As of October 5, 2019, the United States Patent and Trademark Office is going completely online!

The United States Patent and Trademark Office (USPTO) has made it official. Starting October 5, 2019, electronic filing of trademark submissions through the USPTO’s Trademark Electronic Application System (TEAS) will be mandatory, with limited exceptions (i.e., paper and fax submissions will no longer be accepted). By having end-to-end electronic processing of trademark applications and registrations, the USPTO hopes to be able to process submissions faster and with fewer errors. Accordingly, those currently without access to the Internet or an email address will need to prepare for this new rule change (several companies like Google and Yahoo offer free email accounts, and local libraries are always a good place to get free Internet access).

This rule change, however,  will not only effect the way you file your trademark applications with the USPTO, it will also affect the requirements for acceptable specimens of use. Specifically, all specimens for goods or services that are in the form of webpages will now require (1) the URL, and (2) access or print date affixed thereto. In addition, specimen for goods in the form of labels or tags must now be affixed to the goods (i.e., submitting an image of a hang tag by itself for a clothing item separate from the clothing item will no longer be acceptable). Given the USPTO made its “use” audit program permanent in November of 2017, it is imperative that trademark owners ensure the specimens of use they submit are proper before filing them with the USPTO. If they are not acceptable and the application/registration is audited, not only will the audited goods/services in the application/registration be deleted if no acceptable specimen of use is provided, proof of use of all the goods/services in the application/registration (i.e., not only those audited) will then be required. As a result, if you have any questions or concerns that your specimen may not be acceptable to the USPTO, we recommend you consider engaging a trademark attorney to review your specimens before submitting them to the USPTO.

Further information about this rule change can be found at the USPTO website. You can also find a copy of the final rule here. For more information, please contact Caroline Chicoine.