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USPTO Implements Mandatory Electronic Filing for Trademarks and Clarifies Specimen Requirements

Reports Trademark

Changes to the Trademark Rules of Practice to Mandate Electronic Filing, 84 Fed. Reg. 37081 (proposed July 31, 2019).

New rules mandating electronic filing for most trademarks went into effect on February 15, 2020. The United States Patent and Trademark Office (“USPTO”) will now conduct all formal trademark application and registration correspondence through the Trademark Electronic Application System (“TEAS”), with limited exceptions. The new rules require each applicant and attorney to include an email address, which will be publicly available in the files under the Trademark Status and Document Retrieval (“TSDR”) documents tab. USPTO will direct all formal correspondence to the designated email address and will not attempt to contact the correspondent by other means if the email transmission fails for any reason.

USPTO also amended the rule for specimens, 37 C.F.R § 2.56 (2020). In order to satisfy the new language of § 2.56, “a specimen must show use of the mark directly associated with the goods and such use must be of a point-of-sale nature.” As the updated Examination Guide 1-20 indicates, this change intends to clarify the requirements under case law and existing statutes and would exclude specimens that “appear to be a mock-up . . . created only for purposes of the application.” For web pages, applicants must include the URL and access or print date with the filing. Megan Bannigan, Christopher Ford, and Marissa MacAneney propose that these changes are “likely due to the flood of trademark applications the USPTO has dealt with, largely from Chinese companies, that appear to be digitally adding brand names to photos of products in an attempt to show ‘use’ where none may actually exist.”

There is a contingency plan in place for system outages. If a widespread or lengthy TEAS outage occurs on the date of a deadline, the electronic filing requirement is waived and applicants can file via fax without a petition. However, if a short-term outage occurs, the filer must submit a petition with proof that TEAS was unavailable on the deadline date. The petition is not likely to be granted if the system was down for a regularly scheduled maintenance event or if the failure to file was due to user error.

Parties that are nationals of countries that are both members of the Trademark Law Treaty (“TLT”) and non-members of the Singapore Treaty on the Law of Trademarks (“STLT”) are exempted from the electronic filing requirement because the TLT requires that member countries accept paper trademark applications from other TLT members. There are also exceptions for scent and flavor marks.

The electronic filing requirement is designed to support end-to-end electronic processing for all trademark submissions. Currently, more than 99% of applications under section 1 or section 44 are filed electronically. Several practitioners raised concerns about the new email requirements, noting that publicly available email addresses could lead to increased spam. There are also potential cybersecurity concerns because malicious emails could be crafted to mimic official correspondence and targeted to the listed email addresses in a “spear-phishing” attack. In response to these concerns, USPTO revised the email requirements by eliminating some of the more restrictive specifications that were originally in place to ensure that USPTO had contact information in the event that an attorney stopped representing an applicant. USPTO also encouraged applicants to create an email address specifically for correspondence related to trademark filings.