Efile or Refile

E-File or You'll Have to Refile: Trademark Filings Gone Digital

New USPTO rules make electronic filing mandatory and update requirements for specimens of use.

Statistics from 2018 reveal that .03% of trademark applications were paper filed. As such, effective February 15, 2020, paper trademark filings are no longer an option. The United States Patent and Trademark Office ("USPTO") mandates electronic filing for new trademark applications and all other submissions associated with trademark applications and registrations. Submissions must be made via the USPTO's online Trademark Electronic Application System ("TEAS"). Additionally, applicants and their attorneys must provide and maintain a valid email address for receiving USPTO correspondence and a postal address if the email address fails to work. Except for limited circumstances, paper and fax submissions will no longer be accepted. Exceptions include international treaties, specimens for scent, flavor or similar non-traditional marks, and postal service interruptions or emergencies.

The goal of mandatory electronic filing is to have end-to-end electronic processing of applications and registrations. Not only will this speed up the processing of documents filed at the USPTO, but it will increase the USPTO's efficiency and improve the accuracy of the Trademark Register. Accordingly, as of February 15, all new applications must comply with the above requirements in order to receive a filing date, and all other submissions will only be accepted if filed electronically.

In addition, the rules of practice regarding specimens of use have been updated to conform with existing statutory requirements and precedential case law. Specifically, for goods, the specimens must show use of the mark on the goods, on containers or packaging for the goods, on labels or tags affixed to the goods, or on a display associated with the goods (which must be of a point-of-sale nature). For services, the specimens must be used in the sale of the services, including use in the performance or rendering of the services, or in the advertising or marketing of the services. Furthermore, the specimens must show a direct association between the mark and the services. Significantly, webpage specimens submitted as proof of use must include the URL and access or print date. Specimens that do not meet these requirements, or that appear to be mock-ups, will be refused.

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