Why I Use My Email Address as Applicant's Email Address on a Trademark Application

Image of Email Address Symbol followed by the words Why I Use My Email Address as Applicant's Email Address on a Trademark ApplicationThings are so much easier nowadays. Most communications with the United States Patent and Trademark Office (“USPTO”) occur through email (assuming you’ve authorized that form of communication). How many of us even remember the nightmare that used to be Express Mail? In fact, it’s not even called Express Mail anymore—it’s now called Priority Mail Express. Anyway, communication with the USPTO is almost all about email now.

As the attorney of record on my clients’ trademark applications, I always authorize email communication and provide my email address on the “Attorney of Record” screen when filing a trademark application through the USPTO’s Trademark Electronic Application System (“TEAS”). As you probably know, this also results in my information being used for the form on the “Correspondence Information” screen.

However, I also list my own email address when filling out the form on the “Applicant Information” screen. Or, if I am responding to an office action for a trademark application that I did not originally file, I will update the Applicant’s information on the “Owner Information” screen to list my email address.

It’s not necessary and may seem like overkill because the USPTO is only supposed to communicate with the attorney of record (who is also the correspondent). But here’s why I now use my email address for the Applicant.

1. Ensuring That I Remain the Sole Point of Contact

First and foremost, I want to make sure that all communications and correspondence between the USPTO and my client run through me. I am the Applicant’s attorney, and the Applicant is a represented party. So just like in litigation, I don’t want anyone contacting my client directly about the trademark application. This general principle encompasses or dovetails with the additional points below.

2. Preventing the USPTO From Mistakenly Communicating with the Applicant

A few years ago, a new client retained me to respond to an office action. On March 5, 2011, the client had filed the trademark application himself and provided his email address in the “Applicant Information” section. On June 7, 2011, the USPTO issued an office action. When I filed the office action response on behalf of the client on December 7, 2011, I updated the application to include myself as both the attorney of record and correspondent and provided my email address for both. At that point, the USPTO was required to use my email address for correspondence, not the Applicant’s email address. So it did not occur to me to change the Applicant’s email address to mine. However, for whatever reason, on March 20, 2012, the USPTO sent the notice of allowance to the Applicant’s email address instead of sending it to my email address. As a result, the application went abandoned. Although I was able to reinstate the application due to the USPTO’s documented error, it was a hassle. You can see for yourself by pulling up the file history for U.S. Trademark Application Serial No. 85/259,092 for BEAUTIFUL BRAWLERS.

Admittedly, it is rare that the USPTO makes such a mistake. But now that it has happened to me and I’ve experienced it first hand, there’s really no reason to take the chance. So I make sure my email is also listed as the Applicant’s email address.

3. Avoiding Scams, Spam, and Solicitations

There’s a ton of scams, spam, and solicitations in the trademark world today. I know because I’ve received them—both as an applicant and as an attorney of record. It’s gotten so bad that even the USPTO has had to address the issue with a warning. I don’t want my clients to be on the receiving end of any it.

In addition, even though attorneys and law firms are not supposed to directly contact represented parties, some do so anyway. They monitor trademark applications and when an office action is issued (or some other deadline is triggered), they will email a solicitation to the Applicant’s email address. Of course, I don’t want my clients to first learn about an office action or deadline from a third party and I don’t want other attorneys stealing my clients. So using my own email address for the Applicant’s email address helps me control this issue to some degree.

4. Preventing the USPTO from Contacting Applicant in Other Situations

In item #2 above, I mentioned that I use my email address to avoid the USPTO from contacting my client by mistake. However, there are other situations where the USPTO will contact Applicant (my client) intentionally even though an attorney of record is listed. One of these scenarios is the courtesy email reminders that the USPTO sends out for Section 8 and Section 9 reminders. These are sent to both the Applicant’s email address and the attorney’s email address. But, again, I don’t want the USPTO communicating directly with my client—especially five or nine years down the road. It’s also another situation that could cause your client to retain a different attorney—especially if you have not been in contact with the client repeatedly over those five to nine years. This is another good reason to use my email address for Applicant’s email address.

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Along these same lines, I have been thinking about using my law firm’s mailing address as the Applicant’s mailing address for trademark applications. Like email addresses, there does not appear to be any prohibition on listing the attorney’s address as the Applicant’s.

If I decide to do so, it would be for similar reasons. There are companies who send solicitations to trademark owners by mail. Many of these solicitations look official and give the impression that they are being sent to the trademark owner by the USPTO. But they are just scams.

Recently, I contacted one of my less sophisticated clients about his upcoming Section 8 & 15 declaration. He informed me that he had already taken care of it himself. After checking the USPTO’s records and informing him that the USPTO does not reflect that, we eventually confirmed that he had responded to one of the letters sent out by scammers. He was out a few hundred dollars. Of course, if I had listed my mailing address as his on the trademark application, the scam letters would come to me and I would just toss them in the garbage. There is a real benefit to this for some clients.

In addition, sometimes a party that files a notice of opposition will serve the notice of opposition by mail at the Applicant’s address instead of the attorney’s address. By listing my address as the Applicant’s address, I also ensure that I receive any notice of opposition that would otherwise have been mailed ot the Applicant’s address.

Of course, if I end up adopting this new practice, I will let my clients know that I intend to list my address, explain why, and give them the opportunity to object.

About the Author

Bruno Tarabichi

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