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Electronic Filing

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Are You Ready for USPTO’s New Mandatory Electronic Filing Email Requirements?

February 13, 2020   |   Ann Arbor | Atlanta | Detroit Metro | Chicago | Dallas | Columbus | Delaware | Elkhart | Fort Wayne | Grand Rapids | Indianapolis | Los Angeles | Minneapolis | Raleigh | Salt Lake City | San Diego | South Bend | Washington, D.C.

The U.S. Patent and Trademark Office’s (USPTO) new Mandatory Electronic Filing and Email Address Requirements go into effect on Feb. 15, 2020. As a result of these requirements, any new U.S. trademark applications must include an email address for each applicant, even if there is an appointed attorney on record. 

The purpose of this separate email address is to allow the USPTO to contact a trademark owner if representation with the appointed attorney ends. 

Any new application filed after the effective date that does not comply with this requirement will not receive a filing date from the USPTO. 

Applicants, registrants and parties with an application or registration on file with the USPTO, or those that have matters before the Trademark Trial and Appeal Board, also must maintain a valid email address for correspondence, except under limited circumstances. This new email requirement also applies when responding to Office Actions, filing maintenance documents, and post-registration matters for trademark applications and registrations that are sought or secured via the Madrid System. 

Examples of acceptable email addresses for the applicant, registrant or party include:

  • 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 under certain circumstances 
  • A juristic entity owner’s email address, e.g., somecontact@yourcompany.com or info@yourcompany.com, if it is personally monitored by the trademark owner (Note: the email address does not have to be a corporate URL address.)

Examples of unacceptable email addresses include: 

  • An outside counsel’s email address
  • 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”)
  • An email address that the trademark owner does not otherwise regularly review

The email address of the applicant, registrant or party will be viewable under the Trademark Status and Document Retrieval (TSDR) documents tab, which means that it will be public. 

While being represented by an attorney, trademark owners need not worry about responding to USPTO communications. Except during the prosecution of a cancellation petition, the USPTO will not otherwise correspond directly with a represented party until one of the following occurs:

  • The party files a revocation of attorney
  • The designated attorney is suspended or excluded from practicing in trademark matters
  • Recognition as the designated representative ends

To ensure compliance as this new requirement goes into effect, consider creating or designating an email address, such as trademarks@yourcompany.com, specifically for trademark matters and have it monitored regularly by a designated person within your company.  

The chosen email address may receive deceptive and fraudulent invoices designed to look as if they emanate from the USPTO. As such, trademark owners should be aware and consult with legal counsel if any suspicious messages are received by a designated trademark email address. 

For more information, contact the Barnes & Thornburg attorney with whom you work, or Olivia Clavio at 317-231-6444 or oclavio@btlaw.com

© 2020 Barnes & Thornburg LLP. All Rights Reserved. This page, and all information on it, is proprietary and the property of Barnes & Thornburg LLP. It may not be reproduced, in any form, without the express written consent of Barnes & Thornburg LLP.

This Barnes & Thornburg LLP publication should not be construed as legal advice or legal opinion on any specific facts or circumstances. The contents are intended for general informational purposes only, and you are urged to consult your own lawyer on any specific legal questions you may have concerning your situation.

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