On February 15, 2020, the U.S. Patent and Trademark Office’s (USPTO) new rule regarding mandatory electronic filing of trademark applications went into effect. To accompany the updates, the USPTO published an examination guide, “Mandatory Electronic Filing and Specimen Requirements,” which contains additional clarification of the new requirements and its limited exceptions.
The new rule applies to everyone conducting business with the USPTO regarding a trademark matter.
The new rule requires applicants and registrants to:
File all trademark submissions electronically using the Trademark Electronic Application System (TEAS)
Provide and maintain an accurate email and domicile address for the applicant/registrant
Provide and maintain an accurate and postal address for the attorney, if one was appointed.
The requirements for acceptable specimens are also affected in the following ways:
Amends the requirements for specimens in accordance with the Trademark Act and precedential case law (updating Rule 2.56)
Requires the URL and the access or print date of all webpage specimens for goods and services
Requires label and tag specimens to be shown attached to your goods for their packaging to be accepted as specimens for goods.
In addition to the requirement to file all trademark submissions through TEAS, the following are also required:
Email address for the owner and attorney (if you have one). The two addresses .cannot be the same, and they must be updated pursuant to any changes in either of the addresses. Since the e-mail address of the applicant or registrant will be publicly viewable, as of Feb 21, the USPTO is no longer requiring an email for both the applicant and attorney.
The correspondence email address must be the applicant’s/registrant’s address or that of your attorney, and not one of a third party. To accommodate privacy concerns regarding the applicant’s domicile address, TEAS applications now.include a “mailing address” field and a “domicile address” field.
TEAS application options of TEAS RF and TEAS Regular are eliminated. You must file either as TEAS Plus or TEAS Standard.
The TEAS Plus processing fee is eliminated (it is only required for TEAS Plus applications that do not meet initial filing requirements).
Webpage specimens require URL and the access print date.
Tags and label specimens must either be shown attached to the goods or clearly show the mark in actual use in commerce (such as net weight, UPC bar code, list ingredients).
Unacceptable specimens include a photocopy of the drawing, an artist’s.rendering, a printer’s proof, a computer illustration, or a digital image.
Entity information is required for domestic partnerships, domestic joint ventures, and sole proprietorships.
The goal behind the new rule was to improve administrative efficiency by preparing and submitting an application electronically. The document is more likely to be legally complete through electronic file management and optimized workflow processes. By using the TEAS, submissions are processed faster, data-entry errors decrease and the risk of lost or missing papers is eliminated.
This rule was first published on July 31, 2019, amending the Rules of Practice in Trademark Cases and Rules of Practice in Filings Pursuant to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (84 FR 37081). As a result of the extent and complicated changes that took effect on February 15, the need for further clarification resulted in the education guide.
To understand how the new rule affects you, the professionals at Ference & Associates are your best resource for proper guidance and counsel. As your attorneys we partner with you in applying the exceptions and requirements necessary to legally proceed with your trademark now and in the future.