New USPTO Policy Regarding Applicant E-Mail Addresses Opens Applicants Up to Privacy/Phishing Concerns
The New Rule
As of February 15, 2020, the USPTO requires that all new applications for trademarks include an email address for the applicant. Previously, applicants could be listed without an email address. The USPTO has also noted that use of an email for outside counsel or a law firm is not permissible, as the applicant does not have access to those email accounts. The USPTO has made it clear that it will not be possible to submit an application for trademark after February 15, 2020 without including an email address of the applicant on the form.
Initially, the USPTO provided a list of examples of acceptable email addresses for applicants, such as: i) personal email addresses; ii) email addresses created for the purpose of communicating with the USPTO that is personally monitored by the trademark owner; iii) In-house counsel’s email address for a juristic entity owner; and iv) officer’s or partner’s individual email address for a corporate or partnership owner.
However, one day before the rule was set to be implemented, based on outcry from the community of US trademark attorneys regarding privacy and scam concerns, the USPTO walked back the requirement of acceptable emails, and allows for applicants to submit any email address, so long as it is not identical to the primary correspondence email address of the applicant’s attorney. The entire Revised Examination Guide is available here.
Any email address for an applicant provided on an application for trademark will be publicly available electronically via the Trademark Status & Document Retrieval (TSDR) system provided by the USPTO. While the applicant email address will not be listed on the status tab, it will be publicly available in the document tab.
Prior to the implementation of this new rule, applicants would only need to submit a mailing address with an application for trademark. Even with this, applicants are routinely bombarded by mailings from scammers, spammers and phishers attempting to lure applicants into submitting payments for unrelated, unnecessary or fraudulent services. Many of these mailings look genuine and appear to be sent from a federal agency, such as mailings from “Patent and Trademark Office”, “Patent & Trademark Bureau”, and “Trademark and Patent Office”. More of these examples, dozens in fact, can be found on the USPTO website related to these misleading notices. These mail based scams are rampant, and can easily fool unsuspecting clients into wiring or mailing checks to these organizations. And this is just with a physical mailing address being listed.
Now that an email address for the applicant is required, the ability to send more complex scams that are easier for the scammers to execute increases exponentially. When sent via email, scammers will be able to include links to extremely official looking websites, and accept easily submitted credit card payments or other forms of payment, including ACH or wire transfer payments online. In addition, it is much easier and cheaper to automate electronic attacks than physically mailed correspondence, meaning we would expect to see a vast increase in the number of these phishing attempts now via email.
Further, for applicants with sensitive privacy concerns, such as celebrities, public figures, or others who may want to limit the public’s access to their email addresses, such a disclosure may open them up to not only spam emails, but also other unwanted or undesirable communications. Even though an applicant can attempt to have an email address redacted from the document tab of the TSDR by filing a petition to the director of the USPTO for a special waiver of the email rule based on extraordinary situations, the email address would still be publicly available until a ruling on that petition. Given the ability to obtain this information in an automated manner using publicly available resources, the delay in the hearing of the petition would amount to there being little or no protection for such information.
The Good News
Since the USPTO has backed down from requiring an email address that is specifically accessible by the applicant/owner of the trademark, a secondary email address can be provided that is monitored by either the applicant’s counsel, or another third-party service that is familiar with these scams and can ensure the applicant does not receive these notices.
Our firm’s initial recommendation is to use a secondary email address from our firm that will act a repository for these direct-to-applicant emails. Since all official USPTO communications will go to the correspondent email address on the application, which is generally the email of the primary attorney on the application, as well as a backup general trademark matters email address, we would expect most emails going to the newly created repository to be spam.
For all trademark applicants, it is important to remember that if you have an attorney representing you, that all official communications from the USPTO will come from your attorney. Regardless of whether it is via electronic or physical mail, if it is not from your attorney, it is almost definitely a scam or phishing attempt. This is something we cannot stress enough. The USPTO will not be making any direct requests for payments, filings, monitoring services, or anything else from an applicant that is represented by counsel. If an applicant receives any communication from a third-party, they should forward it to their counsel immediately so they can report it to the necessary authorities.