Effective 15 February 2020, the United States Patent and Trademark Office (USPTO) issued a revised examination guide regarding the final rules put in place by the Changes to the Trademark Rules of Practice to Mandate Electronic Filing (published on 31 July 2019, 84 FR 69330). The examination guide will supersede the current edition of the Trademark Manual of Examining Procedure (TMEP) to the extent any inconsistency exists.

Correspondence

Applicants, registrants, and parties to proceedings before the Trademark Trial and Appeal Board (TTAB) are required to provide and maintain a valid email address on record with the USPTO. An applicant email address must be provided for all new applications, even if the application is filed by an attorney and an attorney email address is provided. To this point, we recommend that clients set up an email (e.g., USPTO@clientcompany.com) that can be forwarded to the relevant people within the organization. Due to privacy concerns, it is also possible as a result of last-minute revisions to the rules to allow Baker McKenzie or other outside U.S. trademark counsel to, with your approval, set up an additional e-mail address created specifically for this purpose. This could be preferable if your company does not wish to disclose any internal e-mail address in connection with its trademark filings.

Importantly, despite the requirement for an additional applicant correspondence address, all formal correspondence from the USPTO will continue to go to the email designated for correspondence (i.e., Baker McKenzie as your outside trademark counsel). Accordingly, you should view correspondence that you might receive at the e-mail your company may propose to set up as inherently somewhat suspect, particularly if there are any signs that it is not being sent by the USPTO.

Tip: To avoid receiving the inevitable spam email solicitations that are sure to come with this change, we recommend that your IT department set up a rule by which only emails from a uspto.gov email address sent to the designated email will be forwarded to your trademark administrator.

Specimens

Several updates have been made to the specimen rules in order to verify actual use in commerce. For webpage specimens, applicants and registrants must now show or provide the URL, as well as the access or print date. Labels or tags that appear to be mock-ups or created solely for the purpose of the application will be refused for failure to show use of the mark in commerce. Applicants should be prepared for the possibility that they will be requested by the USPTO to clarify or otherwise show evidence of actual use in commerce of tags, labels and boxes that have been accepted as specimens for many years without question from the USPTO. The USPTO has further clarified that the following are not acceptable as specimens: an artist's rendering, a printer's proof, a computer illustration, a digital image, or a similar mockup of how the mark may be displayed.

The USPTO issued some additional rules noted below, but none that will impact your business as a practical matter. The complete examination guide may be found here should you wish to review the entire text.

  • Application Requirements
    The TEAS RF filing option has been renamed to TEAS Standard, and the TEAS Regular filing option has been eliminated. Further, the additional processing fee formerly applied to both TEAS Plus and TEAS RF applications not meeting certain requirements now will only be applied to TEAS Plus applications not meeting initial application filing requirements.

  • Changes to Entity Information Requirements
    Some entities - domestic partnerships, domestic joint ventures, and sole proprietorships - will now be required to provide the names and citizenship of the members. This rule now aligns with the previous requirement of providing such information for general partners of a domestic partnership.

  • Requirement to File Electronically
    All formal trademark application/registration correspondence must be filed electronically through TEAS, with the exception of the circumstances discussed below. Methods of informal communications remains unchanged.

  • Exceptions for Paper Submissions
    In the following situations, the USPTO may continue to accept paper submissions related to trademark applications/registrations: (i) the submission relates to a "grandfathered" application or registration; (ii) the applicant/registrant is a national of an exempted treaty country; (iii) the submission is a particular type of specimen for a non-traditional mark; (iv) the submission is supported by a petition to the Director; and (v) the USPTO deems it appropriate to waive the rule requirement because of widespread TEAS unavailability, a postal-service interruption, or other serious emergency (such as a natural disaster).

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