When you file a trademark application, you can expect to be contacted, via regular U.S. mail, by scammers. Trademark owners often receive letters in the mail from companies with very similar names as the U.S. Trademark Office, for example, the United States Trademark Company. These letters may even have the USPTO seal on them, making the letter appear legitimate and may state that trademark owners must pay a fee to obtain a registration. However, these “registrations” may simply be a private company registration wholly unrelated to the federal trademark registration being sought by the trademark owner. Unsuspecting trademark owners will send out hundreds of dollars (or more) to these companies, thinking that they’re required to do so in order to obtain their U.S. Federal Trademark registration. These letters are scams, and the money goes straight into the scamming company’s bank account. A trademark filer never has to pay official fees to anyone outside of the USPTO to register their trademark.
On February 15th, 2020, there was a change in the filing law to streamline filing. The new Trademark Office rules state that you must file electronic trademark applications and provide an additional email address for the trademark owner, separate from the attorney and correspondence information. The owner’s email address requirement enables the Trademark Office to contact the trademark owner via email about their trademark.
When the new requirement of providing a client email address in trademark applications was made public, there was a quick response from trademark holders, who believed that this requirement would create more spam to the trademark holder. This time, however, the spam created would be in the form of emails as these email addresses would be public information so anyone could access that email address and send spam mail. Now, instead of just sending letters to the trademark owners, it was expected that the same trademark spammers that send the current snail mail letters would not start blasting emails to the corporate email address. Companies were concerned that they could be receiving dozens or even hundreds of scam emails every day.
Related: Did You Get Punk’d By a Trademark Spammer or Patent Troll?
Last-Minute Change
At the eleventh hour, to combat the blow-back, the USPTO changed the client email requirement. The email address can now be one created to communicate with the USPTO, or an attorney’s email address, separate from the personal attorney email address in the application. Under the update, the trademark applicant or attorney can create an email address specifically for communication and correspondence with the USPTO. It does not need to be personally monitored by the trademark owner. This rule became effective on February 15th, 2020.
For applicants not represented by an attorney, the same email address may be used for the owner’s address and correspondence address. This email can be set up exclusively for trademark correspondence with the USPTO. NOD suggests setting up a trademark@emailaddress.com for specific trademark application use.
It’s a bit of a mundane requirement, but it can have significant effects if it’s not done correctly.
Related: What Tom Brady, LeBron James & Ohio State University Can Teach You About Advanced Trademark Laws
Future Requirements
We suspect that there may be additional rules promulgated by the Trademark Office relating to electronically contacting the trademark applicant directly about their ownership. However, there haven’t been any new updates since the February rule change.
How is NOD Dealing With It?
We will ask the entity filing the trademark, whether they want to provide an owner’s email address, or if they prefer us to use a Neugeboren O’Dowd email address.
Although there’s not a lot to this new email rule, trademark owners should be aware of the change moving forward.
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