February 14, 2020

Joel Samuels Interviewed by Bloomberg Law about Email Requirements for Trademark Applicants

Harness Dickey trademark attorney Joel Samuels spoke to Bloomberg Law about a new rule that requires trademark applicants to submit their email address on applications that will then be publicly viewable.

The USPTO claims that the email mandate, which went into effect on Saturday, February 15, is part of a push to require online filing and will allow the agency to reach trademark owners if they should change counsel. Attorneys suggest that the mandate is also part of a push to require foreign applicants to hire U.S. attorneys.

The main problem with having a publically viewable email address tied to a trademark application is that it opens the door to numerous risks and scams in which bad actors pose as USPTO agents and demand money or personal information. Despite being well documented, patent and trademark scams are an ongoing nuisance. Experienced attorneys and savvy business people can spot the scammers, but the average small business owner may not know the difference.

“I don’t think they’ve thought through the implications for the clients and potential for misuse,” says Samuels. “Having a client email, that’s just going to increase the potential for harassment, misinformation campaigns, and phishing scams.”

The agency is also expected to strengthen the enforcement of its ban on using P.O. Boxes or law firm addresses in lieu of the applicant’s physical address. The rule won’t be much of a hindrance to companies with physical offices, but it could be a big problem for celebrities or small businesses that are run out of a private residence, for example.

According to the article, “Those who don’t wish to comply with the email address rule risk having the PTO deny an applicant a filing date — which puts the application in line for examination and helps to establish priority over similar marks.”

 

UPDATE

On February 14 at about 4:30 EST, the Assistant Commissioner for Trademarks at the USPTO released a revised Examination Guide for Trademark Examiners. The Assistant Commissioner’s statement read in part:

The USPTO has recently heard concerns from some stakeholders regarding the potential for misuse of owner email addresses for owners represented by an attorney. In order to address these concerns, and balance them against the need for contact information concerning registrations, the USPTO is reissuing the examination guide issued February 7, 2020. The revisions to the guide remove the requirement that an applicant represented by counsel must regularly access and review the email account provided. This change clarifies that Trademark owners who are represented by counsel may provide an email address of their choice in the Trademark owner email field of Trademark filings, including an email address created specifically for this purpose by the owner or their attorney or an email address that is set up to only receive emails from the USPTO. The email address cannot be identical to the listed primary correspondence email address of the applicant’s or registrant’s attorney.

The USPTO notes that a pro se or unrepresented Trademark applicant’s or registrant’s “owner email address” will be the same as the applicant’s or registrant’s “correspondence email address” and will be the address to which the USPTO sends all notifications and communications.

The USPTO is continuing to explore additional improvements, including potentially masking email addresses, and will provide notice of any such system updates in the future.

Read full article.