On July 31, 2019, the United States Patent and Trademark Office ("USPTO") published final rules changes
that mandate electronic filing. This new rule becomes effective on October 5, 2019. There are limited exceptions, so it will apply to virtually everyone conducting business with the USPTO regarding a trademark matter.
Going forward, Trademark Office filers will be required to file trademark applications and related documents online using the USPTO's Trademark Electronic Application System ("TEAS"). Filers will need to provide an accurate email address and street address for receiving correspondence from the USPTO about applications or registrations.
The aim of the new rule is end-to-end electronic processing of applications and registrations for faster processing and fewer errors. Applications, maintenance documents, and any document or submission related to an application or registration must be filed through TEAS, and any correspondence from the USPTO regarding applications or registrations will be sent by email. With limited exceptions, paper and fax submissions will no longer be accepted. Other than informal communication, e.g., with an examining attorney, email submissions from applicant and registrants are not accepted.
Specimen rule changes involve updating Rule 2.56 to reflect electronic filing realities, requiring the URL and the access or print date of all webpage specimens for goods or services; and the label and tag specimens to be displayed with the mark actually attached to the goods or packaging, for specimens to be acceptable.
Justification for the rule change is to achieve efficiency and reduce costs, as paper submissions are believed to hinder efficiency and accuracy and are more costly. Paper handling requires manual processing as opposed to electronic submissions which generally do not. With preparing and submitting an application or related document through TEAS, documents may be more likely to be complete and take less preparation time than mailing a paper document. Also, by using TEAS, a submission will be processed faster, with fewer data-entry errors and eliminated risk of lost or missing papers.
While most law firms and in-house trademark departments have been filing applications and related documents through TEAS for many years now, there are still many individuals and small business applicants that are unable or prefer not to file electronically. This rule change will likely impact that demographic the most and require them to upgrade Internet access and trademark office accounts if they have not already.