Feedback finally results in trademark certificates going electronic

USPTO was printing between 7,000 and 9,000 registrations per week.
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Wong

Trademark owners now can receive their trademark registration certificates from the United States Patent and Trademark Office (USPTO) faster than ever before.

The USPTO began issuing its first set of electronic trademark registration certificates in May, as opposed to printing the registration certificates and mailing them, as they were doing before, to trademark owners who have trademarks such as a word, phrase, symbol, design, or a combination of these things that identifies their goods or services. Aaron Wong, partner and trademark attorney at Price Heneveld, also said an unconventional trademark can be a color, smell, sound or type of motion.

The digital transition is the result of feedback the USPTO was receiving. Wong said the USPTO was printing between 7,000 and 9,000 trademark registrations per week. The electronic format is expected to make certificates more accessible and will decrease the time it takes for customers to receive them, according to the USPTO.

The electronic trademark registration certificates have the electronic signature of the USPTO director and a digital seal, which serves to authenticate the registration, per the USPTO.

“The USPTO uploads official registration certificates to the Trademark Status and Document Retrieval system and emails trademark owners and all email addresses of record a link to access their certificates upon issue,” the USPTO said.

The registration certificates can be viewed, downloaded and printed at any time at no charge.

Puplava

Mika Meyers attorney Jennifer Puplava, who practices intellectual property law, said prior to the pandemic, owners could expect to have a registered trademark between nine months and a year after filing the application if there were no modifications needed during the application process.  

“Once the mark is registered with the patent and trademark office, it used to take a week or two to actually receive the certificate of registration when they sent it through the mail,” she said. “Now, it is fairly instant with the electronic certificate. They just send out an email that says, ‘Your mark has been registered’ and they give you a link to access the document online so it does speed things up a little bit.”

In addition to getting the electronic trademark registration certificate faster than before, the electronic version is easily accessible to inform individuals that there is an owner who has rights to that registered trademark, said Andrew Schmid, an intellectual property attorney at Miller Johnson.

“If you go to do a takedown request or trademark reporting on a social media site because you see someone using your mark on Facebook or Instagram, if you go do a trademark report on that, they ask you for your registration and simply downloading or printing or attaching your electronic registration would suffice to still make those kinds of takedown requests,” he said. 

Schmid

“In some of those areas, like social media today and technology, having that registration faster is good in a lot of ways to help maintain the rights that you want, or you’ve acquired and you’ve trademarked already. A big one is domain name disputes, too. So, if you get a trademark, it gives you the right to use that domain with that trademark. You don’t want someone else essentially snatching or taking your trademark on that domain. There are domain name dispute proceedings, which usually require you to have some proof of evidence — whether it is a registration or a site to a registration — that you have a protected mark, so getting the electronic registration faster I think will help on all those kinds of avenues.”

Wong said although the introduction of the electronic registration certificates helps with the timing of getting the registration certificate into the hands of the registrant, the eight- to 12-month prosecution (processing application of registration) timeline generally is unaffected by the electronic issuance of trademark registration. Nevertheless, electronic trademark registration certificates are the latest effort by the USPTO to move toward “full electronic processing of trademark applications and registrations.”

The USPTO has been encouraging applicants over the years to file their trademark registration application electronically instead of on paper by offering discounts, according to Wong.

Although the USPTO is now issuing electronic trademark registration certificates, individuals still can receive a paper copy of their certificates.

“People can still get a paper copy if they want it,” Wong said. “There will be a fee for applications that are filed after May 24. Some clients like what is called the ‘Presentation Copy,’ which has a gold seal and the signature of the director of the U.S. Patent and Trademark office. It comes on a cardstock (paper) and some clients like that so they can have it on the walls of their buildings to show off all the trademarks they’ve gotten in the past. So, you can still get that, you’ll just have to pay a fee.”

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