USPTO rule makes electronic filing mandatory for trademark submissions

Does this new rule apply to me?

Yes, with limited exceptions, it will apply to everyone conducting business with the United States Patent and Trademark Office (USPTO) regarding a trademark matter.

Trademark applicants and registrants will be required to:

  • File online all trademark applications and documents using our Trademark Electronic Application System (TEAS).
  • Provide and maintain an accurate email and domicile address for the applicant/registrant.
  • Provide and maintain an accurate email and postal address for the attorney, if one was appointed.

See the final rule and our examination guide for an explanation of how the rule will be applied by the USPTO.

When does this new rule apply to me?

This rule is effective on February 15, 2020.

What are the goals of this new rule?

Our goal is to have end-to-end electronic processing of applications and registrations, which results in faster processing times and fewer errors. You submit your application or maintenance documents through TEAS, any submission related to your application or registration is filed through TEAS, and any USPTO correspondence regarding your application or registration is sent to you by email.

With limited exceptions, paper and fax submissions are no longer accepted. Email submissions continue to not be accepted. (Only informal communication regarding your application or registration can be done by email.)

Will requirements for acceptable specimens be affected by this new rule?

Yes, the specimen rule changes will involve:

  • Updating Rule 2.56 to incorporate statutory and case law requirements for specimens and to reflect electronic filing realities
  • Requiring the URL and the access or print date of all webpage specimens for goods or services
  • Requiring label and tag specimens to be shown attached to your goods or their packaging to be accepted as specimens for goods.

Why is this rule being put in place?

Paper submissions hinder efficiency and accuracy and are more costly than electronic submissions because they require manual processing. Electronic submissions generally do not. By preparing and submitting an application or related document through TEAS, your document is more likely to be legally complete and take less time than preparing and mailing a paper version.

By using TEAS, your submission is processed faster, data-entry errors decrease, and the risk of lost or missing papers is eliminated.

How does this rule affect me?

DOCUMENTS FILED BEFORE FEBRUARY 15, 2020

Paper or TEAS Regular

If you filed an application or registration maintenance document using TEAS Regular or on paper before February 15, 2020, you are not required to use TEAS for submissions related to that application or registration, even if those related submissions are filed after February 15, 2020. 

  • You may only file submissions on paper until either of the following occurs:
    • Your application registers or is abandoned and cannot be revived or reinstated.
    • Your post-registration filing is accepted or your registration is canceled or expires and cannot be revived or reinstated.
  • If you use TEAS to file submissions related to your application or registration, you will be required to provide an owner email address  and your attorney’s email address, if you have an attorney, and we will presume you have authorized us to use email to send official communications to you.

TEAS Plus or TEAS Reduced Fee (RF) 

If you filed an application using TEAS Plus or TEAS RF before February 15, 2020, you are required to use TEAS for submissions related to that application, even if those related submissions are filed after February 15, 2020. 

  • You will also need to maintain an owner email address and the email address of your attorney, if you have an attorney.  
  • TEAS RF will not be available after February 15, 2020. TEAS Standard will take its place.

DOCUMENTS FILED ON OR AFTER FEBRUARY 15, 2020

You are required to use TEAS to file applications, registration maintenance documents, and all related submissions.

Madrid filers under Section 66(a) cannot file an initial application using TEAS. However, all subsequent application-related submissions must be filed using TEAS.

What else is affected by this rule change?

In addition to the requirement to file all trademark submissions using TEAS, the following changes also apply:

  • Email addresses required. You will need to provide an owner email address and the email address of your attorney, if you have an attorney. Those addresses cannot be the same.
  • You must update these email addresses if there is any change in the address.
  • Correspondence email addresses restricted. The correspondence email address must be your address as the applicant or registrant if you do not have an attorney, or your attorney’s address, if you have one. The correspondence email address may not be the email address of a third party (although we’ll still provide courtesy copies for up to four designated email addresses).
  • TEAS application options eliminated. TEAS RF and TEAS Regular applications are eliminated. You must file either as TEAS Plus or TEAS Standard.
  • TEAS Plus processing fee limited. The fee is now required only for TEAS Plus applications that do not meet the initial application filing requirements.
  • Webpage specimens require the URL and the access or print date. The URL and access or print date can be shown directly on the specimen webpage itself, appearing anywhere on the page, or within the TEAS form that submits the specimen. If submitted in a later-filed response, this information must be verified.
  • Tags and labels specimens must either be shown attached to the goods or, on their face, clearly show the mark in actual use in commerce. This means that if the tag or label is not shown attached to the goods, it must include informational matter that traditionally appears on a label in use in commerce for those types of goods, such as net weight, volume, UPC bar codes, lists of contents or ingredients, or other information that is not part of the mark but provides information about the goods.
  • Unacceptable specimens listed. In addition to a photocopy of the drawing, the following are not acceptable as specimens: an artist’s rendering, a printer’s proof, a computer illustration, a digital image, or a similar mockup of how the mark may be displayed.
  • Entity information required for domestic partnerships, domestic joint ventures, and sole proprietorships

Why am I required to provide an owner email address, even if I have an attorney?

Even if you have an appointed attorney, a separate email address for the applicant  is required so that we can contact you if and/or when representation ends. If representation ends without a separate owner email address, the owner will no longer receive communications from the USPTO and runs the risk that the application or registration will abandon or expire. If you have a designated attorney, all USPTO correspondence related to an application or registration is sent to them at their stated email address. If you are not represented by an attorney, then all USPTO correspondence will be sent directly to you at your stated email address. 

Can I create an owner email address to use for the application and registration processes?

Yes. This will help you to avoid receiving unsolicited communications. If you have an attorney, the owner email address you provide cannot be identical to the listed primary correspondence email address of the attorney.

How does the trademark owner or their attorney update/change the owner email address? 

Use the new TEAS Change Address or Representation (CAR) form to make changes to the owner email address. If the owner is represented by a U.S.-licensed attorney, only the attorney can file this form.

Will my address information be viewable by the public?

Except for payment information, all personal information you submit to us, including your address and email address, will become part of a public record viewable on our website, as well as other websites that index USPTO data, such as Google®. We are required by law to collect owner domicile information, and treaties and longstanding USPTO regulations require us to publish or otherwise make available owner address information as a means to identify and contact the owner for various legitimate business and legal purposes. 

To accommodate privacy concerns regarding the owner’s domicile address, the TEAS initial application forms and new Change Address or Representation form now include a “Mailing Address” field, which may include a PO Box or care-of address, and a “Domicile Address” field, which generally must include a street address. If you don’t want your domicile address to be viewable by the public, you must provide a mailing address that differs from your domicile address. This mailing address will be publicly viewable. To keep your domicile address private, provide it in the initial application forms and the “Change of Address or Representation” form, using the dedicated field in the “Owner Information” section. Providing your domicile address in other fields or on other forms will make it public.

The email address of the applicant or registrant will be publicly viewable. It will not appear in the Trademark Status and Document Retrieval (TSDR) status tab, to reduce data mining, but it is viewable in the filed document in the record.

What are the exceptions to the requirement that all trademark submissions be made using TEAS?

There are a few exceptions:

  • If you are a person or an entity who is a national of, or is organized under the laws of, a country that is a member of the Trademark Law Treaty (TLT) but is not a member of the Singapore Treaty on Trademarks at the time of your submission to the USPTO, you can file your trademark submissions on paper and do not need to provide an owner email address. Learn more about this exception.
  • You can file requests to record trademark assignment documents on paper.
  • You can file specimens for certain non-traditional marks (such as scent and flavor marks) on paper.

What if I can’t file my document on or by my deadline because TEAS is unavailable, or there is a major disaster or other extraordinary situation?

In certain specified circumstances, you may be able to file your documents on paper with a petition requesting that we accept them. See how to submit documents when unable to file electronically.

My paper filing was rejected and now my deadline has passed. What do I do?

If you filed your submission on paper on or after February 15, 2020, and you do not fit into one of the limited exceptions to the requirement to file electronically, you will receive a notice from the USPTO that your submission will not be processed and will be destroyed based on the relevant record retention schedule. If you included a check or money order to pay for filing fees, we will return the check or money order to you along with the notice

If your paper submission was rejected and you were unable to refile your submission electronically before your deadline, you will need to file a TEAS petition form that includes a copy of your other submission documents. However, you can only use this petition option if you are seeking to file one of the following:

  • Application with Section 44(d) priority date
  • Statement of Use (SOU) within last six-month extension period
  • Section 8 or 71 declaration 
  • Section 9 renewal application
  • Section 70(c) application for transformation
  • Section 14 petition to cancel a registration on the fifth anniversary of the registration date.

If you’re filing one of those six submission types, complete the Petition to Director online form, using form number three. The TEAS petition form requires:

  • Filing within two months of the date we issue a notice rejecting your paper filing
  • A petition filing fee of $100, along with any other fees needed for the particular document
  • Proof that you filed your previously filed paper submission before your deadline and that your submission met the minimum filing requirements, including a sufficient paper filing fee
  • A copy of your paper submission
  • An explanation about why you were unable to resubmit your paper filing electronically by your deadline that is verified with a declaration (the form has the declaration).

Where can I find more information on examination and TEAS guidance for this rule change?

Questions?

Email TMpolicy@uspto.gov with any questions.