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Feb 2020
14
February 14, 2020

Owner Email Addresses Required for U.S. Trademark Filings Beginning February 15, 2020

The U.S. Patent & Trademark Office (Trademark Office) recently implemented a new rule effective February 15, 2020, for trademark filings. The rule requires that all trademark filings, including new trademark applications, list the trademark owner’s email address. This email address:
 
  • Is required even if the owner is represented by an attorney;
  • Must be different than the attorney’s address;
  • Must be one that the owner has access to and can regularly monitor; and
  • Will be published in the Trademark Status and Documents Retrieval (TSDR) system under the “Documents” tab.

We understand and appreciate that this requirement causes considerable concern for our clients, including:
 
  • The increased risk to the trademark owner’s privacy;
  • The increased vulnerability of the trademark owner to scammers; and
  • The risk of data mining and the exposure of users to spammers and to spear phishing.

Comments by U.S. trademark counsel to the Commissioner for Trademarks about this rule are heavy, and the Trademark Office has yet to finalize whether—or to what extent—it may mask the owner’s email address. Notably, the Trademark Office states that it has already taken into account any implications that the European Union’s General Data Protection Regulation (GDPR) may have on implementation of this rule.

Importantly, if we at Warner Norcross + Judd are your authorized representative before the Trademark Office, the Trademark Office will still use our trademark email address (e.g., trademarks@wnj.com) for its official correspondence. However, an owner’s email address is still required. Accordingly, we will be requesting an appropriate owner’s email address for all of your future filings. In the meantime, if you are a trademark owner, you may want to create an email address to be used for all U.S. Trademark Office filings, for example: trademarks@yourdomain.com.

We will keep you posted of any additional developments. If you have questions or concerns about this new trademark filing rule, please contact Mary Bonnema, Catherine Collins, Scott Keller, Jim Scott, Amber Underhill or your Warner attorney.

NOTICE. Although we would like to hear from you, we cannot represent you until we know that doing so will not create a conflict of interest. Also, we cannot treat unsolicited information as confidential. Accordingly, please do not send us any information about any matter that may involve you until you receive a written statement from us that we represent you.

By clicking the ‘ACCEPT’ button, you agree that we may review any information you transmit to us. You recognize that our review of your information, even if you submitted it in a good faith effort to retain us, and even if you consider it confidential, does not preclude us from representing another client directly adverse to you, even in a matter where that information could and will be used against you.

Please click the ‘ACCEPT’ button if you understand and accept the foregoing statement and wish to proceed.

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