Intellectual Property Law Knowledge Center

USPTO Implements its Changes to the Trademark Rules of Practice

February 13th, 2020

USPTOBy Bridget H. Labutta

On February 15, 2020, the United States Patent and Trademark Office (USPTO) will implement its new Changes to the Trademark Rules of Practice. The full text of the original Federal Register publication detailing these changes can be viewed here and the USPTO’s overview of the rule changes can be viewed here. Below is a summary of the changes and how they will impact trademark applicants and registrants.

 

  • All trademark applications, subsequently-filed documents concerning trademark applications, and documents filed concerning trademark registrations must be filed electronically. There are a few minor exceptions to this rule, such as the submission of specimens for non-traditional marks like scent or flavor marks.
    • Note: Panitch Schwarze already routinely files all trademark documents electronically, so this will not cause a major disruption in practice.

 

  • All specimens of use must be submitted electronically. Any website screenshot must now include the URL and access or print date.
    • Note: As always, a specimen of use for goods in Classes 1-34 must show the trademark stamped on the actual product or its packaging, or on a hang tag or label affixed to the product, or on a display (such as a catalog) that shows the trademark in close proximity to an image of the product and includes information on how to buy the product (such as a sales@company.com email address or “For Sales Call” telephone number). A specimen of use for services in Classes 35-45 must show the trademark and specifically reference the services identified in the application/registration, as typically shown in advertisements and other promotional materials like websites.

 

  • All trademark applicants and registrants must provide and maintain a working email address for receiving correspondence from the USPTO and TTAB for each trademark application and registration.
    • Notes:
      • The USPTO will not grant a filing date to any application that omits a valid email address for the applicant.
      • Panitch Schwarze must also continue to provide its own contact information as the correspondent and attorney of record. Throughout the application process, the USPTO will continue to send all official communications to the attorney of record, even though the applicant’s email address is also of record. After registration, the USPTO will continue to send all reminders concerning the trademark registration to the original or current attorney of record.
      • We encourage the applicant/registrant to provide a general company email account, such as info@company.com, or to create a trademark-specific email inbox, such as trademarks@company.com, that is monitored by more than one person. This will avoid a situation where the provided email address is tied to a single employee who ultimately leaves the company.
      • The applicant/registrant’s email address will become part of the public record, as part of the document as-filed. However, it will not be published on the application/registration status page. In extraordinary circumstances, the USPTO may grant a petition to redact the applicant/registrant’s email address. We encourage all clients to remain diligent in sorting solicitations from unscrupulous organizations that adopt official-sounding names, such as “Patent & Trademark Bureau” or “World IP Group,” but which provide no valid or necessary service before the actual United States Patent and Trademark Office.

 

  • All trademark applicants and registrants must provide and maintain an accurate physical address as a backup for the USPTO and TTAB to contact if an email correspondence address fails to work. This cannot include a Post Office Box.
    • Note: Panitch Schwarze must also continue to provide its own contact information as the correspondent and attorney of record.

 

If you have any questions, please contact us today at 215-965-1330 or trademark@panitchlaw.com.

Leave a Reply

Email Disclaimer

Sending an email to our office does not create an attorney-client relationship, and none will be formed unless there is an expressed agreement between the firm and the client. Thus, we strongly advise against sending confidential or privileged information to us until you can establish such a relationship. Furthermore, we advise against sending privileged or confidential information through email at all, since we can in no way ensure the security of your email. In fact, neither this website nor the email system involved is encrypted, so you should not assume that your email is confidential. We cannot guarantee that someone else will not see it.

Do you agree to this Email Disclaimer?

I Agree I Do Not Agree