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trademark practitioners sent a letter to the Acting Commissioner,  urging that this requirement of the Exam Guide be withdrawn.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.

7 Replies to “A response from the Trademark Office on applicant email addresses”

  1. For maybe the first time ever, I have to admit that the patent side handles this much more effectively. Now that 2-factor login and MyUSPTO accounts are required for trademark attorneys, why can’t we make use of customer numbers? It would/could address this crazy email situation as well as the owner address issues.

    Why should we have to jump through all of these email hoops? Are my sole proprietors going to be setting up new email addresses for the possibility of receiving USPTO correspondence? Unlikely…that’s what they pay me to do. And most of them don’t know how to set up an additional email address. For the ones that actually do set up a new address, are they going to set up special filters to avoid spam? That suggestion is laughable. For some of them, doing so might even incur added expense, based upon the type of email account to which they subscribe. It seems unjust to require an added expense above and beyond the government’s standard fees just to use the governments e-filing system FOR THE GOVERNMENT’S CONVENIENCE.

    And I cannot wait to see how many non-billable side questions I get in response to USPTO correspondence before I have had a chance to send off a reporting letter. And asking me whether the bill they just got from the Trademark National Office is legit. Etc.

    Use of CNs would be so much more effective AND THEY ALREADY USE THIS TECHNOLOGY. Does anyone from patents ever talk to anyone from TMs over there at the USPTO? I would love to know if CNs were even considered and if so, why they did not go in that direction. It certainly would make everything easier form the perspective of the USERS OF THE SYSTEM.

  2. Oh, and another thing. If my firm were set up INDIVIDUAL email accounts that forwarded client specific USPTO correspondence to individual clients, I’m pretty sure those would be disabled immediately upon end of representation.

  3. Just finished reading the four-page, 28Feb2020 attempted defense by Acting Commissioner for Trademarks Meryl Hershkowitz. It avoids several key issues.
    1. Why does the PTO-Tm consider an applicant/registrant/party’s representation by an attorney to end at registration/maintenance end?
    2. Where is the empirical data supporting what applicants/registrants actually do, when they consider representation to end.
    3. Where is the empirical data on current applicant/registrant practice and preference wien the representing attorney is a solo, non-solo.
    4. Where is the empirical data on applicants/registrants who have only a single email address.
    5. At least in some states, an attorney has an ethical duty to ensure relevant communications with the client. Some states, including Illinois, have instituted explicit requirements that _solo_ attorneys have explicit plans and procedures for communication with clients and ensuring deadlines are not overlooked in case of death or disability of the solo.
    6. For a non-solo practice, the non-disabled, non-dead attorneys likely have both ethical and financial/malpractice duties to maintain communication with IP clients for whom a now disabled/dead associated attorney is no longer practically able to communicate with the client.
    7. Where is the empirical, rational estimates of the costs for the various types of applicants/registrants (such as individual, business entity, etc) and various attorney forms (solo, not-solo).
    8. There are likely other empirical that likely ought to be presented if the PTO-TM want to attempt to rationally justify its new email rule.
    9. The parallel issues for domicile, where do you sleep at night, remain to be addressed.

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