As of February 15, 2020, the United States Patent and Trademark Office (USPTO) has heightened the requirements for filing trademark applications.
First, all trademark applications must now be filed electronically. Most practitioners were already doing this, but some individuals were not. It is now a requirement for all applications.
Each trademark application must now also include an email address for each applicant, even if represented by an attorney. This is email address may be:
- a personal email address (if the Applicant is an individual)
- in-house counsel’s email address or a corporate email address (such as email@example.com or firstname.lastname@example.org)
- an officer’s personal email (if the Applicant is a corporation)
- a partner’s personal email (if the Applicant is a partnership)
- an officer’s individual email address (if the Applicant is a holding company)
An email address must be provided for each applicant in order to receive a filing date. This is to ensure the USPTO has some way of communicating with the Applicant should they not be represented by an attorney at any point. Therefore, the email address must be monitored by someone, so it cannot be a “black hole email address.” It must also be kept current and updated.
If the Applicant is represented by an attorney, USPTO correspondence will still go to the attorney of record. Currently, the USPTO has stated that the Applicant’s email address will not be listed in the Trademark Status and Document Retrieval (TSDR) status tab, but it will be viewable on documents filed with the USPTO. There has already been an outcry from the trademark community over data privacy concerns of making such email addresses publicly accessible, which the USPTO seems to be considering. For now, however, they may only be redacted in extraordinary situations following a successful petition to the USPTO.
The new guidelines also provide stricter requirements for trademark specimens. Currently:
- For goods – the specimen must show use of the mark on the goods, on containers or packaging for the goods, on a label or tag actually attached to the goods (unless the goods are not amenable to the mark being attached to it, such as for industrial products), or on displays directly associated with the goods. These can be photos of (1) the actual goods bearing the mark, (2) an actual container, packaging, tag, or label of the goods, and (3) a point of sale display showing the mark directly associated with the goods.
- For services – the specimens must show a direct association between the mark and the services through use in the sale of the services, including use in the performance or rendering of the services, or in the advertising of the services.
- For webpage specimens – the specimen must show or provide the URL, as well as the access or print date to enable verification.
What are not acceptable specimens are artist’s renderings, mock-ups, printer’s proofs, computer illustrations or digital images as these do not show actual use of the mark in commerce.
This post was written by Jessica Hauth Mozingo