Beginning on February 15, 2020, with very few exceptions, submissions before the US trademark office will be required to be filed digitally.

Also included in the rule changes and among the most significant change, Applicants and Registrants will now be required to list a working e-mail address together with a current domicile address on all submissions before the USPTO.

Lastly, and in line with increased audit procedures and scrutiny with respect to Chinese applicants, the USPTO has tightened its rules relating to acceptable specimens of use.

Applicant/Registrant E-Mail Address

Acceptable addresses:

  • an email address monitored by the owner that is created specifically for listing with the USPTO;
  • in-house counsel e-mail or e-mail of a client representative

Unacceptable addresses:

  • an email address of outside counsel;
  • an email address for counsel at a non-U.S. law firm;
  • an email address that automatically deletes email without allowing storage or review of the email

Our Recommendation:

We recommend clients with larger US trademark portfolios create e-mail address specifically for the purpose of complying with USPTO rules with the understanding that this e-mail address will likely be subject to significant spam e-mail solicitations relating to trademarks.

Please forward any e-mail correspondence received relating to your trademarks for our review.

The USPTO should not contact represented Applicants and Registrants directly.

Specimens of Use

Webpages submitted to show use of a mark will need to show the URL and date of printing/accessing the page.

Hangtags and other images of marks being used in commerce will now be reviewed with increased scrutiny

The complete guide can be accessed at the below link:

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.