Month: February 2020

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A response from the Trademark Office on applicant email addresses

It is recalled that on February 6, 2020, the Acting Commissioner for Trademarks published an Examination Guide 1-20.  The Exam Guide set forth for the first time a requirement that trademark applicants and registrants reveal their personal email addresses to the Trademark Office, even in the case of an application that is represented by a US attorney.  According to the Exam Guide, the Trademark Office would then publish the email address for use by spammers. The Exam Guide gave nine days’ notice of this change which would take place on Saturday, February 15.

One hundred ninety-nine trademark practitioners sent a letter to the Acting Commissioner,  urging that this requirement of the Exam Guide be withdrawn.  You can see the letter here.  

In my blog article Trademark Office blinks on applicant email address, I reported that the Trademark Office backed down.  This happened at 4:32 PM on the Friday afternoon before the Saturday effective date of the objected-to email requirement. 

Instead of requiring that the email address revealed to the public be the personal email address of the applicant (an email address “regularly accessed and reviewed” by the applicant personally), the email address would be permitted to be any old email address of the applicant’s choice.  This was communicated in a revised Examination Guide 1-20 dated February 14, 2020.  

Now comes a letter from Acting Commissioner Hershkowitz in further response to the letter from the one hundred ninety-nine practitioners.  You can read the Acting Commissioner’s letter here.

I am posting the letter now so that everyone can see it as soon as possible.  Later I will publish a blog article discussing the letter in more detail.

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A problem with USPTO’s new trademark CAR form

On February 15, 2020 the US Trademark Office scrapped its old forms for trademark address changes and revocations of powers of attorney and granting new powers of attorney.  In their place, the Trademark Office rolled out a new form called “Change Address or Representation Form”.  Part of the Trademark Office’s reason for changing things was, of course, the need to force any applicant or registrant to cough up an email address, even if the applicant or registrant is represented by US counsel.  The idea I guess is that this single form would be so flexible as to be able to handle any and all functions previously served by the half a dozen or so previous forms.  

Anyway, there’s a Big Problem with the form.  If you are an applicant and you want to fire your attorney, and proceed pro se, the form’s instructions say you can’t do it.  If you are an applicant and you want to fire your attorney, and hire a new one, the form’s instructions say you can’t do it. Continue reading “A problem with USPTO’s new trademark CAR form”

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How much should you say in your Petition to Cancel?

I am reminded over and over again of the striking generosity and collegiality of the trademark practitioners who hang out in the e-Trademarks listserv.  Recently one member of the listserv asked (paraphrasing):

Our client’s trademark application received a Lanham Act § 2(d) refusal based on a senior registration which was last renewed in 2012.  We hired a trademark investigator who reported being unable to find any evidence that the senior mark is in use.  Our client wants to proceed with a Petition to Cancel that registration the Trademark Trial and Appeal Board.

Here’s the question: we have a pretty good report from the investigator regarding lack of web presence, business listings, address follow-up, etc. showing that the mark isn’t in use. Does it make sense to put any of that into the pleading, by factual allegation, attaching an affidavit, or otherwise?  I frankly don’t expect a response but anything’s possible.

Many members of the listserv offered comments about how much to put into the Petition.  I’ll summarize some of the comments here, and I will add a couple of thoughts.  Oh, and if you are a trademark practitioner, and if you have not yet joined the e-Trademarks listserv, what’s your excuse?  Maybe you should join.

Continue reading “How much should you say in your Petition to Cancel?”

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Letter has been sent to the Commissioner for Patents about DAS

A letter captioned THIRTY-ONE PATENT PRACTITIONERS got mailed today to Drew Hirshfeld, the Commissioner for Patents.  You can see the letter here and you can track its progress through the US Postal Service here. The letter urges the USPTO to make four changes in its ways of handling the DAS (Digital Access Service) system administered by WIPO. Continue reading “Letter has been sent to the Commissioner for Patents about DAS”

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Twenty-one patent practitioners comment on USPTO rulemaking about Foreign Filing Licenses

(Update prompted by commenter Brooke:  Yes the USPTO did what the Twenty-One Patent Practitioners asked.  The did walk back the scary Federal Register notice.  You can read about it here.)

On January 30, 2020 the USPTO published a Notice of Proposed Rulemaking to fix what it thinks is a problem with its Foreign Filing License rules, 37 CFR § 5.11 et seq.  

The background to all of this is that in the spring of 2016, WIPO announced that soon its ePCT system would be available as a way to generate ZIP files for use in filing PCT applications in EFS-Web (at RO/US).   Shortly after WIPO announced this imminent new feature of ePCT, on May 6, 2016 the USPTO published a Federal Register notice giving very scary warnings to patent practitioners about the use of the ePCT system to generate such ZIP files.  The May 6, 2016 Federal Register notice had the unfortunate effect of scaring many US patent practitioners away from making any use at all of the ePCT system.

My best guess is that nobody will file any comment suggesting any change in the wording of the proposed rule change.  

The main problem that needs fixing, I suggest, is not so much the wording of the FFL rules themselves, but rather the fact that this Federal Register notice dated May 6, 2016 has been dangling in front of US patent practitioners for more than three years now, continuing to give its very scary warnings about the use of the ePCT system in connection with filing PCT applications in EFS-Web.  The main problem that needs fixing is that when the USPTO promulgates its new FFL rules some time after March 30, 2020, as it nearly surely will, USPTO needs to expressly walk back the May 6, 2016 Federal Register notice.  The opportunity to do this will present itself when the USPTO publishes its Federal Register notice promulgating the Final Rule.

On February 8, a group of twenty-one patent practitioners filed a comment in this proceeding.  You can see it here.   A main point in that comment is to remind the USPTO of the need for this express walk-back of the May 6, 2016 FR notice.

A second point made in the comment is to urge the USPTO to make its procedure for updating of bibliographic data in pending US patent applications more user-friendly, for example along the lines of the Rule 92bis “action” in ePCT.

The comment period closes on March 30, 2020.  My hope is that readers will file their own comments to the USPTO’s rulemaking proceeding, which you can do here.  One easy way to comment, if you find yourself in agreement with the twenty-one patent practitioners, is simply to file a comment adopting the recommendations of that comment.

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Trademark Office blinks on applicant email address

Earlier this week, one hundred ninety-nine trademark practitioners wrote to the Acting Commissioner for Trademarks expressing concerns about the Examination Guide 1-20 dated February 6, 2020 that would require trademark applicants to reveal their personal email addresses to the USPTO, which would then publish those email addresses.  You can see the letter here.  The bad thing that was imminent was that on Saturday, February 15, 2020, trademark applicants would have to do this.

The Assistant Commissioner blinked.  This happened at about 4:32 PM on Friday, February 14, 2020, 28 minutes before closing time for the week at the USPTO.  Now there is a revised Examination Guide 1-20.  You can see the February 14, 2020 version of Examination Guide 1-20 here.

Here is how the Assistant Commissioner characterized the revision:

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.

The trademark community has averted at least some of the great harm that would have flowed from this ill-conceived Examination Guide, but at great cost.  One of the costs was that one hundred ninety-nine trademark practitioners had to put aside their regular activities for much of Sunday and much of Monday to draft and revise and sign this letter.