A new rule regarding electronic trademark application submissions will take effect on February 15, 2020. To ensure that your submissions to the U.S. Patent and Trademark Office (USPTO) are accepted, it is important to understand the new requirements.
New E-Filing Requirements
Under the USPTO’s final rule, trademark applicants and registrants will be required to file trademark applications and related documents using the Trademark Electronic Application System (TEAS). The USPTO’s goal is to make the trademark registration process entirely electronic.
The rule also requires the designation of an email address for receiving USPTO correspondence concerning these submissions, which will be either that of the applicant or registrant (if unrepresented) or an authorized attorney. Trademark applicants and registrants must also provide and maintain an accurate postal address to ensure that the USPTO can contact them if their email correspondence address doesn't work.
Exceptions to E-Filing Requirement
There are some exceptions to the requirement to file electronically through TEAS. One involves submissions under the Trademark Law Treaty (TLT) and the Singapore Treaty on the Law of Trademarks (STLT). Nationals of TLT members that are not also members of STLT at the time of submission of the relevant document are not required to file electronically or receive communications from the USPTO via email.
The rule also allows for physical specimens to be submitted separately when it is not possible to submit them using TEAS given the nature of the mark. For instance, if the application or registration is for a scent or flavor mark, because the required specimen must show use, or continued use, of the scent or flavor, it cannot be uploaded electronically. In that situation, the applicant may submit the application through TEAS and indicate that it is mailing the specimen to the USPTO.
An applicant or registrant may file a petition to the Director requesting acceptance of a submission filed on paper in three situations: (1) when TEAS is unavailable on the date of the deadline for the submission; (2) when the party timely filed a paper submission, but is unable to resubmit the document electronically by the deadline; and (3) when an extraordinary circumstance prevented the party from submitting the document electronically.
Going forward, trademark owners should regularly monitor the USPTO’s electronic systems, particularly after filing a submission to the USPTO. It is also important to keep your contact information up-to-date.
If you have questions, please contact us
If you have any questions or if you would like to discuss the matter further, please contact me, Kristin Garris, or the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.