New Trademark Exam Guide Effective February 15, 2020 Regarding Mandatory Electronic Filing, Owner Email Addresses, and Specimen Requirements

Today, the U.S. Trademark Office issued long-anticipated guidelines governing electronic filing and electronic communications with attorneys and trademark owners. Effective February 15, 2020, these new rules provide several important changes in practice before the Trademark Office. First, all formal submissions to the Trademark Office (with limited exceptions) will need to be made electronically. Second, and maybe most significant, all newly filed applications will require an in-house email address for the applicant. And third, examination of specimens will be significantly stricter.[1]

Electronic Filing Requirements

The electronic filing requirements may be the least impactful requirements in the new rules, as most applicants were already in compliance. Going forward, however, the U.S. Trademark Office is eliminating paper filing options and will require that all formal submissions to the U.S. Trademark Office be made electronically via the Trademark Electronic Application System (“TEAS”). The Office has provided for certain exceptions, including grandfathering in prior-filed paper applications, allowing nationals of certain countries to file in paper under the terms of a treaty,[2] allowing mailed specimens for non-traditional marks such as scent and flavor marks, and allowing paper filing at times when TEAS is unavailable or cannot be accessed (pursuant to a petition to the Director).

Email Address of Trademark Owner

For many, the most significant change requires all applicants, registrants, and parties to a proceeding before the Trademark Trial and Appeal Board (“TTAB”) to provide a valid in-house email address for receipt of correspondence from the U.S. Trademark Office. The email address supplements the correspondence information for a trademark owner’s attorney, and would be used by the Trademark Office in case representation of the mark owner ends. Controversially, the owner’s email address will be publicly available, potentially leading to a loss of privacy and to an increase in improper, and oftentimes misleading, spam and solicitation being sent directly to trademark owners.

An owner’s email address must be different from its attorney’s email address (even in cases in which an in-house counsel is filing a trademark application), and, for applications originating outside of the United States, the email address cannot be the address of foreign counsel. The Office has provided examples of email addresses that would be acceptable, including:

• a personal email address;
• an email address monitored by the owner that is created specifically for communicating with the U.S. Trademark Office;
• in-house counsel’s email address; or
• a general email address for the owner (such as info@trademarkowner.com), “if it is personally monitored by the trademark owner.”

Examples of email addresses that would not be acceptable include:

• an email address of outside counsel;
• an email address for counsel at a non-U.S. law firm;
• an email address that automatically deletes email without allowing storage or review of the email; and
• an email address that the trademark owner does not monitor.

The email address requirement will apply to all applications, including Madrid Protocol applications, upon filing, and, presumably, post-filing TEAS forms will begin to require this information even in applications filed before February 15. Failure to provide such an email address when filing an application would result in a loss of filing date (except in cases of Madrid Protocol applications). Post-filing, the failure to maintain such an address risks the Office not being able to contact an owner directly.

Despite the new requirements, the Examination Guide confirms that the Office should continue to only correspond with an applicant’s or registrant’s appointed attorney, if there is one. If not, the Office will correspond with the applicant or registrant directly.

Tighter Rules Regarding Specimens of Use

The Trademark Office will be reviewing specimens of use much more closely, both while an application is pending and after registration. Generally, specimens of use for goods include photographs, screen shots, or scanned images of (1) actual goods bearing the mark, (2) containers, packaging, tags, or labels for those goods showing the mark, or (3) point-of-sale displays (generally screen shots of websites from which goods can be ordered or photographs of retail stores where the goods can be purchased) showing the mark directly associated with the goods. Specimens for services generally include websites, advertisements, or brochures showing the mark and evidencing “a direct association between the mark and the services” through use “in the sale of the services, including use in the performance or rendering of the services, or in the advertising of the services.”

On February 15, applicants and registrants will need to comply with several rule changes when submitting specimens. Going forward, webpage specimens will need to show the URL and the access or print date of the website. It appears that such information need not be automatically generated, but can be provided by the person preparing the specimen. The Office will also look more closely at photographs of labels and tags to be sure that they show “actual use in commerce.” Such specimens should either be attached to goods or should show informational matter that typically appears on a label or tag for those types of goods, such as weight, volume, bar codes, contents or ingredients, etc.

Lastly, the Examination Guide provides examples of material that would not be acceptable as specimens of use, including:

• artist renderings;
• printers’ proofs; and
• computer illustrations, digital images, or similar mockups of how the mark may be displayed.

The U.S. Trademark Office will apply the new rules starting on February 15, 2020, and the Office has advised that TEAS will be unavailable early on that date for updates.

The Examination Guide is the first of 2020 and is identified as Examination Guide 1-20 “Mandatory Electronic Filing and Specimen Requirements,” dated February 2020, and can be found at https://www.uspto.gov/sites/default/files/documents/TM-ExamGuide-MEF-1-20.pdf.

Eric R. Moran is a partner with McDonnell Boehnen Hulbert & Berghoff LLP and serves as Chair of the firm’s Trademark, Unfair Competition, Advertising Law & Copyright Practice Group. Mr. Moran has experience in all areas of intellectual property law, with particular emphases on litigating and counseling clients on patent, trademark, and domain name issues. moran@mbhb.com

© 2020 McDonnell Boehnen Hulbert & Berghoff LLP

snippets is a trademark of McDonnell Boehnen Hulbert & Berghoff LLP. All rights reserved. The information contained in this newsletter reflects the understanding and opinions of the author(s) and is provided to you for informational purposes only. It is not intended to and does not represent legal advice. MBHB LLP does not intend to create an attorney–client relationship by providing this information to you. The information in this publication is not a substitute for obtaining legal advice from an attorney licensed in your particular state. snippets may be considered attorney advertising in some states.

[1] See Examination Guide 1-20: Mandatory Electronic Filing and Specimen Requirements February 2020.

[2] Bahrain, Bosnia and Herzegovina, Chile, Colombia, Costa Rica, Cyprus, Czech Republic, Dominican Republic, Egypt, El Salvador, Guatemala, Honduras, Hungary, Indonesia, Monaco, Montenegro, Morocco, Nicaragua, Oman, Panama, Slovenia, Sri Lanka, Turkey, and Uzbekistan are members of the Trademark Law Treaty, but not the Singapore Treaty on the Law of Trademarks.