matters). This approach will avoid the possibility of third party misuse of personal email addresses and ensure continuity in the event of personnel changes.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
