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U.S. Patent and Trademark Office Mandates Electronic Filing of Trademark Applications

The U.S. Patent and Trademark Office will require all trademark applications to be filed electronically through its Trademark Electronic Application System (TEAS) effective 5 October, with certain exceptions. For example, if the application or registration is for a scent or flavour mark it cannot be uploaded electronically. In that situation, the applicant may submit the application electronically and indicate that it is mailing the specimen to USPTO. This exception does not apply to specimens for sound marks, which can be attached as an electronic file. Fax transmissions will no longer be accepted.

For filings made initially through the World Intellectual Property Organisation and subsequently transmitted to USPTO, all subsequent submissions will need to be made electronically and an email address will need to be provided for USPTO correspondence. This new rule does not change requirements for electronic filing of submissions made to the Trademark Trial and Appeal Board in ex parte or inter partes proceedings because such submissions must currently be filed through the USPTO’s Electronic System for Trademark Trials and Appeals (ESTTA).

USPTO is also requiring the designation of an email address for receiving USPTO correspondence concerning submissions, which is either that of the applicant or registrant, if unrepresented, or an authorised attorney, if one has been appointed. Effective 3 August, applicants, registrants and parties residing outside the United States are required to have a U.S.-licenced attorney represent them in all USPTO trademark matters. In addition, USPTO still requires that applicants and registrants, as well as parties to a proceeding before the TTAB, provide and maintain a postal address. The postal address requirement also applies to the attorney representing an applicant. This dual requirement ensures that if the attorney is no longer eligible to practice or cannot be reached for any reason the applicant can still be in contact with USPTO.

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