Rob LeBlanc in Intellectual Property Magazine: Email Fail?

04/01/2020

Haynes and Boone, LLP Partner Rob LeBlanc commented to Intellectual Property Magazine (IPM) about a new mandatory electronic filing rule from the U.S. Patent and Trademark Office (USPTO) that has unnerved some in the U.S. trademark industry.

The new filing rule relates to email communications, forcing applicants to provide a valid email address that will be displayed on the Office’s website. IPM outlines the issues that could arise and what the Office could do to offer solace to concerned users.

Here is an excerpt:

Already, there is a plethora of scammers accessing USPTO records to send fraudulent letters to trademark applicants, claiming to be the Office and demanding payment. Many feared this would freefall as the system went online, as all communication with the Office is now made in electronic form, except in “limited circumstances.”

Since the rule’s implementation, the outcry [from the trademark bar] has prompted a revision of the rule – the Office said it will be removing the requirement that an applicant represented by counsel must regularly access and review the email account provided.

The Office said the change “clarifies that trademark owners who are represented by counsel may provide an email address of their choice in the trademark owner email field of trademark filings, including an email address created specifically for this purpose by the owner or their attorney or an email address that is set up to only receive emails from the USPTO.”

Haynes and Boone’s Robert LeBlanc … notes that [even with this rule change, privacy concerns remain for applicants because] “a substantial portion of trademark filings are made by legal practitioners who are not trademark specialists.”

He suggests that many general practitioners “will not appreciate the privacy concerns implicated or risk of potential scams which they are subjecting their clients to by inserting a personal email address.”

LeBlanc states that the Office’s [general statement] on potential improvements to the rule in the future [including potentially masking applicant email addresses] “is not sufficient.”

He argues that the Office “is clearly aware of brand owners’ concerns” and notes the revisions to the examination guide as an example of that awareness.

“[The Office] could easily have delayed the implementation of these rules to allow time to change the back-end technology to hide the ‘trademark owner’ email field from the public application forms and only allow this information to be accessible to the office,” he adds.

This is the second large-scale change the Office has made in a year, following the rule change related to foreign filings. With that being said, is the office doing too much, too quickly?

LeBlanc seems to think so, as he says the rollout of these rules “is too fast.”

He notes that the revised exam guide was issued on 14 February with a rollout of 15 February.

He suggests that there would be some value to slowing things down “so that the trademark bar is able to timely absorb the changes and provide feedback that benefits both the office and brand owners.”

To read the full article, click here.

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