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.