The U.S. Trademark Office has released its new Examination Guide (available here). Among other changes, the new rules require applicants and registrants to provide an email address, with limited exceptions.
Effective February 15, 2020, applicants, registrants, and parties (collectively “parties”) to any proceeding before the Trademark Trial and Appeal Board (TTAB) must provide and maintain a valid email address to receive correspondence from the USPTO. Appointed attorney correspondence information is still required and will be the point of contact with the Trademark Office. But the email address for the applicant, registrant, or party must be maintained to ensure the USPTO has accurate contact information if the legal representative withdraws its counsel. Although the parties’ email addresses will not appear in the Trademark Status and Document Retrieval (TSDR) tab, it will be viewable in the filed application, which will remain accessible in the TSDR documents tab. The party may file a petition to redact the email address in TSDR documents where an extraordinary situation exists.
Parties are responsible for maintaining a valid email address on record with the USPTO; and if transmission fails, the USPTO will not attempt contacting the correspondent by any other means. Any email address can be used if it allows for direct contact with the party. Acceptable email addresses include personal email addresses, those created for the purpose of communicating with the USPTO (given it is personally monitored by the trademark owner), or in-house counsel’s email address for a juristic entity. Unacceptable email addresses include those to outside counsel, a foreign law firm’s email address, or any email address that automatically deletes incoming messages or is not directly accessible to the party. And also important with respect to acceptable correspondence information is that third-party email addresses can no longer be used as a primary email address, which is now restricted to the email address for the attorney, or if unrepresented, that for the applicant or registrant. But the USPTO will still permit up to four secondary email addresses for receipt of courtesy copies.
Currently, the only exception to the new requirements applies to nationals of 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.
BEWARE: This new requirement will increase the likelihood that parties (such as our clients) will receive deceptive solicitation notices from third parties that are intended to look like official government correspondence. If you have any questions about the legitimacy of any communication, feel free to forward it to our firm to verify its authenticity.