The United States Patent and Trademark Office (USPTO) just issued new rules that directly affect trademark owners. Going forward, trademark applicants, registrants, and parties to a proceeding before the Trademark Trial and Appeal Board will need to provide their email address in USPTO filings. The USPTO enacted this rule to ensure that trademark owners will receive USPTO correspondence if their attorney of record withdraws and no new attorney is appointed. The USPTO said it does not intend to send correspondence directly to trademark owners represented by attorneys and will instead continue to direct all correspondence to the attorney of record in those cases.
Unfortunately for trademark owners, unscrupulous third parties will likely take advantage of this new rule and start to use the email addresses to spam trademark owners, as they will be publicly available on the USPTO website. Trademark owners are already besieged with countless unsolicited and deceptive mailings at the physical addresses provided in their USPTO filings, all designed to appear as legitimate correspondence, but soliciting payment for unnecessary or redundant services. Indeed, the USPTO maintains an extensive list of entities that beset applicants and registrants with misleading offers and notices at https://www.uspto.gov/trademarks-getting-started/caution-misleading-notices.
The USPTO is cognizant of the potential for increased spam due to the implementation of this rule and adopted a countermeasure. While the provided email address will be publicly available on the USPTO website, only attorneys' email addresses will appear on the most easily accessible (and easily scraped) "status" page if trademark owners are represented by counsel. In such cases, trademark owner email addresses will only appear within documents available on the "documents" page. The USPTO hopes this will reduce spam, but only time will tell.
We recommend that trademark owners set up an email address specifically for the purpose of complying with the rule. It must be one that the trademark owner can directly monitor and cannot be for outside counsel—U.S. or foreign. Although the email address will likely receive spam, the USPTO will not use it for official correspondence so long as the trademark owner is represented by an attorney. Further, all official correspondence from the USPTO should come from "uspto.gov," which can be used to filter legitimate correspondence. Nonetheless, as with physical mailings, trademark owners should ask their attorneys about any emails they receive that appear to be real.
Keywords: Intellectual Property, Litigation, Regulatory
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Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.
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