February 26, 2020
Letter from America
Letter from America

This article clarifies and comments on the recent changes introduced by the United States Patent and Trademark Office (USPTO).

E-mail address of applicant required


Of concern is that from 15 February 2020, all US filings and submissions, including renewals, require an email address of the applicant/owner. This is in addition to the local attorney’s email address. It appears an e-mail address of a local or foreign trade mark attorney as a proxy cannot be used even if they have been granted Power of Attorney for trade mark matters. Early indications are that it must be an email address directly linked to the applicant – otherwise in our view it defeats its fraud prevention purpose - so that the USPTO can communicate directly with the applicant by email.


Small businesses and individuals, in particular, do not always have an e-mail that could be said to directly link to them (e.g. a Gmail account) so we wait to see how the USPTO reacts to such e-mail address. We anticipate if the applicant has a web presence then the USPTO will expect an e-mail address from this web domain.


“Be vigilant with any correspondence directly received, certainly do not pay anything and forward on to your usual advisor”


While it will be possible to create an email address specifically to comply with this requirement, for example, uspto@abc.com or trademarks@abc.com (as an alternative to using an individual’s email address like joe.bloggs@abc.com), this still means applicants including those who are professionally represented will receive direct communications from the USPTO. Such communications are full of legalese. Be vigilant if you receive one and do not panic and forward on to your usual advisor.


The new rules are designed to combat fraud but conversely will probably have the opposite effect, as an applicant's e-mail address will go on public record. This will not be on the main trade mark details webpage, but inside the related documents – but those who want this information know to look there. This will therefore create a haven for scammers who send out unsolicited requests to applicants and owners, already in significant numbers – now it will get worse. Such requests, which are often designed to look like invoices from a Government-sounding body, include invitations to renew trade mark registrations at inflated prices and solicitations to enter your mark into a directory that holds no legal value. Again, the key here is to be vigilant, certainly do not pay anything and forward on to your usual advisor.


Madrid Protocol designations of the US unaffected – or are they?


A valid e-mail address for the applicant is not a filing requirement for a designation of the US in a Madrid Protocol application. Where there are grounds for Provisional Refusal, such as prior rights or a specification objection, any response will also need to include a valid e-mail address for the applicant.


For such a designation that is approved for publication without any grounds for Provisional Refusal, the Examining Attorney will not require the owner to first provide an email address prior to publication.


This said, we are receiving anecdotal information that Provisional Refusals are being issued where only a valid e-mail address for the applicant is being requested. We will continue to monitor this situation so we can bring such Provisional Refusals to the attention of representative groups and the USPTO.


We should mention that it is possible to include an applicant’s e-mail address in the application form under the Madrid Protocol.


Changes to Specimen of Use requirements


As the US operates a use based trade mark regime, you may be familiar with the USPTO's requirement to submit specimens of use at various stages.


There have been changes to these requirements making things stricter, again to combat fraud, particularly with respect to labels and tags (as specimens of use for goods) and web pages (as specimens for services).


A label or tag not shown physically on the goods has previously been accepted. Now, if it is not shown physically attached to the goods then it may be accepted if, on its face, it clearly shows the mark in actual use in commerce. To clearly show actual use in commerce, the tag or label would, in addition to showing the mark, include informational matter that typically appears on a label in use in commerce for those types of goods such as net weight, volume, UPC bar codes, lists of contents or ingredients, or other information that is not part of the mark but provides information about the goods.


Otherwise, it will be important that the actual goods are shown in the specimen. As an example, previously a simple tag that would appear on an item of clothing was acceptable, now such a specimen must show the tag hanging off or attached to the item of clothing.


A webpage can be accepted as a specimen for services. These requirements are updated to reflect "the transitory nature of Internet postings" so the URL for the web page of the specimen and the date the page was accessed or printed must both be provided to enable verification.


While the changes to specimen requirements may seem onerous, it is designed to protect those who are genuinely using their marks from those that obtain a registration less than honestly.




“In Europe’s world of GDPR, it will be surprising to many the direction that USPTO has gone in and it will be interesting to see if they change their stance in the coming weeks and months”


Constructively, we have spoken with our US colleagues. We know that clients that have appointed professional representatives do not want to be receiving correspondence from the USPTO (or other IP Offices) and, if the USPTO insist on communicating with them, we have suggested that this should only be on important matters such as maintenance reminders or where there is a bounce back from the attorney’s e-mail. This is still overkill in our view as attorneys, who often have a written Power of Attorney to represent the applicant, also have professional obligations, including keeping their contact details with the USPTO up-to-date.


If the USPTO insist that an applicant’s e-mail address is mandatory, while it can sit in their records, we will push that it is redacted from the public record. This is an ongoing issue with the USPTO recently saying it is "continuing to explore additional improvements, including potentially masking email addresses." Currently, the guidelines allow for a petition to be filed "to redact the email address... in an extraordinary situation".


While we are negative towards e-mail addresses of applicants being a requirement, we broadly welcome changes to the specimens of use as they have in mind protecting those who genuinely use their trade marks.


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