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New USPTO Guidelines For Electronic Filings And Specimens

On February 15, 2020, the United States Patent and Trademark Office’s (USPTO) new rules will go into effect (84 Fed. Reg. 37081) requiring applicants, registrants, and parties to a proceeding before the Trademark Trial and Appeal Board (TTAB) to provide their own email address to receive USPTO correspondence, and file all trademark submissions electronically using the Trademark Electronic Application System (TEAS), with limited exceptions.  In addition, the new rule amends the requirements for specimens in accordance with the Trademark Act and precedential case law.

Requirement to Provide Applicant, Registrant and Party Email Address

As of February 15, 2020, applicants, registrants, and parties to a proceeding before the TTAB, will be required to provide and maintain their own valid email address for receipt of correspondence from the USPTO.  This requirement is in addition to the attorney address that is already required.  The applicant’s, registrant’s, or party’s email address will be publicly displayed along with other contact information already available in the USPTO’s public database.

Any email address that can be used to directly contact the applicant, registrant, or party (i.e., an email address that is accessible and regularly reviewed by the applicant, registrant, or party) will be acceptable.  Examples of acceptable email addresses for the applicant, registrant, or party include:

  • A personal email address;

  • An email address created for the purpose of communicating with the USPTO that is personally monitored by the trademark owner;

  • In-house counsel’s email address for a juristic entity owner;

  • An officer’s or partner’s individual email address for a corporate or partnership owner;

  • A holding company officer’s individual email address, if the holding company is a related company; or

  • A juristic entity owner’s email address, g., somecontact@applicantcompany.com or info@applicantcompany.com, if it is personally monitored by the trademark owner (the email address does not have to be a corporate URL address).

However, email addresses that cannot be used to directly contact the applicant, registrant, or party are unacceptable. A petition may be filed to redact the email address in an extraordinary situation.

Requirement to File Electronically

As of February 15, 2020, applicants are required to file electronically, through the USPTO’s TEAS, any trademark, service mark, certification mark, collective membership mark, or collective trademark or service mark application for registration on the Principal or Supplemental Register under Section 1 and/or Section 44 of the Trademark Act.  There are a few exceptions to this electronic filing rule, including, among others, submissions made to the TTAB in ex parte or inter partes proceedings, which are currently required to be filed through the USPTO’s Electronic System for Trademark Trials and Appeals, and applications based on Section 66(a) of the Trademark Act, which are initially filed with the International Bureau of the World Intellectual Property Organization and subsequently forwarded electronically to the USPTO.  That said, Section 66(a) applicants and registrants are required to electronically file all subsequent submissions concerning their applications or registrations and to designate an email address for receiving USPTO correspondence.

Requirement for Specimens

As of February 15, 2020, the USPTO also has imposed new standards for specimens.  Applicants must now ensure that specimens that are web pages show the URL and access or print date.  In addition, specimens must show use of the mark placed on the goods, on containers or packaging for the goods, on labels and/or tags affixed to the goods, or on a display associated with the goods, which must show use of the mark directly associated with the goods and such use must be of a point-of-sale nature.  In addition, a service mark specimen must show the mark as used in the sale of the services, including use in the performance or rendering of the services, or in the advertising of the services, and the specimen must show a direct association between the mark and the services. Accordingly, if an applicant submits specimens that fail to comply with the new requirements, the USPTO will likely issue an office action rejecting the submission.

© 2020 Mitchell Silberberg & Knupp LLP

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About this Author

Alesha M. Dominique Partner DC intellectual property entertainment IP litigation trademark prosecution litigation specialties video game
Partner

Alesha Dominique represents clients in intellectual property litigation, with an emphasis on patent, trademark, false advertising, and unfair competition matters.  Alesha’s experience includes representing clients before federal district courts, the U.S. International Trade Commission, the U.S. Court of Appeals for the Federal Circuit, and the Trademark Trial and Appeal Board. She also counsels clients on trademark clearance, prosecution, and enforcement matters.

representative matters

  • Represented a multinational retail corporation in trademark infringement case;...

(202) 355-7925
Dima S. Budron Associate DC MSK intellectual property motion picture, television & music transactions
Associate

Dima S. Budron is an Associate in the Washington, D.C. office. She focuses her practice on intellectual property and transactional entertainment law, representing artists, production companies, networks, studios, trade associations, and talent and content creators. Dima has experience drafting, negotiating, and reviewing contracts dealing with various stages of content creation such as funding, development, production, licensing and distribution. She also provides legal analysis and counseling on copyright and trademark matters.

representative matters

  • Drafts, negotiates, and reviews music producer agreements, recording artist agreements, motion picture/TV talent agreements, life story rights agreements, book options, writer agreements, funding agreements, development agreements, production services agreements, season renewal agreements, and content licensing agreements for various clients,

  • Assists clients in obtaining rights to use music in audiovisual and/or music productions.

  • Provides clients with legal opinion on the use of titles for movies or television shows.

  • Serves as counsel to International Intellectual Property Alliance (a coalition of five copyright-based industry trade associations – RIAA, MPAA, ESA, AAP, and IFTA – comprised of over 3,200 companies in the music, film, book publishing, and entertainment software industries) on international copyright protection and enforcement matters including drafting important government filings such as the annual Special 301 report and several of the United States Trade Representative’s Out-of-Cycle Reviews.

  • Assist in administrative litigation before the Copyright Royalty Board regarding royalty distribution for cable re-transmissions, representing the copyright owners of syndicated series, movies, and specials broadcast.

  • Assisted in counseling major studio client on theatrical and television rights upon review of documents surrounding prior film productions.

  • Represented the Motion Picture Association of America (MPAA), the Recording Industry Association of America (RIAA), the Entertainment Software Association (ESA), and the Association of American Publishers (AAP) in the 2018 Copyright Office rule-making proceeding regarding proposed exemptions to an anti-circumvention provision of Section 1201 of the Digital Millennium Copyright Act.

202-355-7914