By: Michael Geller

In yet another new rule change, starting February 15, 2020, the US Patent and Trademark Office will require that all applicants, registrants and TTAB parties provide an email address for the party separate from the outside counsel filing attorney’s email address.  This essentially means that the trademark owner needs to provide their own email address on top of the filing attorney’s (outside counsel) address.

The new USPTO’s manual issued on February 7, 2020 states that the new email address is needed so “the USPTO can contact [the party] if representation ends.”  Despite this, all USPTO communication will still be routed to correspondence of record, which is most often the address for the filing attorney.

The new address must be monitored by the applicant or registrant and can be:

  • A personal email address;
  • An email address created for the purpose of communicating with the USPTO;
  • An officer or In-house counsel’s email address; or
  • A holding company officer’s email address if the holding company is a related company.

For instance, an email address such as trademarks@company.com or USPTOcommunication@company.com are both acceptable as long as they are monitored.  It is not sufficient to list an email for outside counsel or an email for the applicant/registrant which is not monitored or not accessible by applicant.

The email address will be publicly viewable in filed documents.  For this reason, it has created privacy concerns for applicants in various circumstances.

A recommended option is to create a dedicated email address for all USPTO communications which is controlled and monitored by an applicant or registrant.  This will obviate the need for applicants and registrants to provide personal email addresses for employees.  Additionally, filing parties should be on the lookout for scams and phishing emails, as these publicly available email addresses will almost certainly be targets for such bad-faith activities.

If the need arises to attempt to keep that email address or other information hidden from the public, we are happy to discuss alternative strategies.

Various representatives of the trademark community are trying to modify this new rule or delay its implementation. However, clients should be prepared to provide a client email address as soon as February 15, 2020.