By Allison Strickland Ricketts
The USPTO reversed itself on defining what will be considered an acceptable email address for the trademark owner. In revised guidance issued on February 14, 2020 – one day before the February 15 implementation date of the new rule – it announced that trademark applicants and registrants may provide an “email address of their choice,” so long as it is not identical to the email address provided for the attorney who is listed in the application or registration. Previously, the rule required the trademark owner to provide an email address that is “accessible to and regularly reviewed by the trademark owner.” The new requirement is much less intrusive and allows trademark owners to provide the email address of intermediaries such as law firms and business affairs managers.
Q: Are the email addresses confidential?
A: At this time, no. The email address will be posted in the USPTO’s online public repository of documents filed in trademark applications/registrations. The USPTO is considering masking these email
addresses, but the timeline for this development is unknown.
Q: What correspondence will the USPTO send to the trademark owner?
A: The USPTO will continue to correspond via the email address of the appointed attorney, if there is one. The USPTO will use this new email address ONLY if the attorney is no longer handling the case. In the normal course, the trademark owner should not expect to receive any email from the USPTO, other than notices of maintenance deadlines for the registration (at the 5th year and 9th year anniversaries of the registration). However, due to the email’s inclusion in the USPTO’s online repository, the trademark
owner may receive spam and misleading solicitations from others.