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The U.S. Patent and Trademark Office Requires Email Address of Applicants in All Trademark Filings as of February 15, 2020

February 14, 2020

As of February 15, 2020, all new trademark applications and post-registration filings (such as proof of use and renewals) must include an email address of the applicant(s) in addition to the name, email address, and postal address of an attorney who is an active member in good standing of the bar of the highest court of a state in the United States.

The old rules did not require an applicant's email address; the email address of the appointed attorney was sufficient. Why is this a significant change? The email of the applicant will be publicly available as part of the application.

The U.S. Patent and Trademark Office (USPTO) enacted the new rule to continue to be able to communicate with the applicant even in the face of the retirement or withdrawal of the attorney who originally filed the application. The email address must be one to which the applicant or registrant has direct access.

The following do not suffice:

• An email address for outside counsel
• An email address for a foreign law firm
• An unmonitored email address
• An email address which automatically deletes incoming messages

These are the acceptable types of email addresses:

• A personal email address
• An actively monitored email address created for the purpose of communicating with the USPTO (e.g., uspto@company)
• In-house counsel's email address for that applicant/registrant
• An email address of an officer or director of the applicant/registrant
• An email address of a related holding company

Madrid Protocol applications under Section 66(a) are sent to the USPTO by the International Bureau without an applicant's email address. If the application is in condition for publication, then the USPTO will publish the application. But all subsequent submissions in that application must include the applicant's email address. So this new rule also applies to foreign companies filing U.S. applications through the Madrid Protocol.

Given the excessive false solicitations that applicants receive through mailings to the applicant's address once an application is filed (most asking for money), one concern is that this new email address will also be a new home for spam. Another concern is the harvesting (scraping) of the email addresses by companies that re-sell or otherwise use or misuse them. Certainly, there are many circumstances in which a person's or a company's internal email addresses are kept somewhat confidential: for instance, if the person is a celebrity or is a well-known individual, privacy concerns dictate that their personal or company email addresses should not be publicized.

Takeaway

Setting up a separate email address (e.g., uspto@company) which is actively monitored is a good approach. That way, any spam will be self-contained and can be blocked, and the privacy of one's personal or company email address is preserved. February 15 is the deadline to create these new email addresses and supply them to counsel to use for new filings, proof of use or renewals.

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Goldsmith, Amy B. Partner and Co-Chair of Intellectual Property Group Partner and Co-Chair of Intellectual Property Group 212.216.1135 VCard

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