*Feb 14, 2020: Edit: Today the US PTO surprised everyone with a lovely Valentine. It revised the examination guide to note that applicants represented by counsel may provide an email address of their choice in the trademark owner email field. Though it may not be identical to the primary correspondence address, it can be an email address created for the purpose by the applicant or the applicant’s attorney. This is a bit of relief from the requirement as originally written. Happy Valentine’s Day!
Does the United States Patent and Trademark Office (the “PTO”) have the upcoming holiday confused with a different holiday? Or maybe the PTO, like some of my friends, celebrates Anti-Valentine’s Day? Otherwise, what could explain the timing on the implementation of these new rules, some of which seem like more of an April Fool’s Day joke or a Halloween trick than a Valentine’s Day treat? On February 15, 2020, the PTO’s new examination guide will go into effect in accordance with new rule changes. In this post, we highlight two of the changes described in the guide that may have more of an impact on brand owners, namely, those pertaining to new email address and specimen requirements.
In an era where state governments are enacting more and more legislation to protect individual privacy rights, the PTO has bucked the trend and decided to mandate disclosure of certain personal information to be made publicly available on the PTO website as a condition of filing a trademark application.
Beginning February 15, 2020, new trademark applications must include an email address for each applicant (in addition to the email address and contact information of the attorney) in order to receive a filing date.1 The applicants (as well as registrants and parties to proceedings) must maintain valid email addresses for correspondence. The PTO explains that this email address is required so that the PTO can contact applicants in the event attorney representation ends.
This requirement will apply to requests for extensions of protection filed under the Madrid Protocol only if they are not otherwise in condition for approval in the first action (and even then, such requirement will not be a condition of receiving a filing date for such applications).
The applicant email address cannot be an email address associated with outside counsel, an email address associated with a foreign law firm, an email address that is not monitored and where messages are automatically deleted, or an email address that the applicant does not have direct access to monitor.
Even if an attorney is representing herself or in house counsel is filing the application, the email address for the applicant must be different from the email address associated with the attorney of record.
This applicant email address will not be displayed in the TSDR pages associated with the trademark application, but will be viewable in the application or other electronic document filed with the PTO unless a petition requesting redaction of such email address is granted. The PTO indicates it will only grant such petitions in extraordinary circumstances.
Specimens submitted to prove use of the mark must show actual use of the mark in commerce. For trademarks, this means display of the mark on the goods, their packaging, or displays associated with such goods. Generally, this means that specimens in the form of labels should be shown affixed to the goods. The PTO will only accept a label alone (not affixed to the goods) if it is clear from the label itself that the mark is used in commerce (e,g., because the label includes other information that typically appears on labels for such goods).
Similarly, specimens for service marks must show a direct association between the mark and the services. If specimens are comprised of webpages, then applicants and registrants must show or provide the URL for the webpage as well as the access or print date. The URL and access/print date information may be provided on the specimen itself or in a later-filed verified response.
These specimen requirements apply to all specimens submitted on and after February 15, 2020, even if they pertain to applications filed or registrations that issued prior to February 15, 2020.
For some brand owners, it will not be difficult to comply with these new rules. The specimen requirements seem consistent with other recent efforts the PTO has made to preserve the integrity of the register and hopefully will have an overall salutary effect even if it requires some extra effort from all brand owners. For others, perhaps especially celebrities, those who eschew electronic correspondence, and/or those who have safety reasons to shield their personal contact information, the new applicant email address requirements will cause some unnecessary challenges.
1 There may be exceptions for nationals of countries that are party to the Trademark Law Treaty but not the Singapore Treaty on the Law of Trademarks.