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Failure to Satisfy Three New Requirements Could Put your Trademark at Risk Katie Markert Barclay Damon LLP
The preceding year showcased several procedural changes related to the prosecution and maintenance of trademark filings before the United States Patent & Trademark Office (USPTO). In this article, I take a look at three seemingly benign procedural changes that are showing a lasting consequence on securing and maintaining trademark registration rights in the United States. These new procedural requirements may feel like a nuisance to trademark holders, but the USPTO’s overarching goal is to reduce the increasing number of trademark
filings with improper representations and claims and improve the integrity of the register. To accomplish this goal, the USPTO now requires trademark holders to provide an email address and disclose their domicile address, and non-U.S. trademark holders are required to hire licensed U.S. counsel. Failure to comply with these new requirements can impact a trademark holder’s ability to obtain a filing date with the USPTO and may lead to increased time and money spent by trademark holders to secure and maintain rights.
TRADEMARK HOLDER EMAIL ADDRESS Effective February 15, 2020, all filings made with the USPTO with respect to new or pending applications and registered marks must provide an email address for the trademark holder. This requirement applies regardless of whether the trademark holder is represented by U.S. counsel, in which case counsel also provides its email address. A filing date for new applications will not issue if this rule is not followed. The
