New proposed trademark rules for the United States

Trademark law in the United States is governed at both the state and federal level. A trademark owner can file for trademark registration at both the state and federal level. Because of the interconnected nature of the world, most trademark owners for products do not bother with registering their trademarks in each of the 50 states. Trademark owners typically focus on trademark registration with the United States federal government because state trademark registration would duplicate many features of federal trademark registration . The agency in the United States federal government that handles trademark registration is the United States Patent and Trademark Office. When an agency of the United States federal government wants to change its rules, the agency must publish the new proposed rules, in the Federal Register, to give the public an opportunity to comment. The rules or regulations of a federal agency are different than laws, federal agency rules are subordinate to laws but both laws and rules are enforceable.

On May 30th 2018 the United States Patent and Trademark Office published some new proposed rules for the registration of trademarks.

The United States Patent and Trademark Office proposes to amend the Rules of Practice in Trademark Cases and the Rules of Practice in Filings Pursuant to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks to mandate electronic filing of trademark applications and submissions associated with trademark applications and registrations, and to require the designation of an email address for receiving United States Patent and Trademark Office correspondence. This proposed rule would further advance the United States Patent and Trademark Office’s Information Technology strategy to achieve complete end-to-end electronic processing of trademark-related submissions, thereby improving administrative efficiency by facilitating electronic file management, optimizing workflow processes, and reducing processing errors.

The United States Patent and Trademark Office proposes to revise the rules in parts 2 and 7 of title 37 of the Code of Federal Regulations to require electronic filing through the United States Patent and Trademark Office’s Trademark Electronic Application System of all trademark applications based on section 1 and/or section 44 of the Trademark Act, 15 U.S.C. 1051, 1126, and submissions filed with the United States Patent and Trademark Office concerning applications or registrations. This electronic filing requirement would include all responses to office actions and other correspondence with the United States Patent and Trademark Office.

The reason for the proposed rule change is that, even though 99% of trademark applications are submitted electronically, only 87% are completed electronically. The 12% difference still involves paper submissions to the United States Patent and Trademark Office to complete the trademark registration process.

The United States Patent and Trademark Office has already implemented a filing fee structure to encourage the use of the Trademark Electronic Application System. The fees for electronically file trademark applications would remain the same, paper submissions at any point in the trademark application process would trigger higher fees.

The United States Patent and Trademark Office also allows the trademark application to include an email address for correspondence and requires a physical mailing address. Presently if an email fails than the United States Patent and Trademark Office will mail a paper copy to the applicant. The new rules will require both a physical mailing address and an email address. If an email to the trademark applicant fails, the United States Patent and Trademark Office will not mail a paper copy. The new rules would require the trademark applicant to check the Trademark Electronic Application System for updates which were not received via email and to respond within statutory deadlines. The United States Patent and Trademark Office has granted extensions to deadlines when there is a verified issue with the Trademark Electronic Application System and would continue to grant extensions on a case by case basis.

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