Luxembourg: USPTO Pushes Back The Effective Date Of Electronic Trademark Filing Rule

Last Updated: 8 November 2019
Article by Dennemeyer  

Staying on top of agency rules is important to ensure that your application results in the registration of your trademark and is not rejected by the trademark office. In the U.S., a new rule regarding electronic trademark application submissions is coming up soon, but it has recently been delayed to provide applicants and the USPTO with more time to prepare.

In early October, the U.S. Patent and Trademark Office published a final rule regarding the agency's upcoming mandate requiring electronic filings for trademark applications and all associated submissions filed with the USPTO. Although this rule was scheduled to become effective on October 5, 2019, the USPTO recently changed this date, making it effective on December 21, 2019.

The final rule creating the mandate regarding electronic trademark filings was published by the USPTO in late July of this year. The rule requires all trademark applications and related submissions to be made electronically through the USPTO's Trademark Electronic Application System (TEAS). Along with trademark registration applications, this rule affects applicants' submission of office action responses, international applications, maintenance filings, subsequent designations and direct filings related to extensions of protection through the global registration system.

With this rule, the USPTO intends to maximize the end-to-end electronic processing of all aspects of the trademark registration process so that all correspondence between the USPTO and the party applying for trademark registration is conducted without printed or paper communications. While more than 99 percent of all trademark applications filed with the USPTO are electronically registered, the agency notes that 12 percent of applications are prosecuted with paper processing at some point. Among the various benefits touted by the USPTO as a reason to mandate electronic trademark filings is a reduced risk of application processing errors. The Office also seeks better administrative efficiency, as paper submissions must be manually scanned. Further, the Office must engage in costly manual data entry to update the information contained in paper documents.

Electronic and physical address for USPTO correspondence

Besides the electronic submissions requirement, the new rule will also expect applicants to designate an email address to receive USPTO correspondence. The email must belong to the registrant or, if unrepresented, an authorized attorney that is acting on the registrant's behalf. The new rule still requires applicants, attorneys and parties to Trademark Trial and Appeal Board (TTAB) proceedings to maintain a physical postal address designated to receive mail correspondence, if necessary. These addresses will be used in limited situations, such as when the USPTO sends a physical registration certificate or if an appointed practitioner is suspended by the agency and is no longer designated as the correspondent for a particular application.

The high percentage of trademark applicants who avail themselves of electronic processing options through TEAS has led the Office to believe that the vast majority of its relevant stakeholders are comfortable with electronic trademark filings. Along with the reduction in electronic filing fees, the USPTO also increased paper-processing fees in January 2017 both to encourage more filing through TEAS as well as to bring the user fees of paper processing closer to the costs for such filing activities that are incurred by the Office.

While electronic filings are clearly preferred under the new rules, the USPTO will still accept paper submissions in limited situations. This includes the USPTO's obligations under the Trademark Law Treaty (TLT) to accept paper submissions from nationals of other TLT member countries. Trademark applicants may also file a petition to have the USPTO accept a paper submission in situations where TEAS is unavailable on the day of a submission deadline or for similar extraordinary circumstances. The rule also allows for the mailing of physical specimens when it is impossible to send those specimens electronically due to the nature of the mark, such as scent or flavor marks. This exception does not extend to sound marks, which can be attached as an electronic file to a TEAS submission.

Start exploring the requirements of filing electronically through TEAS

In its recent rule announcing the delay of the effective date for mandating electronic trademark filings, the USPTO acknowledged that the reason for the date change was to give the Office additional time to prepare its internal processes required for the implementation of the new rule. The USPTO also stated that it wanted to provide the public with more time to fully comprehend the new requirements.

The USPTO is allowing for a "grandfather" effect on trademark applications and post-registration maintenance documents that have been filed on paper prior to the effective date of the rule. Such submissions will not require an email address for applicants and their attorneys. However, once the rule becomes effective, TEAS forms will be updated to require email addresses from applicants and their attorneys, so if a grandfathered applicant decides to file an electronic submission through TEAS after December 21, email addresses will have to be provided to the USPTO.

Security improvements

The USPTO has also improved security processes associated with trademark filings. In particular , both TEAS and the international version of TEAS (TEASi) will require applicants to setup a two-factor authentication login that must be used to access the system starting on October 26. While this two-step authentication adds to the workflow for trademark applicants, the requirement is being added to prevent malicious unauthorized access to trademark applicant accounts on TEAS.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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