Janet Satterthwaite of the IP Emerging Issues Team reports on an important change in the United States.

The United States Patent and Trademark Office has issued a new, confusing and controversial Examination Guide, requiring applicants to provide their own email addresses.

The new polices go into effect on 15 February 2020, i.e. this coming Saturday.

There are a number of changes:

1. Requirement to file electronically with certain exceptions;
2. Correspondence email address requirements;
3. Changes to certain fees and entity requirements; and
4. Specimens.

Of these, the most important changes for MARQUES members to know about ASAP are:

Email addresses

The applicant’s email address must be provided to get a filing date: We now must submit a live, working email address for the applicant (unless the applicant is from a handful of mostly non-EU countries) in addition to the US attorney’s email address.

The applicant’s foreign law firm address is not acceptable, so if you are instructing from the EU, you cannot use your firm address as the applicant’s email address, and you must provide the applicant’s email address in order to get a filing date. The Guide leaves open a number of questions about what will be acceptable.

MARQUES members will need to add this information to their standard filing instruction letters. (It is not clear whether pending pre-publication applications will be subject to this requirement.)

Initial reaction from the US trade mark bar is that the requirement to provide actual email addresses of applicants will increase the amount of fraudulent scam communications, such as for payment for false registries; attorneys are also sceptical that the USPTO has the right, as a matter of administrative or privacy law, to impose these changes. Many members of the trade mark bar, including this correspondent, have signed a letter to the USPTO pushing back on the rule.

Since we must provide the information to get past the now mandatory online forms, however, we will need to comply for now.

No doubt the scammers with fake registry-invoice businesses are already opening Champagne and ordering new Tesla cars.

Specimens

The policies on acceptable specimens, which have already been confusing for many EU counsel, are even stricter than before. Because of an increase in fake specimens, the USPTO has recently been suspicious of, and has been refusing, specimens such as labels that do not show the label on the goods. Now the new guide confirms that mere hang tangs or labels without a photo of the hang tag on the goods will not work unless the hang tag or labels “include informational matter that typically appears on a label in use in commerce for those types of goods such as net weight, volume, UPC bar codes, lists of contents or ingredients, or other information that is not part of the mark but provides information about the goods”.

Janet Satterthwaite is a lawyer with Potomac Law Group, Washington, DC and a member of the MARQUES IP Emerging Issues Team