The United States Patent and Trademark Office (USPTO) has been moving toward becoming a “paperless” trademark operation, primarily by restricting paper filing options and encouraging electronic filing through the imposition of higher fees for paper filing. The most recent development in this move was announced on February 6, 2020: Effective February 15, 2020, all formal correspondence concerning trademark applications and registrations must be filed electronically except in extremely limited circumstances.
In announcing this latest development, the USPTO also announced a new Trademark Office filing requirement: Starting February 15, 2020, a valid email address must be provided for all trademark registration applicants, even those whose applications
are filed through an outside attorney and even though that outside attorney has provided a valid email address to which the USPTO can direct electronic correspondence. A similar requirement will apply when making trademark maintenance or renewal filings for existing registrations. Previously, trademark owners filing through an attorney were only required to provide their traditional mailing address.
So how does this new requirement impact our clients that apply for and maintain their trademark registrations through Calfee? When we make a filing on our clients’ behalf, we will have to ask those clients to provide us with an email address that allows the USPTO to directly contact the trademark owner. The email account provided must be accessible to and regularly reviewed by the trademark owner. The filings will still include a Calfee email address and Calfee will remain
the designated correspondent and thus the primary recipient of USPTO email communications.
For those of our clients who have in-house legal counsel making their trademark filings, an email address for the trademark owner in addition to that of in-house counsel must be provided. The USPTO electronic filing system will not allow the same email address to be used for both the trademark owner and the filing in-house counsel. The USPTO will continue to communicate electronically with the designated correspondent, which in most cases would be the in-house counsel.
Finally, for those of our clients that make trademark filings without the assistance of outside or in-house counsel, since electronic filing is now, in almost all cases, the only filing option, only one email address will need to be provided. The person associated with the provided address will necessarily be the
designated correspondent with whom the USPTO will correspond.
Examples of email addresses for a trademark owner that will meet the newly announced requirement 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;
- if outside counsel is filing, an in-house counsel’s email address for the juristic entity that is a trademark owner;
- an officer’s or partner’s individual email address for a corporate or partnership trademark owner; or
- a juristic entity owner’s email address, e.g., email@example.com or firstname.lastname@example.org, if this email address is personally and regularly monitored by the trademark owner (the email address does not have to be a corporate URL address).
Examples of email addresses for a trademark owner that will not meet the new requirement include:
- an email address of outside counsel;
- 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 other party does not have direct access to monitor.
The stated rationale for the applicant email requirement is that it is intended to allow the USPTO to communicate with the trademark owner electronically in the event their representation by an attorney ends for any reason. However, an unintended and possibly burdensome consequence is that an otherwise private or undisclosed email address for the trademark owner (or an officer or employee of the owner) will now become a matter of public record. While the USPTO will not publish or disclose the trademark owner's email address in the same conspicuous fashion it does that of the designated correspondent, it will be easily discoverable because any trademark filing in which it is required is a public record that can be viewed online by the public at large. Trademark owners of late have been bombarded
by physical spam mail from third-party service providers, and the new trademark owner email address requirement opens the door for actual email spam of the same nature.
This potential new threat to otherwise private or undisclosed client email addresses comes on top of another cause for concern for privacy – the USTPO’s relatively recent decision to require the disclosure of the actual physical addresses for trademark owners instead of post office box or other mail drop addresses.
Because trademark owner email addresses provided to the USPTO may become a public record, trademark owners should give careful thought and consideration to how to best meet the requirement in a way that minimizes the threat to privacy. Calfee stands ready to assist our clients with crafting a prudent and effective strategy to meet the new filing requirement.