Just one day before new trademark filing rules were set to take
effect, the U.S. Patent and Trademark Office (USPTO) issued a revised
guidance document on Feb. 14, 2020 in response to growing concerns about
potential misuse of trademark owners' email addresses.
In an
announcement, USPTO said it is "continuing to explore additional
improvements, including potentially masking email addresses."
The
revisions appear to raise additional questions that will need to be
clarified. We will be monitoring the USPTO's actions closely for any
additional modifications of the rules. In addition, we will be seeking
clarification as to whether it will be permitted to use a dedicated
email address of the attorney of record’s firm.
Despite the last-minute changes, the effective date of Feb. 15 was unchanged in the Examination Guide 1-20 (Revised).
The
issue that was specifically addressed in the revised Guide concerns the
requirement that trademark applications and registrations must include
an email address for the trademark owner that is publicly available and
viewable in documents filed electronically through TEAS, the Trademark
Electronic Application System.
As initially drafted, neither the
email address of the U.S. counsel of record nor a foreign firm’s email
address could be used as the trademark owner’s email address in an
application or maintenance filing; only the trademark owner’s own email
address could be used. Thus the trademark owner’s email address would
become publicly viewable subjecting trademark owners to unwanted
solicitations.
The revised Guide now permits the use of the
outside counsel’s email address and that of foreign counsel. However,
the revised Guide provides that email address of the trademark owner
“cannot be identical to the listed primary correspondence email address
of their attorney.” The revised Guide further states that the trademark
owner’s email address may be created by the trademark owners or their
attorney and that the trademark owner no longer needs to regularly
monitor the email address provided.
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