• Henry Park

New USPTO Trademark Rules - owner email address

Last week on February 7, 2020, the USPTO issued new rules covering the filing of US trademark applications (see USPTO link to Exam Guide 1-20 Mandatory Electronic Filing and Specimen Requirements)

First, these rules were issued on February 7th and come into effect in 8 days on February 15, 2020.

Second, all trademark applications must now include a trademark owner's email address (even if an attorney is filing the application). The basis for this requirement is to permit the USPTO to communicate with the owner after an attorney's representation ends. Examples of acceptable owner email addresses would be:

• A personal email address; • An email address created for the purpose of communicating with the USPTO that is personally monitored by the trademark owner; • In-house counsel’s email address for a juristic entity owner; • An officer’s or partner’s individual email address for a corporate or partnership owner; • A holding company officer’s individual email address, if the holding company is a related company per TMEP §1201.03; or • A juristic entity owner’s email address, e.g., somecontact@applicantcompany.com or info@applicantcompany.com, if it is personally monitored by the trademark owner (the email address does not have to be a corporate URL address).

Examples of unacceptable email addresses would be:

• An email address of outside counsel; under Rule 2.32(a), a separate (and different) email address for the applicant is required so that the USPTO can contact them if representation ends; • A foreign law firm’s email address; • A designated email address to which all messages sent are automatically deleted and are never stored or reviewed (i.e., a “black hole email address”); or • An email address that the applicant, registrant, or party does not have direct access to monitor.

Further, even if in-house counsel is filing the trademark application, two different email addresses are still required. One for the in-house counsel, and one for the owner.

Although the owner email address will not appear in TSDR, it will be viewable in the filed document in the TSDR. Given that the owner email address will be visible it is recommended that owners create (and monitor) a new email address such as trademarks@owner.com.

#uspto #trademark

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