Client Alerts | 04/27/2020

USPTO Requires Brand Owner to Provide Email Address


Earlier this year, the United States Patent and Trademark Office (USPTO) issued a new Trademark Exam Guide Rule requiring new US trademark applications, filed on or after February 15, 2020, to include an email address for the applicant.  Further, an email address for the applicant/registrant must be provided in existing applications/registrations in any new official filings, if such was not already provided.  The goal of the USPTO is to have a direct line to applicants/registrants should it be needed.  Per this new rule,

“Applicants can list a personal email address or an email address for either a company officer or an in-house counsel. They can also opt for an email address specifically created for the purpose of communicating with the USPTO.  What they cannot do is use an outside counsel’s email address or any other email address to which the applicant does not have direct access.” 

The original rule was met with opposition by the IP community because the email address would be available in the USPTO’s public database.  The concern was this could make applicants the target of various phishing scams,  such as phony invoices for trademark services they did not request and do not need.  On Friday, the USPTO issued a “Trademark Alert” stating they will mask the applicant/registrant’s email address in the public record.  The USPTO record will show “XXX” in the owner email address field.  The USPTO believes this will help reduce the number of scams/solicitations the owner will receive. 

The USPTO will not correspond directly with a represented party unless the party is no longer represented by counsel. After registration, the USPTO may contact the brand owner directly but will continue to include the attorney on record for courtesy reminders to file maintenance documents. 

Given this new rule, you must provide an email address to use in trademark filings with the USPTO.  We recommend a new email address be created solely for this purpose, such as, USPTO-TM@[YourCompany].com

Keep Reading