Lewis Roca Blog

On February 6, 2020, the United States Patent & Trademark Office (“USPTO”) published an Examination Guide announcing new rules scheduled to go into effect on February 15. Among the new rules is a requirement that any trademark owner (e.g. applicant, registrant, or party to a litigation matter before the Trademark Trial & Appeal Board) provide a valid email address for correspondence, even if there is an appointed U.S. attorney.

Trademark owners must provide an email address that is “accessible and regularly reviewed by the applicant, registrant, or party” and allows the USPTO to “directly contact” the trademark owner, even if the trademark owner is represented by counsel. The purpose of the new rule is for the USPTO to have a way to directly contact the trademark owner in case the appointed representative is terminated or otherwise inaccessible for any reason. If an attorney is appointed, then two email addresses will be required—one for the owner’s email address field and one for the attorney’s email address field. The USPTO Examination Guide offers the following examples of acceptable email addresses:

• A personal email address
• An email address created separately for the purpose of communicating with the USPTO
• 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
• A juristic entity owner’s email address

The Examination Guide is unclear as to when existing applications and registrations must be updated with this new information. We suspect a trademark owner email address will have to be added to existing applications or registrations at the time of the next responsive action (e.g. responding to an office action, filing a declaration of use, filing a renewal). At the very least, any new application filed on or after February 15 will require the trademark owner to provide a valid email address at the time of filing, or a filing date will not be generated.

The trademark owner’s email address will be publicly accessible, although a petition may be filed to redact the email address in an extraordinary situation. Current USPTO rules and regulations do not set forth what would be considered an “extraordinary situation” to allow redaction of the trademark owner’s email address. Even if a trademark owner wants to request an email address be redacted, such a request would have to be made after a new trademark application is filed, so it is still possible for the trademark owner’s email address to be published publicly for a limited period of time, even if it is subsequently redacted. A petition to redact also requires an additional $100 USPTO fee plus attorney’s fees.

Unfortunately, this new rule will expose trademark owners to potential scammers and spammers. Many trademark practitioners and owners have already contacted the USPTO to express legitimate privacy concerns and to try to at least delay the rollout of this new rule until better safeguards can be implemented. However, presuming the rule goes into effect February 15, we encourage trademark owners to consider what email address they would be willing to provide to the USPTO and prepare as necessary, which may include setting up a separate dedicated email address to comply with the new USPTO rule.

For more information or questions, please contact David Jackson (DJackson@lrrc.com) or Jennifer Van Kirk (JVanKirk@lrrc.com), or reach out to your personal contact at Lewis Roca Rothgerber Christie.