Is Your Trademark Really Protecting You?

By: Monique Witter

We live in a generation where millennials are constantly finding innovative and creative ways to contribute to society through entrepreneurship. Some even go as far as applying for trademark protection through the U.S. Patent and Trademark Office (USPTO). However, the same protection they think will protect their business may be what actually ends it. 

The USPTO introduced a new rule requiring all trademark applications to include an email address for the applicant and the applicant lawyer. Like other contact information, the applicant’s information will be published on USPTO’s public database website. Trademark owners are opposed to this rule. The rule has led to digital versions of scam letters to plague brand owners. The USPTO reason for implementing this rule is to further digitize trademark proceedings to ensure that the agency can still email applicants if they are no longer represented by their attorney. However, trademark lawyers have reacted negatively to this rule. Lawyers have seen their clients get hit with a deluge of scam letters aimed at duping trademark owners into paying fake fees. The mailing address used for those letters are pulled from the same database in which the USPTO will now feature email address.

This rule has invoked a furious reactions from other U.S. trademark counsels. U.S. trademark counsel claims that the USPTO is not considering the privacy of its users, especially in light of new data protection and privacy laws in California (California Consumer Privacy Act) and the European Union (General Data Protection Regulation). According to attorney Stacy J. Grossman, “I appreciate the trademark office’s efforts to prevent fraud, and its need to have necessary information to contact trademark owners. However, I don’t understand why this information has to be published in a public database, and why the failure to include a proper email address could cause a trademark applicant to lose its filing date.”

            Attorney Peter J, Riebling reiterates these issues by noting that the issue is more problematic for well-known public figures. “We have heard from numerous counsels overseas who represent celebrity clients, who are genuinely concerned about the privacy aspects, and the extra burden of having to file a petition to the director of the USPTO for a special waiver of the rule. Yes, a petition may be filed to redact the applicant’s email address in the TSDR documents tab in an ‘extraordinary situation’. And yes, an applicant being a celebrity – and the related privacy and safety concerns – will likely qualify as an extraordinary situation to waive the rule as allowed under TMEP (Trademark Manual of Examining Procedure) §1708. But is not every applicant a ‘celebrity’ in some way or form, if even in their own mind?  What is the legal test the director will use for who is and not a celebrity? Where is the line?”

            In response to the criticism, the USPTO will allow for trademark applicants to create a “unique” email address for dealing with the agency. The new filing released by the USPTO stated “to avoid receiving unsolicited communications at a personal or business email address, applicants and registrants may wish to create an email address specifically for communication and correspondence related to their trademark filings at the USPTO.” The USPTO responded to stakeholders’ concerns regarding the potential for misuse of owner email addresses and for owners represented by attorneys. 

The USPTO responded “in order to address these concerns, and balance them against the need for contact information concerning registrations, the USPTO is reissuing the examination guide. The USPTO is continuing to explore additional improvements, including potentially masking email addresses, and will provide notice of any such system updates in the future.” 

Bill Donahue, After Backlash, USPTO Trying To Hide TM Email Addresses, Law 360, (February 11, 2020), https://advance.lexis.com/document/?pdmfid=1000516&crid=10e9a042-caaf-4c2f-9f2e71e5cf73873a&pddocfullpath=%2Fshared%2Fdocument%2Flegalnews%2Furn%3AcontentItem%3A5Y7J-SBN1-F30T-B05R-00000-00&pddocid=urn%3AcontentItem%3A5Y7J-SBN1-F30T-B05R-00000 00&pdcontentcomponentid=122080&pdteaserkey=sr5&pditab=allpods&ecomp=spnqk&earg=sr5&prid=adad6bc3-12f4-4c9d-b0ee-1130ec9833c1.

 Liz Brodzinski, IP Alert | USPTO Trademark Rule Changes: Electronic Filing, Email Addresses and More, (February 20, 2020) https://bannerwitcoff.com/ip-alert-uspto-trademark-rule-changes-electronic-filing-email-addresses-and-more/.

Tim Lince, USPTO urged to halt applicant email requirement following revolt by trademark attorneys, (February 10, 2020), https://www.worldtrademarkreview.com/governmentpolicy/uspto-urged-halt-applicant-email-requirement-following-revolt-trademark.