On January 27, 2015, the United States Patent and Trademark Office ("USPTO") began sending courtesy email reminders of upcoming post-registration maintenance filing deadlines for §§8 and 71 declarations and §9 renewals to registration owners who have (1) "live" registrations on the date of sending; (2) provided a valid email address to the USPTO; and (3) authorized email communication. No reminders will be sent by regular mail, and no follow-up emails will be attempted for undeliverable emails.
To ensure receipt of the courtesy email reminders, registration owners should add the USPTO to their "safe senders list" and/or confirm that their email server will accept email from the USPTO and will not treat it as junk mail or spam. Any failure by the USPTO to provide the courtesy email reminders or any non-receipt of such reminders will not excuse a registration owner who fails to meet its statutory obligations.
Eligibility and Targeted Recipients
The courtesy email reminders will be sent on the first day of the statutory filing period for the maintenance filing (e.g., 5th year anniversary date, 9th year anniversary date, 19th year anniversary date, etc.) to all email addresses of record within the Correspondence and Current Owner(s) Information fields, as indicated in Office records, even if email was only authorized for one of the fields. For example, if email was authorized in the Correspondence Information field but not in the Current Owner(s) Information field, the reminders will be sent to email addresses in both the Correspondence and Current Owner(s) Information fields.
The reminders will be sent to both primary and secondary email addresses. If an email address is duplicated (for example, within the Correspondence and Current Owner(s) Information fields), only one notice will be sent to that email address.
Registration owners should use the USPTO's Trademark Electronic Application System ("TEAS") Change of Correspondence Address and Change of Owner's Address forms to verify, update, add, or delete email address information, as necessary, to ensure receipt of the reminders by the registration owner(s) and any legal representative that elect to receive them. The USPTO encourages owners and/or their attorneys to promptly make any necessary changes to email address(es) in the Trademark Database.
Information Communicated in the Courtesy Reminders
The courtesy email reminders will identify the registered mark, corresponding serial and registration numbers, the date of registration, and the owner(s) of record in the USPTO's Trademark database. The reminders will also identify the maintenance filing currently due (e.g., Section 8 declaration, Section 71 declaration, or Section 8 declaration and Section 9 renewal application), along with the anniversary filing deadline, the grace period deadline, and the filing fee per class.
The courtesy email reminders will provide links to the USPTO website for general information on registration maintenance requirements, as well as direct links to TEAS, the Trademark Status & Document Retrieval ("TSDR") database, and the Electronic Trademark Assignment System ("ETAS").
Opting Out of Receiving the Courtesy Email Reminders
If registration owners or their attorneys do not wish to receive the courtesy email reminders, they should delete their email addresses from the USPTO's Trademark Database using the TEAS Change of Correspondence Address and Change of Owner's Address forms.
If legal representation prior to registration will not be ongoing, the TEAS Change of Correspondence Address and Change of Owner's Address forms should be used to remove any attorney email address(es) from the USPTO's Trademark database and to provide the email address(es) of the registration owner(s), so that the USPTO can send the courtesy email reminder directly to the registration owner(s).