Earlier this week, one hundred ninety-nine trademark practitioners wrote to the Assistant 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.

Readers will recall my recent blog post where my client wanted to renew a trademark registration, but my client did not want to let the Trademark Office start using a street address for postal correspondence.  My client wanted the USPTO to continue using a post office box for postal correspondence, just as the USPTO had done for the past decade.  After several months of trench warfare, the Trademark Office blinked.  The Trademark Office has given up on trying to deny our client the ability to use its post office box, and we have our renewal.  We won, but it is unfortunate that it took months of trench warfare and a lot of time and money to win. Continue reading →

I dropped off a Federal Express courier package just now.  Inside is this letter to Meryl Hershkowitz, the Acting Commissioner for Trademarks.  You can track the package here.  Barring some surprise it should be delivered at the Trademark Office tomorrow (Wednesday, February 12) by 10:30 AM.

The substantive content of the letter will be no surprise to the Acting Commissioner, because I emailed a PDF of it to her yesterday as you can see here.  In other words she and her colleagues have already had twenty hours to consider the substantive content of the letter.  But what will be different when the courier package arrives tomorrow is that the Acting Commissioner and her colleagues will have an opportunity perhaps for the first time to see how many signers we ended up with (one hundred and ninety-nine) and how many trademark applications they collectively filed and/or prosecuted to issuance in the past decade (one hundred ninety thousand) and how much money they have collectively paid to the USPTO in the past decade (one hundred million dollars).

She will also see the names of the signers.  My guess is that she and her colleagues will recognize many names of trademark practitioners whom they respect and have known for many years, indeed decades.  My guess is that she and her colleagues will recognize names of law firms from which some of the signers are drawn.  

There are not words sufficient to express how honored I feel to be part of this online community of trademark practitioners who gave of their time and their energy and their professional reputations to tell the Trademark Office things that perhaps the Trademark Office did not want to hear.  

The document triggering this letter is an Examination Guide that the Trademark Office made public on the evening of last Thursday, February 6. The document revealed for the first time some measures said to be planned to take effect a mere nine days later, on Saturday, February 15.  The honor that I feel being part of this online community of trademark practitioners is only made stronger by the realization that the signers managed to accomplish this drafting and revising and finalizing and signing in a mere three days.  This leaves a few days remaining between now and February 15 during which, it is hoped, the Assistant Commissioner and her colleagues may revisit and perhaps even revise or postpone the plans set forth in the February 6 document.