The U.S. Patent and Trademark Office (USPTO) has issued new guidelines governing electronic filing and communications with attorneys and trademark owners. These guidelines will be effective on February 15, 2020.
The goal of the USPTO is to go completely paperless. The most relevant (and alarming) requirement is that all new applications, prosecution and enforcement actions filed before the USPTO, including International Registrations filed through the USPTO, MUST include an in-house email address where the USPTO can send correspondence in addition to the outside counsel’s email address.
We are recommending that clients set up a new email address, such as email@example.com, to receive these emails. We are anticipating an onslaught of junk or scam emails that will also be arriving at this inbox as these addresses are part of the public record. We don’t recommend using any existing email address that currently receives docketing information to avoid overloading those email inboxes with a flood of material.
We hope that after a short period, the USPTO will rethink this requirement. In the meantime, trademark owners are forced to deal with the potential fallout from this new guideline.
If you have any questions or would like to discuss, please feel free to contact your Lane Powell attorneys.
Before proceeding, please note: If you are not a current client of Lane Powell PC, please do not include any information in this email that you or someone else considers to be confidential or secret in nature. Prior to the establishment of a lawyer-client relationship, unsolicited emails from non-clients containing confidential or secret information cannot be protected from disclosure.