Updated Exam Guide for mandatory electronic filing

by John Roberts on February 14, 2020

New exam guide effective February 15, 2020
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Trademark Alert

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Rulemaking for mandatory electronic filing

On May 30, 2018, the USPTO issued a notice of proposed rulemaking requiring electronic filing and communications with the USPTO in Trademark registration matters. Following the public comment period and careful consideration of public feedback, the USPTO issued a final rule on July 31, 2019. A public webinar was held on December 10, 2019 to inform the public about the rule. The mandatory electronic filing rule will go into effect on February 15, 2020, at which time all communication with the USPTO in Trademark matters will be electronic, except in limited circumstances. This means trademark applicants and owners will need to keep valid electronic contact information on file with the USPTO for the life of their registration.

Revised exam guide

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.

Here is the revised Mandatory Electronic Filing and Specimen Requirements examination guide.

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