108.01 Internet Information

The TSDR database on the USPTO website at http://tsdr.uspto.gov/ provides detailed information about the status and prosecution history of trademark applications and registrations.  The TSDR database is available 24 hours a day, 7 days a week.

The TSDR database is normally updated shortly after our internal databases are updated. However, the TSDR database may not reflect changes in ownership that have been recorded in the Assignment Recordation Branch.  There are circumstances in which the Trademark database will be updated automatically upon the recordation of a change of ownership.   See TMEP §504 .  In all other cases, the new owner must separately notify the Trademark Operation in writing of the recordation of a document, and request that the Trademark database be updated manually.   See TMEP §§503.01(a) , 504.01 , and 505-505.02.

Information about documents recorded with the Assignment Recordation Branch can be viewed though Assignments on the Web (AOTW) at http://assignments.uspto.gov.

See also TMEP §109.01 regarding public access to electronic images of the contents of trademark application and registration and Board proceeding records.

108.02 Personal Telephone Assistance

If additional information regarding the status of an application or registration is required, callers may telephone TAC at (571) 272-9250 or (800) 786-9199 and request a status check.  TAC also provides general information about the trademark registration process.  Telephone assistance is available from 8:30 a.m. to 8:00 p.m., Eastern Time, Monday through Friday, except on Federal holidays within the District of Columbia.  Walk-in service is available from 8:30 a.m. to 5:00 p.m. Eastern Time, Monday through Friday, except on Federal holidays within the District of Columbia.

The Trademark Assistance Center will gladly answer questions about the application process.  However, USPTO employees cannot:

• conduct trademark searches for the public ( see TMEP §104 );
• comment on the validity of registered marks ( see TMEP §1801 );
• answer questions as to whether a particular mark or type of mark is eligible for registration;
• offer legal advice or opinions about common-law trademark rights, state registrations, or trademark infringement claims; or
• aid in the selection of a private trademark attorney or search firm (37 C.F.R. §2.11).

See TMEP Chapter 1800 regarding public inquiries about applications and registrations.

108.03 Due Diligence:  Duty to Monitor Status

Trademark applicants and registrants should monitor the status of their applications or registrations in cases where a notice or action from the USPTO is expected.  Inquiries regarding the status of pending matters should be made during the following time periods:

• (1)         During the pendency of an application, an applicant should check the status of the application every six months between the filing date of the application and issuance of a registration; and
• (2)         After filing an affidavit of use or excusable nonuse under §8 or §71 of the Trademark Act, or a renewal application under §9 of the Act, a registrant should check the status of the registration every six months until the registrant receives notice that the affidavit or renewal application has been accepted.

Should the status inquiry reveal that a document is lost, that no action has been taken regarding correspondence that was submitted, or that some other problem exists, the applicant or registrant must promptly request corrective action.   37 C.F.R. §2.146(i) .  Failure to act diligently and follow up with appropriate action may result in denial of the requested relief.  The USPTO may deny petitions to reactivate abandoned applications and cancelled registrations when a party fails to inquire about the status of a pending matter within a reasonable time.   See TMEP §§1705.05 and 1714.01(d) .

Written status inquiries are discouraged, because they can delay processing.  Whenever possible, status inquiries should be made through the TSDR database.  If additional information regarding the status of an application or registration is required, callers may telephone TAC at (571) 272-9250 or (800) 786-9199.

109.01 Electronic Image Records

The public may view and print images of the contents of trademark application and registration records through the TSDR portal on the USPTO website at http://tsdr.uspto.gov/ .  Electronic images of Board proceeding records are also available on the USPTO website at http://ttabvue.uspto.gov/ttabvue/ .  TSDR and TTABVUE are available 24 hours a day, seven days a week, free of charge.

The public may also view and print images of the contents of trademark application and registration records through the Trademark Image Capture and Retrieval System (“TICRS”), available in the Public Search Facility on the USPTO premises.   See TMEP §402.

109.02 Paper Files

Effective April 12, 2004, the USPTO no longer creates paper files for all trademark applications or paper copies of certain trademark-related documents that are submitted to the USPTO in electronic format.  Furthermore, the USPTO does not generate paper copies of certain trademark documents that the USPTO creates, except for copies that are sent to recipients by mail.  See New USPTO Policies Regarding (1)  Generation of Paper Copies of Trademark-Related Documents and (2)  Public Access to Existing Paper Copies of Trademark-Related Documents (TMOG Apr. 6, 2004), at http://www.uspto.gov/web/offices/com/sol/og/2004/week14/pattmcp.htm .  All these documents can be viewed through TICRS and TSDR.

A member of the public may request access to a paper file at the Trademark Assistance Center (TAC), which is located in the James Madison Building - East Wing, Concourse Level, 600 Dulany Street, Alexandria, VA, between 8:30 a.m. and 5:00 p.m. The file will usually be available to the requester within a few days.

USPTO personnel must keep a record of all files requested and enter the new location of the file (e.g., charged to non-USPTO personnel) in the Trademark database. The public must inspect the file in the TAC and may make copies of documents in the file in the TAC. No file or related document may be removed from the premises occupied by the USPTO, except as required by the issue process or other official process, unless specifically authorized by the Director. 18 U.S.C. §2071(b). If such authorization is given, the employee having custody will be responsible for complying with the requirements of law.

Paper files for abandoned applications and cancelled and expired registrations are stored in the warehouse for two years after the date of abandonment, cancellation, or expiration, and then destroyed. See notice at 980 TMOG 16, reprinted at 1232 TMOG 625 (March 21, 2000).  See TBMP §120.03  regarding the retention schedule for the files of terminated Board proceedings.

See TMEP §503.08 regarding the accessibility of assignment records.

109.03 Making Copies of Materials in Records

The public may print images of the contents of trademark application, registration, and Board proceeding records through TSDR or TTABVUE on the USPTO website at http://www.uspto.gov .   See TMEP §109.01 .  The public can also print electronic copies of records pertaining to applications or registrations through TESS ( see TMEP §104 ), and prosecution histories through TSDR ( see TMEP §108.01 ) on the USPTO website.  There is no charge for use of these databases.

The public may also print trademark documents from TICRS, TTABVUE, TSDR, or X-Search in the Public Search Facility on the USPTO premises.  There is a fee for printing images of documents in the Public Search Facility.   See TMEP §104.

Photocopiers for making copies of paper files are available to the public on the premises of the USPTO for a fee.

See TMEP §111 regarding requests that the USPTO provide copies of trademark documents.

201.01 Effective Filing Date Controls for Purposes of Determining Priority for Publication or Issue

The filing date of an application ( see TMEP §201 ) is also the effective filing date, exceptwhere:  (1) the applicant is entitled to priority under 15 U.S.C. §1126(d) or §1141g ( see TMEP §206.02 ); (2) the applicant amends an intent-to-use application filed under 15 U.S.C. §1051(b) to the Supplemental Register ( see TMEP §206.01 ); or (3) the application was filed before November 16, 1989, the applicant had not used the mark in commerce for one year before the application filing date, and the applicant amends to the Supplemental Register on or after November 16, 1989 ( see TMEP §206.03 ).  The effective filing date is controlling for purposes of determining priority for publication or issue ( see TMEP §1208.01 ) and constructive use priority ( see TMEP §201.02 ).

201.02 Constructive Use Priority

Under 15 U.S.C. §§1057(c) and 1141f(b) , filing any application for registration on the Principal Register, including an intent-to-use application, constitutes constructive use of the mark, provided the application matures into a registration. See Cent. Garden & Pet Co. v. Doskocil Mfg. Co. , 108 USPQ2d 1134 (TTAB 2013) .  Upon registration, filing affords the applicant nationwide priority over others, except:  (1) parties who used the mark before the applicant’s filing date; (2) parties who filed in the USPTO before the applicant; or (3) parties who are entitled to an earlier priority filing date based on the filing of a foreign application under 15 U.S.C. §1126(d)   or §1141g (see TMEP §206.02 ).   See Zirco Corp. v. Am. Tel. and Tel. Co. , 21 USPQ2d 1542 (TTAB 1991) ; Aktieselskabet AF 21. November 2001 v. Fame Jeans Inc. , 525 F.3d 8, 86 USPQ2d 1527 (D.C. Cir. 2008).

202.01 Clear Drawing of the Mark

In a §66(a) application, the drawing must meet the requirements of the Madrid Protocol and the Common Regulations Under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to That Agreement , which are available on the IB’s website at https://www.wipo.int/madrid/en/ .  The IB will determine whether the drawing meets these requirements before sending the application to the USPTO.  See TMEP §§1904 et seq. for further information about §66(a) applications.

Under 37 C.F.R. §2.21(a)(3) , a §1 or §44 applicant must submit “a clear drawing of the mark” to receive a filing date, except in applications for registration of sound, scent, and other non-visual marks.  A separate drawing page (or digital image of a separate drawing page in an application filed through the Trademark Electronic Application System (“TEAS”)) is not mandatory, but is encouraged.  See TMEP §807.09 regarding “drawings” in applications for registration of non-visual marks.

A "drawing" is simply a depiction of the mark for which registration is sought.   37 C.F.R. §2.52 .  A drawing that includes multiple elements that do not comprise an identifiable mark, or that consists of wording describing the mark, does not constitute a clear drawing of the mark.

An application that includes two or more drawings displaying materially different marks does not meet the requirement for a “clear drawing of the mark.”  Therefore, an application is denied a filing date if it includes two or more drawings displaying materially different marks.   See Humanoids Group v. Rogan, 375 F.3d 301, 71 USPQ2d 1745 (4th Cir. 2004).

However, if an applicant (1) submits a separate drawing page showing a mark in a paper application, (2) enters a standard character mark in the “Mark Information” field of an application filed through TEAS, or (3) attaches a .jpg file containing a mark to the “Mark Information” field of a TEAS application, and a different mark appears elsewhere in the application, the drawing page or mark shown in the “Mark Information” field on TEAS will control for purposes of determining the nature and elements of the mark.  The USPTO will grant a filing date to the application, and disregard any other mark that appears elsewhere in the application.  The applicant will not be permitted to amend the mark if the amendment is a material alteration of the mark on the drawing page in a paper application or the “Mark Information” field in a TEAS application.   In re L.G. Lavorazioni Grafite S.r.l. , 61 USPQ2d 1063 (Dir USPTO 2001).  See 37 C.F.R. §2.72 and TMEP §§807.14 et seq. regarding material alteration of a mark.

A specimen showing the mark does not satisfy the requirement for a drawing.  If the only depiction of the mark is on a specimen ( e.g., an advertisement, a photograph of the goods, or the overall packaging), then there is no drawing, and the application will be denied a filing date.

See TMEP §§807 et seq. for additional information about the examination of drawings.

See also TMEP §204.03 regarding the examining attorney’s handling of applications that are erroneously granted a filing date.

202.02 Listing of Recognizable Goods or Services

The USPTO will deny a filing date to an application under §1 or §44 of the Trademark Act if the application does not identify recognizable goods or services.  See TMEP §1402.02 for further information.

202.03 Filing Fee for At Least One Class of Goods or Services

In an application under §1 or §44 of the Trademark Act, the applicant must pay the filing fee for at least one class of goods or services before an application can be given a filing date.   37 C.F.R. §2.21(a)(5) .  The fee can be paid by credit card, check, money order, electronic funds transfer (“EFT”), or by an authorization to charge a deposit account.   37 C.F.R. §2.207 .  See TMEP §§405 et seq. for additional information about fees.

The amount of the trademark application filing fee varies depending on whether the application is filed through TEAS or on paper.  An applicant has four choices.  The applicant can file:

• A paper application at the highest fee per class, set forth in 37 C.F.R. §2.6(a)(1)(i) ;
• A regular TEAS application at the lower fee per class set forth in 37 C.F.R. §2.6(a)(1)(ii) ;
• A TEAS RF application ( see TMEP §820 ) at the lower fee per class set forth in 37 C.F.R. §2.6(a)(1)(iii) ; or
• A TEAS Plus application ( see TMEP §819 et seq.) at the lowest fee per class, set forth in 37 C.F.R. §2.6(a)(1)(iv) .

See TMEP §§819 et seq. regarding TEAS Plus.   See also notices at 70 Fed. Reg. 2952 (Jan. 19, 2005) and 70 Fed. Reg. 38768 (July 6, 2005) .  The current fee schedule is available on the USPTO website at http://www.uspto.gov .

The complete fee for at least a single class must be submitted with the application as filed.  Partial or piecemeal fee payments are unacceptable and will be returned.

If an application does not include a filing fee for at least a single class, the USPTO will deny a filing date.   In re Buckhead Marketing & Distribution , Inc., 71 USPQ2d 1620 (Dir USPTO 2004); In re Paulsen, 35 USPQ2d 1638 (Comm’r Pats. 1995).  If a filing date has been granted when the USPTO discovers that the applicant has not paid the filing fee for at least a single class, the filing date will be cancelled.   See TMEP §204.01 .

See TMEP §§202.03(a) and 405.06 regarding payments that are refused or charged back by financial institutions, and TMEP §405.03 regarding deposit accounts.

The filing fee for a §66(a) application will be sent to the USPTO by the IB, pursuant to Article 8 of the Madrid Protocol.  Generally, the examining attorney should not require additional fees during examination, except where the application is divided due to a change in ownership with respect to some but not all of the goods/services.  See TMEP §810 for further information about application filing fees, and TMEP §§ 1904 et seq. for further information about §66(a) applications.

204.01 Filing Date Cancelled if Minimum Filing Requirements not Met

Applications under §1 or §44 of the Trademark Act are initially assigned a filing date and serial number and then reviewed for compliance with the minimum requirements for receipt of a filing date set forth in 37 C.F.R. §2.21(a) .  If the minimum filing requirements have not been met, the USPTO cancels the filing date and serial number, refunds any filing fee submitted, and sends a notice to the applicant explaining why the application is defective.

See TMEP §204.02 regarding the procedures for requesting review of the denial of a filing date by the Office of the Deputy Commissioner for Trademark Examination Policy.

204.02 Resubmission of Applications  

The USPTO prefers that all applications be filed through TEAS.  However, if the USPTO denies a filing date in a paper application, the applicant may resubmit the original papers or a copy of the original papers, together with the item(s) necessary to correct the defect(s), and a new filing fee.  The applicant should cross off the cancelled serial number.   A filing fee for at least a single class of goods or services must be included when the applicant resubmits an application, even if the applicant has not yet received a refund of the fee previously submitted.

The new filing date will be the date on which a complete application, including all elements required by 37 C.F.R. §2.21(a) ,is received in the USPTO.  Note that applications claiming priority under §44(d) of the Trademark Act must meet all filing date requirements within six months of the filing date of the foreign application.   37 C.F.R. §2.34(a)(4)(i) ; TMEP §§806.01(c) and 1003.02 .

If an applicant believes that the USPTO committed an error in denying the application a filing date, the applicant may submit a request to restore the filing date.   See TMEP §1711 .  The USPTO prefers that the applicant file a new application, including the required application filing fee, using TEAS, located at http://www.uspto.gov .  After the applicant receives a new serial number, the applicant should submit a request to restore the original filing date.  To ensure proper routing and processing, the Office prefers that the request also be filed electronically.  In TEAS, the Request to Restore Filing Date form can be accessed by clicking on the link entitled “Petition Forms.”  Alternatively, the request should be faxed to the Office of the Deputy Commissioner for Trademark Examination Policy at 571-273-8950.

The request should:  (1) include the new serial number; (2) state the reason(s) why the applicant believes the filing date was denied in error; and (3) include a copy of any Notice of Incomplete Trademark Application received from the USPTO.  Although applicants have two (2) months from the issuance date of a Notice of Incomplete Trademark Application to file a request to restore the original filing date ( 37 C.F.R. §2.146(d) ), it is recommended that the applicant file the request immediately upon receipt of the new serial number, to expedite processing.

204.03 Examining Attorney’s Handling of Applications That Are Erroneously Accorded a Filing Date

Sometimes an application under §1 or §44 that does not meet the minimum requirements of 37 C.F.R. §2.21 for receipt of a filing date is erroneously referred to an examining attorney for examination.  In this situation, if the examining attorney discovers the error before issuing an action in the case, then the examining attorney should have the application declared informal.  The USPTO will cancel the filing date and serial number, refund any filing fee submitted, and send a notice to the applicant explaining why the application is defective.   See TMEP §204.01 .

If, however, an examining attorney discovers after issuing an action that the application as filed did not meet the minimum requirements for receipt of a filing date, then the examining attorney must issue a supplemental Office action, refusing registration on the ground that the application was not eligible to receive a filing date.  Any outstanding refusals and requirements must be maintained and incorporated into the supplemental Office action.  The applicant should be given six months to comply with all filing date requirements.  If the applicant fails to qualify for a filing date within the response period, the application is void.  If a filing fee was submitted with the original application, the examining attorney must have the filing fee refunded and update the USPTO’s automated records to indicate that the application is abandoned.

If the applicant complies with the filing date requirements within six months of the issuance of the examining attorney’s Office action, the application will receive a new filing date as of the date on which the applicant satisfied all minimum filing date requirements.  In such a case, the examining attorney must conduct a new search of Office records for conflicting marks, and issue another Office action if necessary.

The examining attorney must treat a response that addresses any outstanding refusals and requirements, but does not include the required fee, as an incomplete response, and must issue a notice of incomplete response granting the applicant 30 days, or to the end of the six-month response period set forth in the previous Office action, whichever is longer, to perfect the response. To issue a notice of incomplete response, the examining attorney must use the "Examiner’s Non-Responsive Amendment." The notice must not include a six-month response clause. If the applicant does not respond by submitting the filing fee, the application must be abandoned for incomplete response.

206.01 Amendment of §1(b) Application from Principal Register to Supplemental Register upon Filing of Allegation of Use

An applicant relying on a bona fide intention to use the mark in commerce under 15 U.S.C. §1051(b)   is not eligible for registration on the Supplemental Register until the applicant has submitted an acceptable amendment to allege use under 15 U.S.C. §1051(c) or statement of use under 15 U.S.C. §1051(d) .   37 C.F.R. §§2.47(d) and 2.75(b) .

If an application is based solely on §1(b), and the applicant files an acceptable amendment to allege use or statement of use andan acceptable amendment to the Supplemental Register, the USPTO will consider the filing date of the amendment to allege use or statement of use to be the effective filing date of the application.   37 C.F.R. §2.75(b) .  The examining attorney must conduct a new search of USPTO records for conflicting marks.   See TMEP §206.04 regarding examining attorney's action after conducting a new search.

Amendment of an application from the Supplemental to the Principal Register does not change the effective filing date of an application.   Kraft Group LLC v. Harpole, 90 USPQ2d 1837 (TTAB 2009) (filing date did not change when applicant who originally sought registration on the Supplemental Register without alleging use in commerce amended to seek registration on the Principal Register under §1(b)).

See TMEP §§816.02 and 1102.03 for additional information about examination of intent-to-use applications on the Supplemental Register.

206.02 Application Claiming Priority under §44(d) or §67

When an applicant is entitled to priority based on a foreign application, the effective filing date is the date on which the foreign application was first filed in the foreign country.   15 U.S.C. §§1126(d)(1)   and 1141g ; 37 C.F.R. §§2.34(a)(4)(i) and 7.27(c) ; TMEP §§1003.02 and 1904.01(e) .

In an application under §44(d) of the Trademark Act, the priority claim for the United States application must be filed within six months after the filing date of the foreign application. The applicant may submit a priority claim after the filing date of the United States application if:  (1) the applicant submits the priority claim within the six-month priority period ( 37 C.F.R. §2.35(b)(5) ); and (2) the applicant was entitled to priority on the filing date of the United States application.  

In an application under §66(a) of the Act, the priority claim must be submitted with the international application or subsequent designation filed with the IB within six months after the filing date of the foreign application. The priority claim will be part of the request for extension of protection sent to the USPTO by the IB. In some situations, however, the USPTO may receive a priority claim or a corrected priority claim after receipt of the §66(a) application via a notice of correction from the IB.

If the priority date is included in the original §44(d) or §66(a) application, the examining attorney must determine, while conducting a search of USPTO records for conflicting marks, whether there are any applications for conflicting marks that would be deemed later filed. The examining attorney must also notify the examining attorney assigned to any later-filed application so that the application may be suspended pending disposition of the §44(d) or §66(a) application with the earlier effective filing date.

If the priority claim in a §44(d) or §66(a) application is submitted after the examining attorney has conducted a search of USPTO records for conflicting marks, the examining attorney must conduct a new search to determine whether, in view of the new earlier effective filing date, there are any applications for conflicting marks that would now be deemed later filed. The examining attorney must also notify the examining attorney assigned to any now later-filed application so that the application may be suspended pending disposition of the application with the earlier effective filing date.

See TMEP §1003.05 regarding the procedures when an application filed after a §44(d) application’s priority date proceeds to publication or registration because the §44(d) application was not yet filed with the USPTO when the examining attorney searched for conflicting marks. See TMEP §1904.01(e) regarding the procedures when an application filed after a §66(a) application’s priority date proceeds to publication or registration because the request for extension of protection for the §66(a) application was not yet of record with the USPTO when the examining attorney searched for conflicting marks.

206.03 Applications Filed Before November 16, 1989, That Are Amended to the Supplemental Register on or After November 16, 1989

In an application filed before November 16, 1989, the date of the amendment to the Supplemental Register becomes the effective filing date of the application if:  (1) the applicant had not used the mark in commerce for one year before the application filing date; and (2) the applicant amends to the Supplemental Register on or after November 16, 1989.   See TMEP §816.02 .

206.04 Examining Attorney’s Action After Conducting New Search When the Effective Filing Date Changes to a Later Date

When the effective filing date changes to a later date, the examining attorney must conduct a new search of USPTO records for conflicting marks.  If the search shows that because of the new, later effective filing date, there is a later-filed conflicting application that now has an earlier filing date, the examining attorney must suspend action of the subject application pending disposition of the other application, if the application is otherwise in condition for suspension.  In addition, the examining attorney must notify the examining attorney assigned to the other application of the change in the effective filing date of the subject application, so that the other examining attorney may withdraw the application from suspension and either approve it for publication or take action on any other outstanding issues.

See TMEP §§206.02 regarding the procedures when the effective filing date changes to an earlier date and TMEP §§1208–1208.02(f) regarding conflicting marks in pending applications.

302.01 Original Documents Generally Not Required

When a party files a copy of a document related to an application or registration, the USPTO will normally not require the party to submit the original document.  Copies (e.g., photocopies or fax transmissions) are acceptable unless a document is required by statute to be certified (e.g., a certified copy of a final court order pursuant to 15 U.S.C. §1119).  However, the party who filed the copy should retain the original in case questions arise as to the authenticity of the signature on the photocopy or faxed correspondence.   37 C.F.R. §2.193(b) .

Original certificates of registration are not required for requests for amendment or correction of a registration under §7 of the Trademark Act, and owners are strongly discouraged from submitting them.   TMEP §§1609.01(b) , 1609.10 .

302.02 Multiple Copies of Documents Should Not Be Filed

As a general rule, only one copy of each document should be filed, unless more than one copy is specifically required by statute or rule, or a USPTO employee specifically requests more than one copy.

When filing a document electronically or by fax, a party should notsend a follow-up copy unless the USPTO specifically requests a follow-up copy.   37 C.F.R. §2.193(g)(2) .  Submission of duplicate documents can delay processing. See In re Allegiance Staffing, 115 USPQ2d 1319, 1323 (TTAB 2015)(discouraging the submission of duplicate filings because “it merely adds to the bulk of the file and makes it more difficult to review the submissions”).

302.03 Identifying the Nature of Documents Filed

303.01 Date of Receipt

Correspondence transmitted through TEAS is considered to have been filed on the date the USPTO receives the transmission, in Eastern Time, regardless of whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia.   37 C.F.R. §2.195(a)(2) .

For paper correspondence, the date of actual receipt in the USPTO is assigned as the filing date of all correspondence.   37 C.F.R. §2.195(a) .  However, under 37 C.F.R. §§2.195(a)(1) and (3) , no paper correspondence is “received” in the USPTO on Saturdays, Sundays, or Federal holidays within the District of Columbia.  See TMEP §308 regarding response periods that end on a Saturday, Sunday, or Federal holiday within the District of Columbia.

The filing date of a fax transmission ( see TMEP §306.06 is the date the complete transmission is received in the USPTO, unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia, in which case the filing date is the next succeeding day that is not a Saturday, Sunday, or Federal holiday within the District of Columbia.   37 C.F.R. §2.195(a)(1) , (3) .  However, if the communication is properly filed using the “certificate of transmission” procedure under 37 C.F.R. §2.197 , the USPTO looks to the date on the certificate to determine whether the filing is timely.   TMEP § 306.05(c) .

Similarly, if a document is mailed to the USPTO using the “certificate of mailing” procedure under 37 C.F.R. §2.197 ( TMEP §§305.02–305.02(h) ), the filing date is the date of receipt in the USPTO, but the USPTO looks to the date on the certificate to determine whether the filing is timely.   TMEP §305.02(e) .

See TMEP §1904.01(b) regarding the filing date of a request for an extension of protection of an international registration to the United States under §66(a) of the Trademark Act, 15 U.S.C. §1141f(a) .  

303.02 Acknowledgment of Receipt

304.01 Communications Acceptable Via Electronic Mail

Applicants and registrants may use e-mail only to conduct informal communications regarding a particular application or registration as an alternative to telephone communications. See TMEP §§ 709.04 , 709.05 .  

For example, an applicant may submit via e-mail:

• Questions regarding an outstanding Office action that do not constitute a response;
• Authorization to issue an examiner’s amendment or priority action ( see TMEP §§707.01 , 708.01 );
• Objection to an examiner’s amendment ( see TMEP §§707 , 707.02 );
• Notification of termination of a cancellation proceeding that is the basis for suspension ( see TMEP §716.02(a)) ;
• Request to arrange a convenient time to speak by telephone.

See TMEP § 304.02 regarding communications that are not acceptable via e-mail.

Attachments: As part of an informal communication, if an applicant’s or registrant’s e-mail contains one or more attachments, the USPTO will only open and view the attachments if they are in .jpg or .pdf format and are legible. The USPTO will not open attachments in any other format.

The examining attorney must ensure that all relevant informal e-mail communications from applicants are entered into the electronic record.  See TMEP §§709.04 and 709.05 for further information.

304.02 Communications Not Acceptable Via Electronic Mail

E-mail may not be used to file applications for registration of marks, responses to Office actions, pre- or post-publication amendments to an application, changes of correspondence address, appointments or revocations of attorneys, attorney withdrawal requests, petitions, documents required by statute to show use of a mark in commerce or to request an extension of time to show such use, and post-registration maintenance documents, proposed amendments, or responses to Post Registration Office actions.  These documents may be filed electronically using TEAS. Responses to Office actions sent via e-mail will not be accorded a date of receipt. 37 C.F.R. §2.62(c) .

Further, e-mail may not be used to request an advisory opinion as to the likelihood of overcoming a refusal or requirement. The examining attorney or Post Registration specialist should advise the applicant to file a formal response for consideration of arguments regarding any refusal or requirement.

See TMEP § 304.01 regarding communications that are acceptable via e-mail, § 709.04 regarding telephone and e-mail communications, and § 709.05 regarding informal communications.

The Board does not accept e-mail communications.

304.03 Authorization of Official Correspondence from the USPTO by Electronic Mail

The USPTO will send official correspondence concerning an application or registration by e-mail only if e-mail communication is authorized by the applicant, registrant, or a practitioner qualified under 37 C.F.R.§11.14 who has been authorized by the applicant or registrant to act on its behalf.

The applicant, registrant, or qualified practitioner may authorize the USPTO to communicate by e-mail by so indicating in the initial application or in any official written communication.  The authorization must include the e-mail address to which e-mail is to be sent.  If the applicant, registrant, or the applicant’s qualified practitioner authorizes the USPTO to send officialcorrespondence by e-mail, one primary e-mail address may be designated, as well as up to four secondary e-mail addresses for duplicate courtesy copies of the correspondence. See TMEP §403 regarding treatment of undeliverable e-mail correspondence.

The USPTO is not required to send Office actions and other official correspondence by e-mail whenever the applicant or registrant authorizes e mail correspondence. The USPTO may send certain correspondence by e mail, regular mail, fax, or other appropriate means.

It is the responsibility of the applicant, registrant, or qualified practitioner to notify the USPTO of any changes of e-mail address.   TMEP §609.03 .

The Office considers any authorization for e-mail communications to end upon the date of registration of a mark. Note, however, that a courtesy e-mail reminder of USPTO maintenance filing deadlines will be sent to all e-mail addresses of record within the Correspondence and Current Owner(s) Information fields, as indicated in Office records. See TMEP §§1604.02 and 1613.02 .

305.01 Mailing Addresses

Documents filed through TEAS are automatically sent to the appropriate location.

For trademark-related documents filed on paper, except for documents sent to the Assignment Recordation Branch for recordation, requests for copies of trademark documents, and certain documents filed under the Madrid Protocol (listed below), all trademark-related correspondence that is mailed to the USPTO should be addressed to:

Commissioner for Trademarks

P.O. Box 1451

Alexandria,

Virginia22313-1451

The names of individual employees should not be placed on the envelopes in which official communications are sent to the USPTO.  Envelopes may be marked “Attention:  Trademark Examining Operation.”  Responses to Office actions should include the name of the examining attorney in the heading.

Documents Filed Under the Madrid Protocol

International applications under 37 C.F.R. §7.11 , subsequent designations under 37 C.F.R. §7.21 , responses to irregularity notices under 37 C.F.R. §7.14 , requests to record changes in the International Register under 37 C.F.R. §§7.23 and 7.24 , requests for transformation under 37 C.F.R. §7.31 , requests to note replacement under 37 C.F.R. §7.28 ,and petitions to the Director to review the actions of the USPTO’s Madrid Processing Unit, when filed by mail, must be mailed to:

Madrid Processing Unit

600 Dulany Street

Alexandria

Virginia22314-5793

37 C.F.R. §§2.190(e) , 7.4(b) .

Documents to be Recorded in Assignment Recordation Branch

To expedite processing, the USPTO recommends filing requests to record documents through the USPTO website, at http://etas.uspto.gov .  Documents filed electronically are recorded much faster than their paper counterparts.  Unless they are filed together with new applications, paper documents and cover sheets to be recorded in the Assignment Recordation Branch should be sent to Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P. O. Box 1450, Alexandria VA  22313‑1450.   37 C.F.R. §§2.190(c) , 3.27 .

Requests for Copies of Trademark Documents

Copies of trademark documents can be ordered through the USPTO website at http://www.uspto.gov .  Requests for copies of documents can also be faxed or e-mailed to the USPTO, with an authorization to charge the fee to a credit card or USPTO deposit account.  See TMEP §111 for additional information.

All other requests for certified or uncertified copies of trademark documents should be sent to:  Mail Stop Document Services, Director of the United States Patent and Trademark Office, P. O. Box 1450, Alexandria VA  22313‑1450.   37 C.F.R. §2.190(d) .

305.02 Certificate of Mailing Procedure

In 37 C.F.R. §2.197 , there is a “certificate of mailing or transmission” procedure to avoid lateness due to mail delay for certain trademark correspondence.  See TMEP §305.02(a) regarding trademark correspondence excluded from the certificate of mailing or transmission procedure. Under the certificate of mailing or transmission procedure, correspondence is considered to be timely even if received after the due date, if the correspondence was:  (1) deposited with the United States Postal Service as first-class mail or transmitted to the USPTO by facsimile transmission before the expiration of the filing period; and (2) accompanied by a certificate attesting to the date of deposit or transmission. 37 C.F.R. §2.197(a) .

Filers must retain a copy of the correspondence, including the signed and dated certificate.   See In re Sasson Licensing Corp., 35 USPQ2d 1510, 1512 (Comm’r Pats. 1995).

See TMEP §§305.02(a)–305.02(h) regarding the certificate of mailing procedure, and TMEP §§306.05–306.05(d) regarding the certificate of facsimile transmission procedure.

305.03 Priority Mail Express®

Documents Excluded From 37 C.F.R. §2.198

Trademark Rule 2.198, 37 C.F.R. §2.198 , provides a procedure for obtaining a filing date as of the date that correspondence is deposited as Priority Mail Express® with the USPS.  However, this procedure does not apply to the following trademark documents:

• Applications for registration of marks;
• Amendments to allege use under §1(c) of the Trademark Act, 15 U.S.C.  §1051(c) ;
• Statements of use under §1(d) of the Trademark Act, 15 U.S.C.  §1051(d) ;
• Requests for extension of time to file a statement of use under §1(d) of the Trademark Act, 15 U.S.C.  §1051(d) ;
• Affidavits of continued use under §8 of the Trademark Act, 15 U.S.C.  §1058 ;
• Renewal applications under §9 of the Trademark Act, 15 U.S.C.  §1059 ;
• Requests to change or correct addresses;
• Combined filings under §§8 and 9 of the Trademark Act, 15 U.S.C. §§1058   and 1059 ;
• Affidavits of use under §71 of the Trademark Act, 15 U.S.C.  §1141k ;
• Combined affidavits or declarations under §§8 and 15 of the Trademark Act, 15 U.S.C. §§1058   and 1065 ;
• Combined affidavits or declarations under §§71 and 15 of the Trademark Act, 15 U.S.C. §§1141k   and 1065 ;
• Responses to notices of irregularity under 37 C.F.R. §7.14 ;
• Requests for transformation under 37 C.F.R. §7.31 ; and
• Requests to note replacement under §7.28.

37 C.F.R. §§2.198(a)(1) , 7.4(b)(2) .  If the documents listed above are filed by Priority Mail Express®, they will receive a filing date as of the date of receipt in the USPTO and notthe date of deposit with USPS.   37 C.F.R. §2.195(a) ; see TMEP §303.01 .

If the documents listed above are filed by Priority Mail Express®, they will receive a filing date as of the date of receipt in the USPTO and notthe date of deposit with USPS.   37 C.F.R. §2.195(a) .   See TMEP §303.01 .

Lost Documents

If one of the documents listed above is sent by Priority Mail Express® but is lost within the USPTO, and the applicant or registrant presents proof of actual receipt in the form of evidence that a USPTO employee signed for or acknowledged the Priority Mail Express® package (e.g., a Priority Mail Express® mailing label that bears an Office date stamp or label or the signature of a USPTO employee, or evidence from the USPS website showing that the document was actually received in the USPTO), the USPTO will grant the document a filing date as of the date of actual receipt in the USPTO .  The applicant or registrant must submit a true copy of the document(s) and an affidavit or declaration under 37 C.F.R. §2.20 attesting to the contents of the Priority Mail Express® package.  See TMEP §1711 regarding restoration of application filing dates, TMEP §1712.01 regarding reinstatement of abandoned applications, and TMEP §§1712.02–1712.02(b) regarding reinstatement of cancelled or expired registrations.

If a document is sent by Priority Mail Express® but is not received by or is lost within the USPTO, and the applicant does not have proof of actual receipt in the USPTO, the USPTO will not grant a filing date to the document.

Certificate of Mailing Under 37 C.F.R. §2.197 for Documents Sent by Priority Mail Express®

For documents other than applications for registration of marks and the Madrid-related documents listed in 37 C.F.R. §2.197(a)(2) ( see TMEP §305.02(a) ), the certificate of mailing procedure of 37 C.F.R. §2.197 may be used for documents sent by Priority Mail Express® as well as documents sent by first-class mail.  Under the certificate of mailing procedure, correspondence is considered to be timely filed even if received after the due date, if the correspondence is deposited with the USPS with sufficient postage as first-class mail before the expiration of the filing period and accompanied by a certificate attesting to the date of deposit.  Correspondence sent by Priority Mail Express® is deemed to meet the requirements of 37 C.F.R. §2.197(a)(1)(i)(A) for postage as first-class mail, because the postage for Priority Mail Express® exceeds the postage required for first-class mail.  However, to use the certificate of mailing procedure for documents mailed by Priority Mail Express®, the filer must place a certificate attesting to the date of deposit and meeting the requirements of 37 CFR §2.197(a)(1)(ii) on the document prior to mailing.  See TMEP §§305.02–305.02(h) for further information about the certificate of mailing procedure.

The following wording is suggested for a certificate of mailing when correspondence is sent by Priority Mail Express®:

Documents Not Excluded From 37 C.F.R. §2.198

The procedures for filing documents by Priority Mail Express® under 37 C.F.R. §2.198 may be used for documents not expressly excluded by 37 C.F.R. §2.198(a) , e.g., documents filed with the Board or the Assignment Recordation Branch of the Office.  These documents are entitled to a filing date as of the date of deposit with USPS if the filer meets the requirements of 37 C.F.R. §2.198 .  The rule requires:  (1) the document must be sent through the Priority Mail Express® Post Office to Addressee service of the USPS; (2) it must be deposited prior to the last scheduled pickup on the relevant date; (3) it must be properly addressed in accordance with the requirements of 37 C.F.R. §2.190 ; and (4) the number of the Priority Mail Express® mailing label must be placed on the document prior to mailing.

If a document is filed in accordance with the requirements of 37 C.F.R. §2.198 , but the document is not given a filing date as of the date of deposit as Priority Mail Express®, the filer may request the USPTO to change the filing date of the document, pursuant to 37 C.F.R. §2.198(c) , (d) , or (e) .  Rule 2.198(c) applies when there is a discrepancy between the filing date assigned by the USPTO and the “date accepted” entered by the USPS on the Priority Mail Express® mailing label; Rule 2.198(d) applies when the “date accepted” is incorrectly entered or omitted by the USPS; and Rule 2.198(e) applies when correspondence deposited with the USPS as Priority Mail Express® is not received by (or is lost within) the USPTO.  A petition to change the filing date of a document pursuant to 37 C.F.R. §2.198 must:

• (1)   be filed within two months of the issuance date of the action from which relief is requested, or, if there is no “issuance of an action,” within two months of the date that the party who filed the correspondence became aware that there was a problem with the USPTO’s receipt of the correspondence ( 37 C.F.R. §§2.146(d) , 2.198(c)(1) , 2.198(d)(1) , 2.198(e)(1) ; TMEP §1705.04 );
• (2) include a showing that the number of the Priority Mail Express® mailing label was placed on the correspondence prior to the original mailing ( 37 C.F.R. §§2.198(c)(2) , 2.198(d)(2) , 2.198(e)(2) );
• (3) if the filer contends that there is a discrepancy between the filing date assigned by the USPTO and the “date accepted” entered by the USPS, include a true copy of the Priority Mail Express® mailing label with the “date accepted” clearly marked ( 37 C.F.R. §§2.198(c)(3) ); 2.198(d)(3), and 2.198(e)(3));
• (4)   if the filer contends that the “date accepted” was entered incorrectly or omitted by the USPS, include:  (a) a showing that the correspondence was deposited as Priority Mail Express® prior to the last scheduled pickup on the requested filing date; and (b) evidence from the USPS or evidence that came into being afterdeposit and within one business day of the deposit of the correspondence as Priority Mail Express® ( 37 C.F.R. §2.198(d)(3) ); and
• (5) if the correspondence is lost within or never received by the USPTO, include:  (a) a true copy of the originally deposited correspondence showing the number of the Priority Mail Express® mailing label; and (b) a statement, signed by the person who deposited the documents as Priority Mail Express® with the USPS, setting forth the date and time of deposit, and stating that the copies of the correspondence and Priority Mail Express® mailing label accompanying the petition are true copies of those originally sent ( 37 C.F.R. §§2.198(e)(3) , 2.198(e)(4)) .

When correspondence to which 37 C.F.R. §2.198(a) applies is placed in a Priority Mail Express® drop box after the box has been cleared for the last time on a given day, it is considered to have been deposited as of the date of receipt indicated on the Priority Mail Express® mailing label by the USPS employee.   See Communications with the Patent and Trademark Office, 61 Fed. Reg. 56,439, 56,445 (Nov. 1, 1996).

305.04 Interruptions in U.S. Postal Service

Under 35 U.S.C. §21(a) and 37 C.F.R. §2.195(e) , if there is an interruption or emergency in the United States Postal Service, the Director may consider correspondence to have been filed in the Office on a particular date if the correspondence or a copy thereof is:  (1) filed promptly after the ending of the designated interruption or emergency; and (2) accompanied by a statement indicating that such correspondence would have been filed on that particular date if it were not for the designated interruption or emergency in the United States Postal Service.  This procedure does not apply to correspondence that is excluded from the Priority Mail Express® procedure pursuant to §2.198(a)(1).   37 C.F.R. §2.195(e)(3) .  See TMEP §305.03 regarding Priority Mail Express®.

306.01 Documents that May Not Be Filed by Facsimile Transmission

All trademark documents except those listed below may be filed by fax, and are eligible for the benefits of the certificate of transmission provided for in 37 C.F.R. §2.197 .

The following types of trademark correspondence may not be filed by fax and, if submitted by fax, will not be given a filing date:

• (1) Applications for registration of marks;
• (2) Drawings submitted under 37 C.F.R. §§2.51 , 2.52 , 2.72 , or 2.173 ;
• (3) Requests for cancellation or amendment of a registration under 15 U.S.C. §1057(e) ;
• (4) Certificates of registration surrendered for cancellation or amendment under 15 U.S.C. §1057(e) ( see TMEP §302.01 );
• (5) Correspondence to be filed with the Board;
• (6) Madrid-related correspondence submitted under 37 C.F.R. §7.11 , §7.14 , §7.21 , §7.23 , §7.24 , or §7.31 ; and
• (7) Documents that are required by statute to be certified (e.g., certified copies of court orders).

37 C.F.R. §§2.193(i) , 2.195(d) , 7.4(d) .  Applications for registration of marks may be filed through the Trademark Electronic Application System ("TEAS").

When any trademark document specifically excluded from the fax transmission procedure is received in the USPTO by fax, the document will not be accepted.   See Vibe Records, Inc. v. Vibe Media Group LLC , 88 USPQ2d 1280, 1283 (TTAB 2008) (finding faxed notice of opposition unacceptable and can be given no effect).  As a courtesy, the USPTO will attempt to notify senders whenever correspondence that falls within one of these prohibitions is sent to the USPTO by fax.

306.02 Fax Machines Designated to Accept Relevant Trademark Documents

The fax machines that are designated to accept trademark documents are attended between the business hours of 8:30 a.m. and 5:00 p.m., Eastern Time, Monday through Friday, excluding Federal holidays within the District of Columbia.

Submissions by fax should be transmitted to the location for which they are intended.  A USPTO Contacts List, which includes fax numbers, is available on the USPTO website at http://www.uspto.gov , and appears periodically in the Official Gazette.  In addition, questions about fax numbers may be directed to the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199.

The USPTO does not formally acknowledge receipt of documents transmitted by fax, but USPTO fax machines will usually confirm to the sending unit that the transmission is complete.

Each fax machine location in the USPTO maintains a log comprising a collection of daily activity sheets recording all fax transmissions received.  These logs can be used as evidence of receipt in the USPTO, and may be used to reinstate applications and registrations.  The individual activity report that pertains to a particular transmission received in the USPTO is kept with the correspondence.

306.03 Effect of Filing by Fax

The filing date of correspondence received in the USPTO by fax, regardless of whether it contains a certificate of transmission, is the date that the complete transmission is received by a USPTO fax machine, unless the transmission is completed on a Saturday, Sunday, or Federal holiday within the District of Columbia.  Correspondence for which transmission is completed on a Saturday, Sunday, or Federal holiday within the District of Columbia is given a filing date as of the next succeeding day that is not a Saturday, Sunday, or Federal holiday within the District of Columbia.   37 C.F.R. §2.195(a)(3) .

For example, a 20-minute fax transmission to the USPTO from California starting on a Friday at 8:45 p.m. Pacific Time would be completed at 9:05 p.m. Pacific Time.  The complete transmission would be received in the USPTO at approximately 12:05 a.m. Eastern Time on Saturday.  The filing date accorded to the correspondence is the date of the following business day, which in this case would be Monday (assuming that Monday is not a Federal holiday within the District of Columbia).

The phrase “complete transmission” means that the transmission was received in its entirety.  For example, if page one of a ten-page fax transmission is received in the USPTO at 11:55 p.m. on a Tuesday and page ten of that transmission is received at 12:05 a.m. Wednesday, the filing date accorded to that correspondence will be the date of that Wednesday (assuming that Wednesday is not a Federal holiday within the District of Columbia).

If the sender wants the correspondence to be considered timely filed as of the date that the transmission began, the correspondence must include a certificate of transmission under 37 C.F.R. §2.197(a) .  See TMEP §306.05(c) regarding the effect of a certificate of transmission.

306.04 Procedure for Filing by Fax

Each fax transmission session should be limited to correspondence to be filed in a single application, registration, or other proceeding before the Office.  The application serial number, registration number, or proceeding number should be entered as a part of the sender’s identification on a fax cover sheet.   37 C.F.R. §2.195(c) .  Applicants should wait until an application serial number is assigned before filing any document related to a new application by fax.   See 37 C.F.R. §2.194(a) .

It is recommended that each transmission include a cover sheet that, in addition to stating the application serial number, registration number, or proceeding number, specifies the mark, the number of pages being transmitted, and the name, address, fax number, and telephone number of the transmitting party.

Each facsimile-transmitted document must be legible.  The preferred size of the document being submitted is 8½ inches by 11 inches, letter size, or A4 paper.  Because equipment used by the Office cannot print a document larger than 8½ inches by 11 inches, correspondence should not be transmitted on larger paper.

When correspondence is filed by fax transmission, it is recommended that the sending fax machine generate a report confirming transmission for each transmission session.  This report should be retained by the sender, along with the original correspondence, as evidence of content and date of transmission.

Unless specifically requested to do so by the Office, parties should not mail follow-up copies of documents transmitted by fax.   37 C.F.R. §2.193(g)(2) .  This can delay processing.

306.05 Certificate of Transmission Procedure

Trademark Rule 2.197, 37 C.F.R. §2.197 , provides a certificate of transmission procedure to avoid lateness when correspondence is faxed within the response period but is received in the USPTO after expiration of the response period, or not received, or lost within the USPTO.  The certificate of transmission procedure may be used for any correspondence that may be filed by fax.  See TMEP §306.01 regarding documents that may not be filed by fax.

Under the certificate of transmission procedure, certain correspondence will be considered to be timely filed even if received after the end of the filing period, if the correspondence is transmitted by fax to the USPTO before the expiration of the filing period and accompanied by a certificate attesting to the date of transmission.  The person signing the certificate certifies the expectation that the transmission would be initiated before midnight, local time, on the date specified.

Filers must retain a copy of the correspondence, including the signed and dated certificate.   See In re Sasson Licensing Corp., 35 USPQ2d 1510, 1512 (Comm’r Pats. 1995).

See TMEP §306.05(d) regarding the procedure for establishing the timely filing of correspondence that was faxed to the USPTO with a certificate of transmission under 37 C.F.R. §2.197 , but was lost or misplaced.

306.06 Requirements for Certificate of Transmission Strictly Enforced  

The requirements of 37 C.F.R. §2.197 are strictly enforced, and petitions to consider a document timely filed as of the date on the certificate are denied when a party fails to comply with these requirements.  A party’s inadvertent failure to comply with the requirements of a rule is not considered an extraordinary situation that would warrant waiver of the rule under 37 C.F.R. §2.146(a)(5) or §2.148 .   See TMEP §305.02(h) and cases cited therein.

401.01 Filing Receipts

TEAS Applications

When an application is filed electronically, the United States Patent and Trademark Office (“USPTO”) generally receives it within seconds after filing, and TEAS almost immediately displays a “Success” page that confirms receipt.  This page is evidence of filing should any question arise as to the application filing date, and may be printed or copied-and-pasted into an electronic record for storage.  TEAS also separately sends an e-mail acknowledgement of receipt, which includes a summary of the filed information and general processing information.  No paper filing receipt is sent by the USPTO to the applicant.

The applicant or its attorney should immediately review the summary of the filed information for accuracy.  If the information in the summary is inconsistent with the information transmitted by applicant, the applicant or attorney should notify the USPTO by sending an e-mail message to TEAS@uspto.gov.

Section 66(a) Applications

For §66(a) applications (i.e., requests for extensions of protection of international registrations to the United States), the USPTO sends a filing receipt to the correspondence address of record.  See TMEP §§1904.02(i) regarding the correspondence address in §66(a) applications.

The applicant or its attorney should review the information on the filing receipt for accuracy and notify the USPTO in writing of any discrepancy. A request for correction of a filing receipt should be directed to the Commissioner for Trademarks, P.O. Box 1451, Alexandria, Virginia 22313-1451, or sent via e-mail to TMfilingreceipt@uspto.gov. See TMEP §1904.13(b) regarding corrections to §66(a) applications.

Paper Applications Under §1 or §44

For paper applications under §1 or §44 of the Trademark Act, after an application has been given a filing date, a filing receipt is sent to the applicant.  The filing receipt identifies the following:  (1) the mark; (2) the application serial number, filing date, and register; (3) the type of mark (e.g., trademark or service mark); (4) the statutory basis or bases for filing, if provided at the time of filing; (5) the identification of goods and/or services, and international classes; (6) information about the applicant (and the applicant’s attorney, if provided); and (7) the address to be used for correspondence.  See TMEP §201 for further information about what constitutes the filing date.

The applicant or attorney should review the information on the filing receipt for accuracy and notify the USPTO in writing of any discrepancy.  A request for correction of a filing receipt should be directed to the Commissioner for Trademarks, P.O. Box 1451, Alexandria, Virginia  22313-1451, or sent via e-mail to TMfilingreceipt@uspto.gov .

An applicant should send a request for correction of a filing receipt only if the information on the filing receipt is inconsistent with the information in the application as filed.  If the applicant made an error in the application, the applicant should file an amendment rather than a request for correction of the filing receipt.  An electronic form for filing voluntary amendments is available through TEAS.   Note:  A voluntary amendment filed before the application is assigned to an examining attorney is placed in the record for consideration at the time the application is assigned and will not be examined out of order. Moreover, the mere filing of a voluntary amendment does not guarantee that the amendment will be accepted.  For example, the examining attorney will not accept a voluntary amendment that materially alters the mark shown on the original drawing, or that expands the scope of the goods and/or services in the original application.  See TMEP §702.01 for information on the order of examination, TMEP §807.14 regarding material alteration of a mark, and TMEP §§1402.07–1402.07(e) regarding the scope of the identification of goods and/or services for purposes of amendment.

401.02 Application Serial Numbers

Each application for registration is assigned an eight-digit serial number comprised of a two-digit series code and six additional numbers assigned by order of filing within the series code.  To ensure that a communication is correctly routed within the USPTO, applicants must include the entire eight-digit number on all communications related to a particular application.

As a general rule, the serial numbers of applications filed prior to the 1905 - 1920 Acts are preceded by the series code “70.”

Applications filed under the 1905 - 1920 Acts (i.e., applications filed through July 4, 1947) were preceded by the series code “71.”  The last serial number was 526,346.

As of July 5, 1947, applications were filed under the 1946 Act, beginning with number 526,500 and running through number 700,943 (preceded by the series code “71”).

On January 3, 1956, a new series of serial numbers preceded by the series code “72” was started, after a change in record-keeping methods.  This series ran through number 467,233, issued on August 31, 1973.

A new series of serial numbers preceded by the series code “73” began with applications filed on September 4, 1973, which was the first day of receipt of mail after the adoption of the international classification of goods and services as of September 1, 1973 ( see TMEP §1401.02 ).  

A new series of serial numbers preceded by the series code “74” began with applications filed on November 16, 1989, the date on which the Trademark Law Revision Act of 1988 took effect.

A new series of serial numbers preceded by the series code “75” began with applications filed on October 1, 1995.

A new series of serial numbers preceded by the series code “76” began with applications filed on March 20, 2000.

A series of serial numbers preceded by the series code “77” began September 14, 2006 for applications filed through TEAS on or after that date.

A series of serial numbers preceded by the series code “78” was used for TEAS applications filed prior to September 14, 2006.

A series of serial numbers preceded by the series code “85” began April 1, 2010 for all applications filed through TEAS on or after that date.

A series of serial numbers preceded by the series code “86” began July 1, 2013 for all applications filed through TEAS on or after that date.

A series of serial numbers preceded by the series code “87” began April 13, 2016 for all applications filed through TEAS on or after that date.

Effective November 2, 2003, a series of serial numbers preceded by the series code “79” is used for requests for extension of protection of international registrations to the United States under §66(a) of the Trademark Act.  

A range of serial numbers, beginning with number 975,000, is used for applications that are created through the “dividing” of an application ( see TMEP §§1110–1110.11(a) ).

See TMEP §§ 1205.01 and 1205.02 regarding series code “89.”

401.03 Data Entry

For applications filed through TEAS, the data provided by the applicant is loaded directly into the Trademark database.

For applications filed on paper, the application documents are scanned and the data is manually entered into the Trademark database, which is used by USPTO employees to obtain information about the location, status, prosecution history, ownership, and correspondence address for applications and registrations.  This information is available to the public through the Trademark Status and Document Retrieval (“TSDR”) database, available on the USPTO’s website at http://tsdr.uspto.gov/ .

401.04 Creation of Application Records

For TEAS applications, the USPTO maintains an electronic record containing all incoming and outgoing documents.   See TMEP §402.

For paper applications, the USPTO scans all incoming documents and creates an electronic record.  The USPTO also creates a paper file jacket and places all incoming documents into the file jacket.  The examining attorney works from the electronic record, and outgoing communications are put into the electronic record only.

All applications are electronically routed to the law offices.

402.01 USPTO No Longer Creates Paper Copies of Certain Trademark-Related Documents

Effective April 12, 2004, the USPTO no longer creates paper file copies of certain trademark-related documents that are submitted to the USPTO in electronic format.  Furthermore, the USPTO does not generate paper copies of certain trademark documents that the USPTO creates, except for copies that are sent to recipients by mail.  See New USPTO Policies Regarding (1) Generation of Paper Copies of Trademark-Related Documents and (2) Public Access to Existing Paper Copies of Trademark-Related Documents (TMOG Apr. 6, 2004), at http://www.uspto.gov/web/offices/com/sol/og/2004/week14/pattmcp.htm .

All these documents can be viewed through TICRS and TSDR.

The USPTO still provides certified paper copies of all trademark documents, upon request and payment of the appropriate fee.   See TMEP §111.

405.01 Credit Cards  

Under 37 C.F.R. §2.207 , the USPTO accepts payment of fees by credit card, subject to actual collection of the fee.

Any payment of a fee by credit card must be in writing.   37 C.F.R. §2.191 .  A form for authorizing charges to a credit card can be accessed through TEAS for all filings for which a filing fee is required.  Parties who file on paper can download a Credit Card Payment Form (PTO-2038) from the USPTO’s website at http://www.uspto.gov/ .  The USPTO does not put the Credit Card Payment Form in application or registration records.

A party is not required to use the USPTO’s Credit Card Payment Form when paying a fee by credit card.  However, if a party provides a credit card charge authorization in another form or document (e.g., in the body of an application, cover letter, response to an Office action, or other correspondence relating to a trademark application or registration), the credit card information becomes part of the public record.   See 37 C.F.R. §2.207(b) .

All credit card authorizations must include:  (1) a valid credit card number; (2) a valid expiration date; (3) the name of the cardholder with the cardholder’s signature and the date; (4) a billing address, including zip code; (5) a description and purpose of the payment; and (6) a specific payment amount.  See TMEP §§611.01–611.01(c) regarding signature of documents.

If a Credit Card Payment Form or other document authorizing the USPTO to charge a fee to a credit card does not contain the information necessary to charge the fee to the credit card, the form will be returned and the fee will not be processed.  USPTO employees will not accept oral instructions to complete the Credit Card Payment Form or otherwise charge a fee to a credit card.

The USPTO will only accept an authorization to charge a fee in a specific dollar amount to a credit card.

The USPTO currently accepts charges to the following credit cards:  AMERICAN EXPRESS®, DISCOVER®, MASTER CARD®, and VISA®.

Any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged.   37 C.F.R. §2.209(a) .

See notice at 65 Fed. Reg. 33452 (May 24, 2000), 1235 TMOG 38 (June 13, 2000).

See TMEP §405.06 regarding credit card authorizations that are refused or charged back by a financial institution.

405.02 Checks

Trademark Rule 2.207(a), 37 C.F.R. §2.207(a) , provides that:

All payments of money required in trademark cases, including fees for the processing of international trademark applications and registrations that are paid through the Office, shall be made in U.S. dollars and in the form of a cashier’s or certified check, Treasury note, national bank note, or United States Postal Service money order.  If sent in any other form, the Office may delay or cancel the credit until collection is made….

405.03 Deposit Accounts

A party cannot charge a fee to a deposit account unless he or she has prior authorization to do so.  The Office of Finance maintains a list of persons authorized to request transactions by deposit account.  The USPTO will not charge a fee to a deposit account unless the person requesting the charge appears on the authorized list or files a proper request to have his or her name added to the authorized list.

An authorization to charge a fee to a deposit account must be made in a written document signed and submitted by an authorized person.  It cannot be entered by examiner’s amendment unless the record contains a written authorization signed and submitted by an authorized person.  If there is no written authorization already in the record, the applicant may fax or e-mail the authorization to the examining attorney.

If an applicant submits an authorization to charge a filing fee to a deposit account that has insufficient funds to cover the fee, the applicant has not paid the fee.

If a deposit account has insufficient funds to cover an authorization to charge the initial filing fee for an application for registration, the USPTO will not grant a filing date to the application.   37 C.F.R. §2.21(a)(5) .   See TMEP §204.01 .

When a deposit account contains insufficient funds to cover a fee that has been authorized, the USPTO notifies the party who filed the authorization of the fee deficiency.  If the fee in question is statutory (e.g., the filing fee for a notice of appeal, statement of use, or request for extension of time to file a statement of use), the fee deficiency must be cured before the expiration of the statutory filing period.  If the deadline for filing the fee is not set by statute, the party who filed the authorization may cure the fee deficiency within the set period for response to the Office action.

A showing that the deposit account contained sufficient funds on the date on which the authorization was first filed, as opposed to the date on which USPTO personnel attempted to charge the fee, will not cure the fee deficiency.  Trademark Rule 2.208(a), 37 C.F.R. §2.208(a) , clearly requires that sufficient funds to cover all outstanding charge authorizations be on deposit at all times.  The funds must be available in the account at the time the authorization is presented for debiting.

See TMEP §1104.10(b)(vii) regarding fee deficiencies in amendments to allege use, TMEP §1108.02(c) regarding fee deficiencies in requests for extensions of time to file a statement of use, TMEP §1109.15(a) regarding fee deficiencies in statements of use, TMEP §1604.06(c) regarding fee deficiencies in affidavits under §8 of the Act, and TMEP §1606.05(c) regarding fee deficiencies in renewal applications.

405.04 Refunds

Under 35 U.S.C. §42(d)   and 37 C.F.R. §2.209 , only money paid by mistake or in excess (when a fee is not required by statute or rule, or is not required in the amount paid) may be refunded.  A mere change of purpose after the payment of money does not entitle a party to a refund.  For example, if a party deletes a class from an application, or decides that it no longer wishes to go forward with an application or appeal, the party is not entitled to a refund.

If an examining attorney or other USPTO employee erroneously requires a fee, the USPTO will refund the fee submitted in response to the erroneous requirement.

The USPTO will refund the filing fee for an application that is denied a filing date, or a filing fee that is untimely (e.g., the fee for a statement of use or request for an extension of time to file a statement of use filed after expiration of the statutory filing period).  However, after the USPTO has processed an application or other document, the USPTO will not refund the filing fee.  The USPTO will not refund an application filing fee when registration is refused, nor will it refund a fee when a timely filed document (such as a statement of use under 15 U.S.C. §1051(d)   or affidavit of use or excusable nonuse under 15 U.S.C. §1058)  is rejected for failure to meet the requirements of the statute and rules.

Refund requests should be sent to Mail Stop 16, Director of the USPTO, P.O. Box 1450, Alexandria, VA 22313-1450.

When a USPTO employee determines that a refund is appropriate, the employee must submit the request to the TMFinance e-mail box with the information necessary for processing the refund.

405.05 Electronic Funds Transfer

The Electronic Funds Transfer (“EFT”) payment method allows customers to send a payment over the Internet as easily as writing a check.  In general, the Automated Clearing House performs EFT transactions through the Federal Reserve system.  The customer must establish a User ID and Password.  For further information, see http://www.uspto.gov/teas/payment.htm .  

405.06 Payments Refused or Charged Back by Financial Institutions

If a check is returned unpaid, or an EFT or credit card is refused or charged back by a financial institution, the document that accompanied the payment is processed as though the fee had been omitted.   See In re Paulsen, 35 USPQ2d 1638, 1639 (Comm’r Pats. 1995).  If the document included an authorization to charge deficient fees to a deposit account (37 C.F.R. §2.208) that has sufficient funds to cover the fee, the USPTO charges the fee in question, together with a fee for processing the payment that was refused, to the deposit account.

If the document was not accompanied by an authorization to charge fees to a deposit account, the USPTO notifies the party who filed the document of the fee deficiency in a written action.  If the deadline for filing the fee is not set by statute, the fee may be resubmitted within the period set for response to the Office action.  If the fee in question is statutory (e.g., a filing fee for an appeal, statement of use, or request for extension of time to file a statement of use), the fee must be resubmitted before the expiration of the statutory filing period.

Under 37 C.F.R §2.6(b)(10) , there is a fee for processing any payment that is refused or charged back by a financial institution.  This fee covers the work done by USPTO personnel in processing the payment that is refused or charged back.  The requirement for submission of the processing fee is strictly enforced.  The USPTO will not approve a pending application for publication or registration, or take any other requested action in an application or registration, until all outstanding fees, including the processing fee, have been paid.  Any request for waiver of this processing fee should be referred to the Office of the Deputy Commissioner for Trademark Examination Policy.

See TMEP §§202.03(a) and 202.03(a)(i) regarding the processing of an application in which the application filing fee payment is refused or charged back by a financial institution, TMEP §1104.10(b)(vii) regarding fee deficiencies in amendments to allege use, TMEP §1108.02(c) regarding fee deficiencies in requests for extensions of time to file a statement of use, TMEP §1109.15(a) regarding fee deficiencies in statements of use, TMEP §1604.06(c) regarding fee deficiencies in affidavits under §8 of the Act, and TMEP §1606.05(c) regarding fee deficiencies in renewal applications.

501.01 Assignability of Marks in Applications and Registrations

501.02 Assignments Must Be in Writing  

501.03 Effect of Failure to Record Assignment  

See TMEP §503 regarding the recordation of assignments in the Assignment Recordation Branch of the USPTO.

501.04 Foreign Assignee May Designate Domestic Representative

An assignee not domiciled in the United States may designate, by a document filed with the USPTO, the name and address of a domestic representative.   15 U.S.C. §§1051(e) ,  1058(f) , 1059(c) , and 1060(b) ; 37 C.F.R. §3.61 ; TMEP §610 .  The USPTO encourages assignees who do not reside in the United States to designate domestic representatives.

When an assignee designates a domestic representative, the designation should be in a document separate from the assignment document.  One copy of the designation of domestic representative should be sent to the Assignment Recordation Branch with the document to be recorded.  In addition, the assignee should send a separate copy of the designation to the Trademark Branch of the USPTO (“Trademark Operation”) for each registration or application to which an assignment pertains, so that a copy of the designation can be entered in each official record that is identified in the assignment document.   37 C.F.R. §2.193(g) .

501.05 Assignee Stands in Place of Applicant or Registrant

An assignee, like an applicant, must be a natural or juristic person.   See 15 U.S.C. §1127 and TMEP §803.

501.06 Partial Assignments

A trademark may be owned by two or more persons ( see TMEP §803.03(d) ), and a co-owner may assign his or her interest in a mark.  Also, a party who is the sole owner of a mark may transfer a portion (e.g. , 50%) of his or her interest in the mark to another party.

A trademark owner may also assign a separate portion of a business, together with the good will and trademarks associated with that portion of the business, but retain rights in the mark for uses pertaining to another part of the business.   See VISA, U.S.A., Inc. v. Birmingham Trust Nat'l Bank, 696 F.2d 1371, 216 USPQ 649 (Fed. Cir. 1982), cert. denied, 464 U.S. 826, 220 USPQ 385 (1983).  Accordingly, one or more trademarks of a company can be validly assigned if the assignor transfers the good will associated with only some of the goods/services on which that mark appears.  After a registration has been assigned with respect to only some of the goods/services, both owners must file the necessary renewal applications and affidavits of continued use or excusable nonuse under 15 U.S.C. §1058 or §1141k to maintain the registration.  If only one party files, only those goods/services in the registration for which that party owns the mark are continued or renewed.  See TMEP §§1604.11 and TMEP §1613.05 regarding affidavits of continued use or excusable nonuse, and TMEP §§1606 and 1614 regarding renewal.  

A trademark owner may not use an assignment to impose geographic restrictions on a registration.  This must be done by way of a concurrent use proceeding before the Trademark Trial and Appeal Board, or pursuant to a final determination by a federal court.   15 U.S.C. §1052(d) .  See TMEP §1207.04 and Trademark Trial and Appeal Board Manual of Procedure (“TBMP”)  Chapter 1100 regarding concurrent use registration.  However, the Assignment Recordation Branch of the USPTO will record an assignment purporting to transfer rights in an unrestricted registration for less than the entire United States, because it is a transfer that may affect title to the registration.  As noted in TMEP §503.01(c) , the Assignment Recordation Branch does not examine the substance of documents submitted for recording.  The act of recording the document is not a determination of the validity or effect of the purported assignment and does not create a concurrent use registration.

A trademark owner who files a partial assignment is strongly encouraged to file a separate request to divide so that the USPTO can more effectively track and administer applications and post registration filings, and ensure that USPTO records accurately reflect current ownership information.  In pending applications in which a partial assignment and a request to divide are filed, the ITU/Divisional Unit will process the request to divide and ensure that the USPTO records reflect current ownership information.  Because the assignment records of the parent application do not appear in the newly created child application, the ITU staff will place a copy of the Trademark Assignment Abstract of Title for the parent application in the trademark records of the child application.  The abstract will be viewable via the Trademark Image Capture Retrieval System (“TICRS”) and the Trademark Status and Document Retrieval (“TSDR”) portal on the USPTO website at http://tsdr.uspto.gov/ .  The assignment information in the parent application will remain accessible via the Assignment database on the USPTO website at http://assignments.uspto.gov/assignments .  After the request to divide is processed and the child application is created, any new recordations in the child application will appear in the Assignment database.  See TMEP §1615 regarding requests to divide registrations in which ownership has changed with respect to some but not all of the goods/services, and TMEP §1110 regarding request to divide pending applications.

501.07 Assignment of Extension of Protection of International Registration to the United States

Under §72 of the Trademark Act, 15 U.S.C. §1141l , an extension of protection of an international registration to the United States may be assigned, together with the goodwill associated with the mark, only to a person who is a national of, is domiciled in, or has a bona fide and effective industrial or commercial establishment in a country that is a party to the Madrid Protocol (or in a country that is a member of an intergovernmental organization that is a party to the Madrid Protocol).

Because the extension of protection remains part of the international registration, assignments of extensions of protection to the United States must be recorded at the International Bureau of the World Intellectual Property Organization (“IB”).  The IB will notify the USPTO of any changes in ownership, including changes in owner name, recorded in the International Register.  The USPTO will record only those assignments (or other documents affecting title) that have been recorded in the International Register, and will automatically update the USPTO’s Trademark database to reflect these changes.

See TMEP §§1906.01 and 1906.01(a) for information about recording changes of ownership of international registrations with the IB.

Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to assignments of international registrations or extensions of protection to the United States.   37 C.F.R. §7.22 .

See TMEP §§1110.11 and 1615.02 regarding division of an extension of protection to the United States after ownership of an international registration has changed with respect to some, but not all, of the goods/services.

502.01 Establishing the Right to Take Action in Application or Registration

Applications and Registrations Based on §§1 and 44 of the Trademark Act.  In an application or registration based on §1 or §44 of the Trademark Act, when a party other than the owner of record attempts to take an action with respect to an application or registration (e.g., filing a response to an Office action, allegation of use under 15 U.S.C. §1051(c) or §1051(d) , request for an extension of time to file a statement of use under 15 U.S.C. §1051(d)(2) ,  affidavit of continued use or excusable nonuse under 15 U.S.C. §1058 (“§8 affidavit”), or renewal application under 15 U.S.C. §1059   (“§9 renewal application”)), the party must establish ownership of the application or registration.  To establish ownership, the new owner must either:  (1) record the assignment (or other document affecting title) with the Assignment Recordation Branch of the USPTO, and notify the Trademark Operation that the document has been recorded; or (2) submit other evidence of ownership, in the form of a document transferring ownership from one party to another, or an explanation, in the form of an affidavit or declaration under 37 C.F.R. §2.20 , that a valid transfer of legal title has occurred.   37 C.F.R. §3.73(b)(1) .  The document(s) must show clear chain of title from the original owner to the party who is taking the action.

See 37 C.F.R. §3.85 and TMEP §§502.02(a) and 502.03 regarding issuance of a certificate of registration in the name of a new owner.

Section 66(a) Applications and Registered Extensions of Protection.  In an application under §66(a) of the Trademark Act or a registered extension of protection, the new owner must record the assignment with the IB in order to take an action with respect to an application or registration.  The new owner does not have the option of submitting documentary evidence of ownership pursuant to 37 C.F.R. §3.73(b) . 37 C.F.R. §7.22

The IB will notify the USPTO of any changes in ownership, including changes in owner name, recorded in the International Register.  The USPTO will record only those assignments (or other documents affecting title) that have been recorded in the International Register.  See TMEP §501.07 for further information about assignment of extensions of protection of international registrations, and TMEP §§1906.01 and 1906.01(a) for information about recording changes of ownership of international registrations with the IB.  The document(s) must show clear chain of title from the original owner to the party who is taking the action. 37 C.F.R. §3.73(b)(1) .

Part 3 of 37 C.F.R. does not apply to §66(a) applications and registered extensions of protection.   37 C.F.R. §7.22 .  

502.02 Pending Applications - Issuance of Registration Certificate in Name of Assignee or in Applicant’s New Name

502.03 Issuance of New Certificate to Assignee of Registrant

Registrations Under §§ 1 and 44 of the Trademark Act.  In registrations that issued based on applications under §1 or §44 of the Trademark Act, the USPTO will issue a new certificate of registration of the mark for the unexpired part of the registration period in the name of the new owner (or in the registrant’s new name), if the new owner/registrant:  (1) records the appropriate document (e.g., assignment document, change of name) with the Assignment Recordation Branch; (2) files a written request that a certificate of registration be issued in the new owner’s name; and(3) pays the required fee ( 37 C.F.R. §§2.6(a)(8) and 3.41).  The new owner, someone with legal authority to bind the new owner (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under 37 C.F.R. §11.14 (“qualified practitioner”) must sign the request for a new certificate.   15 U.S.C. §1057(d) ; 37 C.F.R. §§2.171(a) and 3.85 .  The recorded document(s) must show clear chain of title from the original registrant to the party requesting issuance of a new certificate.  See TMEP §503.03 regarding the requirements for recording.

Upon request and payment of the appropriate fee ( see TMEP §111 ), the Document Services Branch of the USPTO will provide a certified copy of the registration that reflects ownership according to the records shown in the Assignment database.  The certified copy will not show any transfer of ownership that has not been recorded with the Assignment Recordation Branch.

See TMEP §1604.07(c) regarding the issuance of a notification of acceptance of a §8 affidavit in the name of the new owner of a registration, and TMEP §1606.06 regarding renewal in the name of the new owner.

Registered Extensions of Protection of International Registrations to the United States .  In a registered extension of protection, the new owner must record the assignment, change of name, or other document affecting title with the IB.   See TMEP §501.07 regarding assignment of registered extensions of protection, and TMEP §§1906.01 and 1906.01(a) regarding requests to record changes in the International Register.  The IB will notify the USPTO when the change of ownership, including a change of owner name, is recorded in the International Register, and the USPTO will record the change in the Assignment database and update the “Ownership” field in the Trademark database.  The USPTO will record only those assignments (or other documents affecting title) that have been recorded in the International Register.  The recorded document(s) must show clear chain of title from the original owner to the party requesting issuance of a new certificate.

The USPTO will issue a new certificate of registration of the mark for the unexpired part of the registration period in the name of the new owner, if the new owner:  (1) records the appropriate document (e.g., assignment document, change of name certificate) with the IB; (2) files a written request with the Assignment Recordation Branch that a certificate of registration be issued in the new owner’s name; and(3) pays the required fee ( 37 C.F.R. §2.6(a)(8) ).  The new owner, someone with legal authority to bind the new owner (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner must sign the request for a new certificate.   15 U.S.C. §1057(d) ; 37 C.F.R. §2.171(a) .

Upon request and payment of the appropriate fee ( see TMEP §111 ), the Document Services Branch of the USPTO will provide a certified copy of the registration that reflects ownership according to the records shown in the Assignment database.  The certified copy will not show any transfer of ownership that has not been recorded with the IB.

Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to assignments of an international registration.   37 C.F.R. §7.22 .

503.01 Effect of Recording a Document

503.02 Documents that the Office Will Record

The USPTO records assignments of trademark applications and registrations, accompanied by completed cover sheets.  The USPTO also records documents that affect title to a trademark application or registration, such as certificates issued by appropriate authorities showing a change of name of a business or a merger of businesses.  Although a mere change of name does not constitute a change of legal entity, it is a proper link in the chain of title.  Documents of merger are also proper links in the chain of title.

Some instruments that relate to registered marks or to marks in pending applications may be recorded, even though they do not constitute a transfer or change of title to the mark or do not convey the entire title or interest in the business in which the mark is used.  Typically, these instruments are license agreements, security agreements, and agreements between parties limiting future extension of use of a mark with regard to the goods/services or other circumstances of use.  These instruments are recorded to give third parties notification of equitable interests or other matters relevant to the ownership of a mark.

The USPTO may also record a partial assignment of an interest in a mark.   See TMEP §501.06 .

In an application under §66 of the Trademark Act or a registered extension of protection, the new owner must record any change of ownership, including a change of owner name, with the IB, who will record the change in the International Register and notify the USPTO accordingly.  The USPTO will record only those assignments (or other documents affecting title) that have been recorded in the International Register.  See TMEP §§1906.01 and 1906.01(a) for information about recording changes of ownership of international registrations with the IB.  Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to assignments of §66(a) applications and registered extensions of protection.   37 C.F.R. §7.22 .   See TMEP §501.07 .

503.03 Requirements for Recording

503.04 Address for Submitting Documents for Recording

To expedite recordation, new owners are encouraged to file requests to record documents with the Assignment Recordation Branch electronically through ETAS, on the USPTO website, at http://etas.uspto.gov .  Paper documents and cover sheets to be recorded in the Assignment Recordation Branch should be sent to Mail Stop Assignment Recordation Branch, Director of the United States Patent and Trademark Office, P. O. Box 1450, Alexandria VA  22313-1450.   37 C.F.R. §§2.190(c) , 3.27 .

503.05 Recording Procedure and Recordation Date

Applications and Registrations Under §§1 and 44 of the Trademark Act.  The recording of documents in the Assignment Recordation Branch of the USPTO is governed by 37 C.F.R. Part 3.

To expedite recordation, new owners are encouraged to file requests for recordation electronically through ETAS, on the USPTO website, at http://etas.uspto.gov .  Using ETAS, a new owner can create and submit a Trademark Assignment Recordation Form Cover Sheet by completing an online form, and attach the supporting legal documentation as a TIFF image or PDF document for submission via the Internet.  Documents filed electronically are recorded much faster than paper documents.  

The date of recordation is the date that the USPTO receives a document meeting the requirements for recording.   See 37 C.F.R. §3.51 . A document that fails to meet the identification requirements in 37 C.F.R. §3.31will not be recorded. Id. Documents not meeting other requirements for recording, e.g., missing a completed cover sheet, will retain the original filing date if the corrected documents are resubmitted within the timeframe specified in the letter returning the documents for correction. Id.

The party recording the document should carefully review the document and cover sheet for accuracy and completeness.  The USPTO only examines the materials submitted for form, to determine whether the requirements for recording ( see TMEP §§503.03(a))-503.03(e) ) have been met.

If the materials submitted meet the requirements for recordation, the Assignment Recordation Branch will record the document and cover sheet.  Only the data specified on the cover sheet will be entered in the Assignment database.  After recording the document and cover sheet, the USPTO will issue a notice of recordation that reflects the data as recorded in the Assignment database.  The party recording the document should carefully review the notice of recordation.  See TMEP §§503.06(a)-503.06(f) regarding correction of errors in a cover sheet or recorded document.

Under 37 C.F.R. §3.51 , the USPTO will return documents that do not meet the requirements for recording (e.g., documents submitted without a completed cover sheet, the appropriate fee, or an English translation, where applicable) to the sender for correction.  The returned documents, stamped with the original date of receipt in the USPTO, will be accompanied by a notice of non-recordation indicating that, if the returned documents are corrected and resubmitted to the USPTO within a specified period of time, the USPTO will assign the original filing date of the documents as the recordation date.  The USPTO will not extend the time period specified in the letter.  If the returned documents are corrected and resubmitted afterthe time specified in the letter, the recordation date is the date on which the USPTO receives corrected documents that meet the requirements for recording.  The certificate of mailing and transmission procedures of 37 C.F.R. §2.197 and the Priority Mail Express® procedure of 37 C.F.R. §2.198 may be used for resubmitting the returned documents, to avoid lateness due to mail delay.

If documents submitted for recording are returned unrecorded by the Assignment Recordation Branch, and the submitter believes that the documents were returned in error, he or she may file a petition to the Director under 37 C.F.R. §2.146 .  See TMEP §§1702 through 1708 regarding petitions.

Applicants and registrants can search the Assignment database at Assignments on the Web to determine whether an assignment has been recorded.

Section 66(a) Applications and Registered Extensions of Protection.  In an application under §66(a) of the Trademark Act or a registered extension of protection, the IB will notify the USPTO of any changes in ownership, including a change of owner name, recorded in the International Register, and of the date of recordation.  The USPTO will record only those assignments (or other documents affecting title) that have been recorded in the International Register.  See TMEP §501.07 for further information about assignment of §66(a) applications and registered extensions of protection, and TMEP §§1906.01 and 1906.01(a) for information about recording changes of ownership of international registrations with the IB.

Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to assignments of an international registration.   37 C.F.R. §7.22 .

503.06 Correction of Errors in Cover Sheet or Recorded Document

Once a document is recorded with the Assignment Recordation Branch, the Assignment Recordation Branch will not remove the document from the record relating to that application or registration.   See TMEP §503.06(e) .

During the recording process, the Assignment Recordation Branch will check to see that a trademark cover sheet is complete and record the data exactly as it appears on the cover sheet.  Once the document is recorded, the USPTO will issue a notice of recordation.

The party recording the document should carefully review the notice of recordation.

Typographical errors made by the USPTO will be corrected promptly and without charge upon written request directed to the Assignment Recordation Branch.  For any other error, the party recording the document is responsible for filing the documents and paying the recordation fees necessary to correct the error, using the procedures set forth in TMEP §§503.06(a) through 503.06(d) .

In an application under §66(a) of the Trademark Act or a registered extension of protection, any request to correct an error in a document recorded with the IB must be corrected at the IB.  Such a request cannot be sent to the IB through the USPTO.  See TMEP §§1906.01-1906.01(i) for information about requests to record changes in the International Register.

503.07 “Indexing” Against Recorded Document Not Permitted

The USPTO does not process requests for “indexing” or “cross-referencing” additional trademark registration numbers or application serial numbers against a document previously recorded in the Assignment Recordation Branch.

Therefore, even when an assignment document (or other document affecting title) has already been recorded in the Assignment Recordation Branch in connection with a trademark application or registration, a party who wants to record that document against additional applications or registrations must submit the following:

• (1) A copy of the originally recorded assignment document (or other document affecting title), a copy of an extract from the recorded document evidencing the effect on title, or a statement signed by both the party conveying the interest and the party receiving the interest explaining how the conveyance affects title (this may comprise a copy of the previously recorded documents on which the Assignment Recordation Branch has stamped the reel and frame numbers at which they are recorded);
• (2) A completed cover sheet ( see TMEP §503.03(e)) that includes the number of each additional registration and/or application against which recordation of the assignment document (or other document affecting title) is requested; and
• (3) The appropriate recording fee ( 37 C.F.R. §§2.6 and 3.41 ).

The USPTO will assign a new date of recordation for the additional applications or registrations, update the Assignment database, and create an electronic record of the cover sheet and assignment document (or other document affecting title), which will become part of the official record.   See 1157 TMOG 12 (Dec. 7, 1993).

503.08 Accessibility of Assignment Records

The Assignment Recordation Branch of the USPTO maintains separate records for patents and trademarks.   15 U.S.C. §1060(a)(5) ; 37 C.F.R. §2.200(a)(1) .

The public can search the trademark assignment records of the Assignment Recordation Branch on the USPTO website at http://assignments.uspto.gov/assignments/q?db=tm.

Assignments of trademark applications and registrations are open to public inspection upon recordation in the Assignment Recordation Branch.  See 37 C.F.R. §3.31(b) and TMEP §503.03(e) regarding the submission of separate cover sheets for documents that include interests in, or transactions involving, both patents and trademarks.

Before 1955, documents were recorded in bound volumes.  The location of documents in these volumes is designated by “liber and page,” that is, by the number of the book (liber) and the number of the page in the book.  Since 1955, documents have been recorded on microfilm, and are available for immediate inspection in the Trademark Assignment Search Room.  The location of these documents is designated by “reel and frame,” that is, by the number of the reel on which they are microfilmed and the number of the frame on the reel.

All assignment records related to pre-1955 trademark records were transferred to the National Archives and Records Administration (“NARA”) in 1990.  The USPTO still maintains records of all trademark assignments recorded on or after January 1, 1955.

All trademark assignment records from 1837 to December 31, 1954 are maintained and available for public inspection in the National Archives Research Room located at the Washington National Records Center Building, 4205 Suitland Road, Suitland, Maryland 20746.  Assignments recorded before 1837 are maintained at the National Archives and Records Administration, 841 South Pickett Street, Alexandria, Virginia 22304.

Copies of assignment records recorded on or after January 1, 1955 may be ordered from the USPTO upon payment of the fee required by 37 C.F.R. §2.6 .  An order for a copy of an assignment record should identify the reel and frame at which it is recorded in the Assignment Recordation Branch.  If the correct reel and frame numbers are not identified (e.g., the order identifies the document only by the name of the registrant and the number of the registration, or by the name of the applicant and the serial number of the application), the USPTO will charge an additional fee for the time spent searching for the document.

Requests for copies of pre-1955 trademark assignment records should be directed to NARA.  Payment of the fees required by NARA should accompany all requests for copies.   37 C.F.R. §2.200(a)(2) .

504.01 Circumstances in Which Trademark Database Will Not Be Automatically Updated

In the circumstances discussed below, the USPTO will not automatically update the Trademark database to show the change in ownership.  In these situations, the applicant must separately notify the Trademark Operation in writing that the assignment or other title document has been recorded, and request that the Trademark database be updated to show title in the new owner.   37 C.F.R. §3.85 ; TMEP §§502.02(a)-502.02(b) and 502.03 .  See TMEP §505.01 regarding requests to update ownership information in pending applications and TMEP § 505.02 regarding requests to update ownership information after registration.

• (1) Execution Date Conflicts with Previously Recorded Document.  If a previously recorded assignment, merger, change of name, or any other recorded document for the same application or registration has an execution date that is the same as or later than the execution date of the subsequently recorded document, the Trademark database will not be automatically updated.  Office personnel will have to review the assignment records and update the database manually.

  Note - Filing Multiple Assignments with the Same Execution Date on the Same Date :  When requests to record multiple assignments (or other documents transferring title) with the same execution date are filed on the same date, the ownership information in the Trademark database is not automatically updated.  Office personnel must manually update the ownership information after reviewing the entire chain of title to identify the proper owner. This review is done when a written request to update ownership information is filed in accordance with TMEP §505 . Therefore, information regarding the proper order of the multiple transfers should be included in the written request to the Trademark Operation so that proper chain of title may be determined and the ownership record updated accordingly in the Trademark database.

• (2) Blackout Period:  Ownership of Pending Applications and Registrations Cannot be Updated During Certain Time Periods.  The Trademark database cannot be automatically updated to show a change of ownership in the following circumstances:
  • (a) For §§1(a) and 44 applications:
    • Approximately three weeks before the application is scheduled to publish in the Trademark Official Gazette; and
    • Approximately three weeks before the application is scheduled to issue.
  • (b) For §1(b) applications:
    • Approximately three weeks before the application is scheduled to publish in the Trademark Official Gazette;
    • Approximately three weeks before the Notice of Allowance is scheduled to issue; and
    • After the SOU is accepted, approximately three weeks before the registration is scheduled to issue.

In addition, for all applications and registrations, the database cannot be automatically updated if the application or registration is involved in a Trademark Trial and Appeal Board (TTAB) proceeding, or for pending applications, if a notice of extension of time to file an opposition has been filed with the TTAB.

• (3) Maximum Number of Ownership Changes.  The Trademark database will not be automatically updated if the maximum number of ownership changes permitted for the following time periods has been reached:
  • Prior to publication – up to nine changes of ownership.
  • Between publication and registration – up to nine additional changes of ownership.

In the situations described above, new owners must file a written request with the Trademark Operation, as set forth in TMEP §505 , to have the Trademark database updated or, if there is a TTAB proceeding, the request should be filed with the TTAB. See TMEP §504 regarding the types of assignment documents for which the USPTO will automatically update the ownership information in the Trademark database.

504.02 Processing Time for Automatic Updating

Recording a change of ownership does not simultaneously and automatically update the Trademark database with the new owner information. The process for automatically updating the Trademark database requires that the Assignment Recordation Branch:  (1) record the document transferring title in the Assignment database; and (2) extract the trademark assignment information from the Assignment database and send it electronically to the Trademark Operation for automatic updating.  The Assignment Recordation Branch will extract trademark assignment information from the Assignment database and transmit it to the Trademark Operation once a week.

To expedite recordation with the Assignment Recordation Branch, new owners are encouraged to file requests for recordation electronically through ETAS on the USPTO website, at http://etas.uspto.gov .

If a trademark owner wants the Trademark database updated within a certain time frame, and there is insufficient time for the Assignment Recordation Branch to process a recently recorded title document for automatic updating, the owner should notify the Trademark Operation in writing of the change of ownership.   37 C.F.R. §3.85 ; TMEP §§502.02(a)-502.02(b) and 502.03 .  Trademark owners can search the Assignment Recordation Branch’s database at Assignments on the Web to determine whether an assignment has been recorded, and can check TSDR at http://tsdr.uspto.gov/ to determine whether the Trademark database has been updated.

504.03 Correction to Automatic Update - Last Recorded Owner Does Not Have Clear Chain of Title

In the situations set forth in TMEP §504 , the Trademark database will be automatically updated to show the last recorded owner regardless of whether the Assignment database shows that the last recorded owner has clear chain of title.  If the Trademark database is automatically updated to show ownership of an application or registration in a party who does not have clear chain of title as evidenced by the Assignment database, the owner of the application or registration may file a written request to have the “Ownership” field in the Trademark database corrected.  The USPTO will grant a request for correction of the “Ownership” field if:

• (1) The Trademark database was automatically updated to show ownership in a party who does not have clear chain of title according to the Assignment database; and
• (2) At the time the Trademark database was automatically updated in the name of the incorrect party, the Assignment database showed clear chain of title in the party requesting correction of the “Ownership” field in the Trademark database.

The correction of the Trademark database will not be automatically reflected in the Assignment database.  To correct the assignment records, a party must follow the procedures set forth in TMEP §§503.06-503.06(f) for correcting errors in the Assignment database.

In all other situations, a party requesting correction of the ownership records of the Trademark Operation must follow the procedures for correcting errors in recorded documents or cover sheets, as set forth in TMEP §§503.06-503.06(f) .  That is, the party must first file corrective documents with the Assignment Recordation Branch, pay the recordation fees necessary to correct the error, and notify the Trademark Operation in writing that the corrective documents have been recorded.

Prior to registration, a request for correction of the “Ownership” field in the Trademark database should be made in an amendment directed to the examining attorney.  If such a request is filed after publication, it will be handled in accordance with standard procedures for processing amendments after publication, as set forth in TMEP §§1505.01(a)-1505.01(f) .  In a §1(b) application, if a request for correction of the “Ownership” field is filed between the issuance of the notice of allowance and the submission of a statement of use, such a request may be entered during this period with the express permission of the Director, after consideration on petition under 37 C.F.R. §2.146 . Alternatively, the request can be made when filing the statement of use or a request for extension of time for filing a statement of use.   See 37 C.F.R. §§2.77 , 2.146 ; TMEP §§1107–1107.01.

After registration, a request for correction of the “Ownership” field should be submitted in writing to the Post Registration Section in the form of a request for correction under §7(g) of the Trademark Act and 37 C.F.R. §2.174 .  See TMEP §505.02 regarding proper procedures for requests to update ownership information for registrations.

504.04 Automatic Updating Does Not Apply to §66(a) Applications and Registered Extensions of Protection

The procedures discussed in TMEP §§504.01 through 504.03 do not apply to §66(a) applications and registered extensions of protection of international registrations to the United States.  Changes of ownership, including a change of owner name, of international registrations and requests for extensions of protection of international registrations to the United States must be recorded with the IB.  The USPTO will record only those assignments (or other documents of title) that have been recorded in the International Register.  The USPTO's Trademark database will be automatically updated to reflect any change of ownership that is recorded in the International Register.  See TMEP §501.07 for further information about assignment of §66(a) applications and registered extensions of protection, and TMEP §§1906.01 and 1906.01(a) for information about recording changes of ownership of international registrations with the IB.

505.01 Request to Update Ownership Information in Pending Application

Prior to registration, a request to update the ownership information in the Trademark database should be made in writing and directed to the examining attorney. To expedite processing, new owners are encouraged to file the request online using the Trademark Electronic Application System (“TEAS”), available on the USPTO website at http://www.uspto.gov/trademarks/teas/ . To notify the Trademark Operation of a request before an application is approved for publication, the request may be submitted using the TEAS form entitled “Voluntary Amendment Not in Response to USPTO Office Action/Letter.” If such a request is filed after an application is published for opposition but before the notice of allowance or registration has issued, it may be submitted using the TEAS form entitled “Post-Approval/Publication/Post-Notice of Allowance (NOA) Amendment Form,” and will be handled in accordance with standard procedures for processing amendments after publication, as set forth in TMEP §§1505.01(a)-1505.01(f) . If a proceeding regarding the application has been initiated at the TTAB, the request to update ownership information should be filed with the TTAB.  

In a §1(b) application, after issuance of the notice of allowance, if the Trademark database has not been automatically updated, the notification of the change in ownership should be made when filing the statement of use or a request for extension of time for filing a statement of use. See 37 C.F.R. §2.77 ; TMEP §1107. To update the Trademark database prior to submitting these documents, the applicant may file a petition to the Director pursuant to Trademark Rule 2.146 to allow the change to be entered. See 37 C.F.R. §§2.77(b) , 2.146 TMEP §§1107-1107.01 .

See TMEP §§ 502.02(a) and (b) regarding issuance of a certificate of registration in the name of the new owner.

505.02 Request to Update Ownership Information After Registration

If the new owner does not identify the assignment conveyance document properly (see TMEP §504 ), or in the situations described in TMEP §504.01 , the Trademark database will not automatically update to show the changes in ownership. To have the Trademark database updated, the new owner must either:  (1) file a written request to amend the registration pursuant to §7(d) of the Trademark Act, 15 U.S.C. §1057(d) ;  or (2) include the new owner information when submitting a post registration maintenance filing pursuant to §8 or §9 of the Trademark Act, 15 U.S.C. §1058   or §1059 .

The TEAS form entitled “Section 7 Request for Amendment or Correction of Registration Certificate” should be used to file the request to update the ownership information in the Trademark database. See TMEP §502.03 regarding issuance of a new certificate in the name of the new owner. Thus, if the new owner of the registration is not taking a post registration action, such as filing a §8 affidavit, and wishes to update the ownership records, the owner must:

• (1)  Record the appropriate document (e.g., assignment, change of name) with the Assignment Recordation Branch;
• (2) File a written request that the Trademark database be updated under §7(d), signed by the new owner, someone with legal authority to bind the new owner (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner; and
• (3) Pay the required fee ( 37 C.F.R. §§2.6(a)(8) and 3.41).

15 U.S.C. §1057(d) ;  37 C.F.R. §§2.171(a) and 3.85 .  If a proceeding regarding the application has been initiated at the TTAB, the request to update ownership information should be filed with the TTAB. The USPTO’s Trademark records must show clear chain of title from the original registrant to the new owner.   See TMEP §502.03 .

601.01 USPTO Cannot Aid in Selection of an Attorney

The USPTO cannot aid in the selection of a qualified practitioner.   37 C.F.R. §2.11 .

If it is apparent that an applicant or registrant is unfamiliar with the procedures for prosecuting an application or maintaining a registration and needs more detailed or technical assistance than the USPTO staff is permitted to give, the USPTO staff may suggest that it may be desirable to employ an attorney who is familiar with trademark matters.  The following is an example of language that may be used in the Office action:

The applicant may wish to hire a trademark attorney because of the technicalities involved in the application.  The United States Patent and Trademark Office cannot aid in the selection of an attorney.   37 C.F.R. §2.11 .

601.02 Communications with Applicant or Registrant Who Is Represented by an Attorney

If an applicant or registrant is represented by a qualified practitioner, the USPTO will conduct business only with the practitioner, unless that representation is terminated.   37 C.F.R. §2.18(a)(7) .  If the applicant or registrant contacts the USPTO regarding the application or registration, he or she will be advised that the USPTO will only conduct business with the qualified practitioner.  USPTO employees may answer general questions about the application or registration record and the procedures for obtaining and maintaining a registration, and are encouraged to refer the applicant or registrant to publicly available information on the USPTO’s website.  See TMEP §1805 regarding general inquiries from the public.

An applicant or registrant may not authorize an examiner’s amendment or change of correspondence address, and the USPTO will not accept responses or amendments signed by the applicant or registrant if there is a qualified practitioner of record. See 37 C.F.R. §2.18(a)(7) .  See TMEP §§611–611.06(h) regarding signature of documents filed in the USPTO.

An applicant or registrant may revoke the authority of a qualified practitioner to represent the applicant or registrant. 37 C.F.R. §2.19(a)(1) . An applicant or registrant who wishes to revoke the power of attorney should be encouraged to file the revocation through the Trademark Electronic Application System (“TEAS”).  See TMEP §606 regarding revocation of power of attorney.

See TMEP §604.03 regarding changes of attorney, TMEP §604.02 regarding the duration of recognition as a representative, and  TBMP §§114–114.08 regarding representation of parties to proceedings before the Board.

602.01 Attorneys Licensed to Practice in the United States

An attorney who is a member in good standing of the bar of the highest court of a state in the United States (which includes the District of Columbia and any Commonwealth or territory of the United States) may practice before the USPTO in trademark matters.   37 C.F.R. §§2.17(a) , 11.1 (definitions of Attorney and State), 11.14(a) .  No application for recognition to practice before the USPTO is necessary.  The USPTO does not give an examination for eligibility or maintain a register of United States attorneys entitled to practice in trademark cases.  An attorney meeting the requirements of 37 C.F.R §11.14 who files a power of attorney pursuant to 37 C.F.R. §2.17(c) ,appears in person, or signs a document on behalf of an applicant or registrant will be accepted as the representative of the applicant or registrant.   37 C.F.R. §2.17(b) . A qualified practitioner may also be recognized as the applicant’s representative if the practitioner is identified as the attorney of record in the application, even when the application is signed by the applicant. A telephone call from an attorney does not satisfy the “appearance” requirements of 37 C.F.R. §2.17(b) .

Only individuals, not law firms, are entitled to be recognized to represent an applicant or registrant.  Generally, attorneys who have not specifically been mentioned in a power of attorney may discuss but not conclude business with the USPTO over the telephone.  However, if an attorney from the same United States firm as the attorney of record claims to be authorized by the attorney of record to conduct business and approve amendments with respect to a specific application or registration, the USPTO will permit the attorney to conclude business, and will note this fact in any resulting examiner’s amendment, priority action, or Office action. See 37 C.F.R. §2.18(a)(7) .

602.02 Non-Attorneys

Non-attorneys are not permitted to practice except under the limited circumstances specified in 37 C.F.R. §11.14(b) , set forth above.  5 U.S.C. §§500(b), (d); 37 C.F.R. §§2.17(f) , 11.14(e) .

See TMEP §608.01 regarding unauthorized practice, and TMEP §§611–611.06(h) regarding signature of documents filed in the USPTO.

602.03 Foreign Attorneys and Agents  

Generally, only an attorney as defined in 37 C.F.R. §11.1 may represent an applicant or registrant before the USPTO.  5 U.S.C. §§500(b), and (d); 37 C.F.R. §§2.17(a) , 11.14(a) , (e) .  In very limited circumstances, Canadian agents or attorneys registered or in good standing before the Canadian Intellectual Property Office may file an application for reciprocal recognition to represent parties located in Canada. 37 C.F.R. §§2.17(e) , 11.14(c) , (f) . See TMEP §602.03(a) regarding Canadian attorneys and agents.

A foreign attorney or agent may be recognized to represent parties located in the country in which the foreign attorney resides and practices, only if:  

• (1)  He or she applies in writing to the OED Director for reciprocal recognition and pays the fee required by 37 C.F.R. §1.21(a)(1)(i);
• (2)   He or she proves to the satisfaction of the OED Director that he or she is registered or in good standing before the patent or trademark office of the country in which he or she resides and practices and is possessed of good moral character and reputation; and
• (3)  The patent or trademark office of that foreign country allows substantially reciprocal privileges to those permitted to practice before the USPTO.

37 C.F.R. §§11.14(c) , (f) .  The application for reciprocal recognition must be filed and granted prior to practicing before the USPTO in trademark matters.  A foreign attorney or agent may not practice before the USPTO in trademark matters prior to being recognized by the OED Director.  Practice before the USPTO in trademark matters includes preparing and prosecuting applications for trademark registration and otherwise representing a party to a proceeding before the USPTO.   37 C.F.R. §11.5(b)(2) .  The OED Director grants recognition only in the form of a written communication.  A foreign attorney or agent not recognized to practice before the USPTO in trademark cases should allow adequate time to file and obtain recognition before representing a party before the USPTO.

Currently, a Canadian attorney or agent who is registered or in good standing with the Canadian Intellectual Property Office is the only foreign attorney or agent who may be recognized as meeting the above criteria.  See TMEP §602.03(a) regarding Canadian attorneys and agents.

604.01 Three Ways To Be Recognized as a Representative

To be recognized as a representative, a qualified practitioner may:

• File a power of attorney signed by the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership);
• Sign a document on behalf of an applicant or registrant who is not already represented by a qualified practitioner from a different firm; or
• Appear in person on behalf of an applicant or registrant who is not already represented by a qualified practitioner from a different firm.

37 C.F.R. §2.17(b) .  A foreign attorney or agent who has not been recognized by the OED Director pursuant to 37 C.F.R. §11.14(c) or registered as a patent agent pursuant to 37 C.F.R. §11.6(c) may not be recognized as a representative.

Generally, as long as no other qualified practitioner from a different firm has been previously appointed, it is not necessary for a qualified practitioner to file a power of attorney or obtain special authorization in a trademark case.  A qualified practitioner who appears in person or signs a document on behalf of an applicant or registrant will be accepted as the representative of the applicant or registrant.   37 C.F.R. §2.17(b)(2) . (A qualified practitioner may also be recognized as the applicant’s representative if the practitioner is identified as the attorney of record in the application, even when the application is signed by the applicant.). Neither a telephone call nor an e-mail from a qualified practitioner satisfies the “appearance” requirements of 37 C.F.R. §2.17(b) . However, after issuance of an Office action to a pro se applicant and prior to response, a qualified practitioner may satisfy the appearance requirement by submitting a signed document into the record stating that the practitioner represents the applicant and requesting that the Office records be updated to indicate that he or she is the attorney of record.

An individual not meeting the requirements of 37 C.F.R. §2.17(b) will not be recognized as a representative, and may not sign responses or authorize amendments to an application. See TMEP §611.03(b) regarding signature on such documents.

Once the USPTO has recognized a qualified practitioner as the representative of an applicant or registrant, the USPTO will communicate and conduct business only with that practitioner or with another qualified practitioner from the same United States firm.  The USPTO will not conduct business directly with the applicant or registrant, or with a qualified practitioner from a different firm, unless the applicant or registrant files a new power of attorney or revokes the previous power, or the previously recognized practitioner files a request to withdraw.   37 C.F.R. §§2.17(c)(2) , 2.18(a)(7) , 2.19 .  See TMEP §§ 604.02 regarding duration of recognition, 605.03 regarding associate powers of attorney, 606 regarding revocation of power of attorney, and 607 regarding withdrawal of attorney of record.

See TMEP §§609.01 and 609.02–609.02(f) regarding changing the correspondence address, and TBMP §§114–114.08  regarding representation of parties to Board proceedings.

604.02 Duration of Recognition

Pending Applications. For purposes of recognition as a representative, the USPTO considers a power of attorney filed while an application is pending to end when the mark is registered, when ownership changes, or when the application is abandoned.   37 C.F.R. §2.17(g)(1) .

Post Registration. For purposes of recognition as a representative by the Post Registration Section of the Office, the USPTO considers a power of attorney filed in connection with an affidavit under 15 U.S.C. §1058 , §1062(c) , §1065 , or §1141k (“affidavit under §8, §12(c), §15, or §71”), a renewal application under 15 U.S.C. §1059 (“§9 renewal application”), or a request for amendment or correction under 15 U.S.C. §1057 (“§7 request”) to end upon acceptance or final rejection of the filing.   37 C.F.R. §2.17(g)(2) .  Due to the length of time that may elapse between the filing of these documents (which could be 10 years or more), the USPTO will recognize a qualified practitioner who transmits one of these documents even absent a new power of attorney or revocation of a previous power.

The USPTO also considers a power of attorney filed after registration to end when the registration is cancelled or expired or when ownership changes.   37 C.F.R. §2.17(g)(2) .  Therefore, the USPTO will not enter a request to withdraw as attorney or revocation of a power of attorney filed in connection with a cancelled or expired registration, unless it is accompanied by a petition to reinstate the registration.  See TMEP §605.04 regarding powers of attorney filed after registration.

Change of Ownership. For purposes of recognition as a representative, the USPTO considers a power of attorney filed in connection with an application or registration to end when ownership changes.   37 C.F.R. §2.17(g) .  After a change in ownership has been recorded, if a new qualified practitioner appears on behalf of the new owner, the USPTO will communicate and conduct business with that practitioner even absent a new power of attorney or revocation of the previous power.  If the previously recognized practitioner appears on behalf of the new owner (which might occur when the new owner is a related company), the USPTO will continue to conduct business and correspond with that practitioner.  The previously recognized practitioner does not have to file a new power of attorney signed by the new owner.  See TMEP §609.02(f) regarding correspondence after recordation of a change of ownership.

Effect on Attorney and Correspondence Information in USPTO Records.  In the situations discussed above, when the USPTO deems a power of attorney to end for purposes of recognition as a representative, the USPTO will not automatically change the attorney and correspondence address in its Trademark database, because it is possible that the previously recognized practitioner still represents the applicant or registrant and wants to continue receiving correspondence.  The USPTO will continue to recognize the previously recognized practitioner if he or she appears or signs a document on behalf of the applicant or registrant.  However, if a new qualified practitioner appears in person or signs a document, the Office will recognize the new qualified practitioner pursuant to 37 C.F.R. §2.17(b) , and correspond with him or her, without requiring a new power of attorney or revocation of the previous power.  See TMEP §§609.02–609.02(f) regarding changes of correspondence address.

These practices also apply where a qualified practitioner is recognized by appearing in person or signing or filing a document on behalf of the party whom he or she represents.   37 C.F.R. §2.17(b) ; TMEP §604.01 .

Board Proceedings. See TBMP §§114–114.08  regarding representation of parties to Board proceedings, and TBMP §§117–117.02  regarding correspondence in Board proceedings.

604.03 Change of Attorney

Once the USPTO recognizes a qualified practitioner as the representative of an applicant or registrant, a new qualified practitioner from a different firm is not permitted to represent the applicant or registrant until:  (1) the applicant or registrant revokes the previous power of attorney; (2) the applicant or registrant submits a new power of attorney naming the new qualified practitioner; or (3) the previously recognized practitioner files a request to withdraw.   37 C.F.R. §§2.18(a)(7) , 2.19(b) .  Until such action is taken, the new qualified practitioner cannot sign responses to Office actions, authorize issuance of examiner’s amendments or priority actions, expressly abandon an application, authorize a change of correspondence address, or otherwise represent the applicant or registrant.

If an applicant or registrant is already represented by a qualified practitioner, and a new qualified practitioner from a different firm wishes to take action with respect to the application or registration, the new practitioner must file a revocation of the previous power of attorney or new power of attorney naming the new qualified practitioner, signed by the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership), before the USPTO will accept filings by or correspond with the new practitioner.   37 C.F.R. §2.18(a)(7) .  The new practitioner may not sign the revocation of the previous power him or herself.  See 37 C.F.R. §2.17(c) and TMEP §605.01 regarding requirements for power of attorney, and TMEP §606 regarding revocation of power of attorney.

Absent a revocation or new power, if the new qualified practitioner signs a response, amendment, or request to change the correspondence address, the USPTO will treat this as a document filed by an unauthorized party and follow the procedures in TMEP §§ 611.05–611.05(c) .

For purposes of recognition as a representative of an applicant or registrant, the USPTO considers a power of attorney filed while an application is pending to end with respect to a particular application when the mark is registered, when the application is abandoned, or when ownership changes.   37 C.F.R. §2.17(g)(1) .  The USPTO considers a power of attorney filed after registration to end when the registration is cancelled or expired or when ownership changes.   37 C.F.R. §2.17(g)(2) . If the power is filed in connection with an affidavit under §8, §12(c), §15, or §71, a §9 renewal application, or a §7 request, the power is deemed to end upon acceptance or final rejection of the filing.   Id.   TMEP §604.02 .  In these situations, it is not necessary to file a new power of attorney or revocation of the previous power before a new qualified practitioner may take action.  See TMEP §605.04 regarding the processing of powers of attorney filed after registration.

See TBMP §§114–114.08   regarding representation of parties to Board proceedings, and TBMP §§117–117.02  regarding correspondence in Board proceedings.

605.01 Requirements for Power of Attorney

A power of attorney must:  (1) designate by name at least one individual qualified practitioner; and (2) be signed by the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership).  In the case of joint applicants or registrants, all must sign.   37 C.F.R. §§2.17(c) , 2.193(e)(3) .  See TMEP §611.01(c) regarding signature of documents transmitted electronically.

If a power specifies only the name of a law firm, the USPTO will treat it as a correspondence address rather than a power of attorney.  See TMEP §§609–609.04 regarding the correspondence address.

A qualified practitioner cannot sign an original power of attorney on behalf of his or her client.  An original power of attorney, other than one associating an additional attorney with an already recognized attorney (see TMEP §605.03 ), must be signed by the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership).

However, the filing of a power of attorney is not mandatory in a trademark case.  Thus, if a power of attorney is signed by an improper person (e.g., by the named attorney) and no other qualified practitioner has been previously appointed, the USPTO generally will not require a properly signed power.  If the improperly signed power of attorney is accompanied by a document that is signed by a qualified practitioner or includes the name and address of a qualified practitioner, the USPTO may recognize that qualified practitioner under 37 C.F.R. §2.17(b) , separate and apart from the improperly signed power.  See TMEP §604.01 regarding the three ways that a qualified practitioner may be recognized as a representative, TMEP §609.01 regarding establishment of the correspondence address in a new application, and TMEP §609.02(a) regarding the limited situations in which the USPTO will change the correspondence address to that of a qualified practitioner absent a written request to change the correspondence address.

However, if an applicant or registrant is already represented by a qualified practitioner, and a new qualified practitioner wishes to take action with respect to the application or registration, the new qualified practitioner must file a new power of attorney or revocation of the previous power, signed by the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership), before the USPTO will accept filings by or correspond with the new qualified practitioner.   37 C.F.R. §2.18(a)(7) .  See TMEP §604.03 regarding change of attorney, TMEP §606 regarding revocation of power of attorney, and TMEP §611.06 regarding persons with legal authority to bind juristic entities.

If two or more qualified practitioners are named in a power of attorney and one practitioner changes firms, any of the named practitioners can sign and submit a notice of change of correspondence address setting forth a new address, even if the new address is at a new firm.  It is not necessary to submit a new power signed by the applicant or registrant when a named practitioner changes firms.  See TMEP §§609.02–609.02(f) regarding changes of correspondence address.

To expedite processing, the USPTO recommends that powers of attorney be filed through TEAS, at http://www.uspto.gov .  When powers of attorney are filed through TEAS, the data is automatically entered into the USPTO’s automated records.

605.02 Power of Attorney Relating to More than One Application or Registration

Using TEAS, at http://www.uspto.gov , an applicant or registrant may appoint a qualified practitioner to represent the owner for all existing applications or registrations that have the identical owner and qualified practitioner.   37 C.F.R. §2.17(d)(1) .  A power of attorney relating to future applications cannot be filed through TEAS.

An applicant or registrant may file a power of attorney on paperthat relates to more than one trademark application or registration, or to all existing and future applications and registrations.  Someone relying on such a power of attorney must:  (1) include a copy of the previously filed power of attorney; or (2) refer to the previously filed power of attorney, specifying:  the filing date of the power; the application serial number (if known), registration number, or inter partes proceeding number for which the original power of attorney was filed; and the name of the party who signed the power of attorney; or, if the application serial number is not known, submit a copy of the application or a copy of the mark, and specify the filing date.   37 C.F.R. §2.17(d)(2) .  If the applicant or registrant meets these requirements, the USPTO will accept the power of attorney.

605.03 Associate Powers of Attorney

Once the applicant or registrant has designated a qualified practitioner, the practitioner may sign an associate power of attorney, appointing another qualified practitioner -- including one from a different law firm -- as an additional person authorized to represent the applicant or registrant.   37 C.F.R. §2.17(c)(2) ). Note, however, that appointment of an associate attorney from a different law firm does not change the correspondence address from that of the practitioner designated by the applicant or registrant. 37 C.F.R. §2.18(a)(7) ; see TMEP §§609, 609.01-609.02(b).

If the applicant or registrant revokes the original power of attorney, the revocation also discharges any associate power signed by the practitioner whose power has been revoked.   37 C.F.R. §2.17(c)(2) .

If the practitioner who signed an associate power withdraws, the withdrawal discharges any associate power signed by the withdrawing practitioner upon acceptance of the request for withdrawal by the USPTO.   37 C.F.R. §2.17(c)(2) .

605.04 Power of Attorney Filed After Registration

To expedite processing, the USPTO recommends that powers of attorney be filed through TEAS, at http://www.uspto.gov .  When powers of attorney are filed through TEAS, the data is automatically entered into the USPTO’s automated records.

When a new power of attorney is filed on paper after registration, the USPTO scans an image of the document into its automated records, but does not change the attorney information unless the registrant concurrently takes a separate action, such as filing an affidavit under §8.

For purposes of recognition as a representative, the USPTO considers a power of attorney filed while an application is pending to end with registration, when the application is abandoned, or when ownership changes.   37 C.F.R. §2.17(g)(1) .  If the power is filed in connection with an affidavit under §8, §12(c), §15, or §71, a §9 renewal application, or a §7 request, the power is deemed to end upon acceptance or final rejection of the filing.   37 C.F.R. §2.17(g)(2) .   TMEP §604.02 .

See also TMEP §1612 regarding powers of attorney filed after registration, and TMEP §609.02(e) regarding changing the correspondence address after registration.

608.01 Actions by Unauthorized Persons Not Permitted

An individual who is not authorized under 37 C.F.R. §11.14 to practice before the USPTO in trademark cases ( TMEP §§602–602.03(e) ) is not permitted to represent a party in the prosecution of a trademark application, in the maintenance of a registration, or in a proceeding before the USPTO.  5 U.S.C. §§500(b), (d); 37 C.F.R. §§2.17(a) , 11.14(a) , (e) .

An individual who does not meet the requirements of 37 C.F.R. §11.14 cannot:  prepare an application, response, post-registration maintenance document, or other document to be filed in the USPTO; sign amendments, responses to Office actions, petitions to the Director under 37 C.F.R. §2.146 , requests to change the correspondence address, or letters of express abandonment; authorize issuance of examiner’s amendments and priority actions; or otherwise represent an applicant, registrant, or party to a proceeding in the USPTO.  See TMEP §§611.03–611.03(i) regarding signature of documents filed in the USPTO. Presenting an amendment to an application and submitting legal arguments in response to a refusal are examples of representation of the applicant or registrant.   37 C.F.R. §11.5(b)(2) ; TMEP §611.03(b) . However, a non-practitioner employee of a qualified practitioner may work under the supervision of the practitioner to prepare documents for review and signature by and assist the practitioner in trademark matters before the USPTO. 37 C.F.R. §11.5(b) .

When an applicant or registrant is represented by a qualified practitioner, the USPTO encourages the practice of direct communication with the appointed practitioner.  Although paralegals and legal assistants may relay information between the examining attorney and the appointed practitioner, they are not authorized to conduct business before the USPTO.  For example, paralegals and legal assistants cannot authorize issuance of examiner’s amendments or priority actions, even if only conveying the appointed practitioner’s approval by indicating that the appointed practitioner has approved the amendment or action.

Once the USPTO recognizes a qualified practitioner as representing an applicant or registrant, a new qualified practitioner from a different firm is not permitted to represent the applicant or registrant until the applicant or registrant revokes the power of attorney of the previously recognized practitioner, or the previously recognized practitioner withdraws.   TMEP §604.03 .

An individual who is not authorized under 37 C.F.R. §11.14 may transmit and receive correspondence.  Such an individual may also sign a verification on behalf of an applicant or registrant, if he or she meets the requirements of 37 C.F.R. §2.193(e)(1) (e.g., has firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant or registrant ( see TMEP §§611.03(a) , 804.04 )).

Any individual, whether a practitioner or non-practitioner, who presents a document to the USPTO (whether by signing, filing, submitting, or later advocating the document) is subject to 37 C.F.R. §11.18(b) .   37 C.F.R. §2.193(f) ; see TMEP §611.01(a) .

If a USPTO employee suspects that an individual who does not meet the requirements of 37 C.F.R. §11.14 is engaging in widespread unauthorized practice by representing applicants or registrants, he or she should bring the matter to the attention of the Administrator for Trademark Policy and Procedure in the Office of the Deputy Commissioner for Trademark Examination Policy.

See TMEP §§611–611.06(h) regarding signature of documents filed in the USPTO.

608.02 Individuals Excluded, Suspended, or Unauthorized to Practice Before the USPTO

Occasionally, the Director of the USPTO suspends or excludes a particular individual from practice before the USPTO.   35 U.S.C. §32 ;  37 C.F.R. §11.56 . Notice of the suspension or exclusion is published in the Official Gazette and the decision is posted in the FOIA Reading Room http://des.uspto.gov/Foia/OEDReadingRoom.jsp .  A suspended or excluded individual is not a qualified practitioner and may not practice before the USPTO. See 37 C.F.R §§2.17(a) , 11.14 , 11.58 ; TMEP §602 .

In addition, the USPTO may discover that a person who does not meet the requirements of 37 C.F.R. §11.14 is engaged in the deliberate or widespread unauthorized practice of representing applicants and registrants before the USPTO. In these cases, the Commissioner for Trademarks may exclude the party from participating as a signatory, correspondent, or domestic representative on behalf of others in any trademark matters before the USPTO. See 35 U.S.C. §§2 , 3(b)(2)(A) , 32 .

When an individual has been suspended or excluded from practice before the USPTO, the Administrator for Trademark Policy and Procedure (“Administrator”) will notify the USPTO staff accordingly. In addition, as appropriate, the USPTO may notify the affected applicants and registrants that:

• (1) The individual is not entitled to practice before the USPTO in trademark matters, and, therefore, may not represent the applicant or registrant;
• (2) Any power of attorney is void ab initio ;
• (3) The individual may not sign responses to Office actions, authorize examiner’s amendments or priority actions, conduct interviews with USPTO employees or otherwise represent an applicant, registrant, or party to a proceeding before the Office; and
• (4) All correspondence concerning the application or registration will be sent to the domestic representative if appropriate, or, alternatively, to the applicant or registrant at its address of record.

The USPTO will change the correspondence address to that of the applicant, registrant, or domestic representative, as appropriate.

Generally, if an Office action was sent to the correspondence address of record before the relevant party’s suspension or exclusion and the action remains outstanding, the USPTO will not send the applicant or registrant a supplemental action restating the refusals or requirements. See TMEP §717.02 regarding non-receipt of Office actions.

If the examining attorney or Post Registration staff receives a response to an Office action signed by an excluded or suspended practitioner, or a person who appears to be engaged in deliberate or widespread unauthorized practice of law, he or she must prepare a notice of incomplete response, addressed to the applicant or registrant, granting the applicant or registrant 30 days, or to the end of the response period set forth in the previous Office action, whichever is longer, to perfect the response, pursuant to 37 C.F.R. §2.65(a)(2) .  See TMEP §§611.05 et seq., 712.03 , and 718.03(b) for further information.

USPTO employees must also notify the Administrator of the receipt of a document signed by such a person.  

609.01 Establishing the Correspondence Address

When a trademark application is filed, the USPTO enters into its Trademark database an address (consisting of a name, street address or post office box, city, state and postal code, foreign country (if applicable), and an e-mail address if provided) where correspondence from the USPTO will be sent.  This often differs from the applicant’s address.

The USPTO may send official communications concerning an application by e-mail only if the applicant or the applicant’s qualified practitioner authorizes e-mail communications.   See TMEP §304.03 .

The USPTO uses the following guidelines in entering the correspondence address in a new application:

• If the application is transmitted by a qualified practitioner, includes a power of attorney designating a qualified practitioner, or includes the name and address of a qualified practitioner, the USPTO will send correspondence to the practitioner;
• If an application is not being prosecuted by a qualified practitioner, but the applicant designates in writing a correspondence address other than its own address, the USPTO will send correspondence to that address if appropriate;
• If an application is not being prosecuted by a qualified practitioner and the applicant has not designated a correspondence address, but a domestic representative has been appointed, the USPTO will send correspondence to the domestic representative if appropriate; or
• If the application is not being prosecuted by a qualified practitioner, no domestic representative has been appointed, and the applicant has not designated a different address for correspondence, the USPTO will send correspondence directly to the applicant at its address of record.

37 C.F.R. §§2.18(a)–2.18(a)(5) .

The USPTO uses these same guidelines to reestablish the correspondence address when a registrant files an affidavit under §8, §12(c), §15, or §71 of the Trademark Act, a §9 renewal application, or a §7 request.   37 C.F.R. §§2.18(c)–2.18(c)(2) .  The USPTO will update its Trademark database to indicate the name of the qualified practitioner who filed the affidavit, renewal application, or §7 request.  Due to the length of time that may elapse between the filing of these documents (which could be ten years or more), the USPTO will recognize a qualified practitioner who transmits one of these documents even absent a new power of attorney or revocation of the previous power.  See TMEP §604.02 regarding the duration of recognition as a representative.

The USPTO will not undertake double correspondence with the applicant or registrant and the applicant’s or registrant’s qualified practitioner, or with more than one qualified practitioner.   37 C.F.R. §2.18(a)(6) . However, if the applicant or the applicant’s qualified practitioner authorizes the USPTO to send official communications by e-mail, the applicant or the applicant’s qualified practitioner may designate one primary e-mail address and up to four secondary e-mail addresses for duplicate courtesy copies of the correspondence. See TMEP §403 regarding treatment of outgoing e-mail correspondence that is returned as undeliverable.

If an application or other document is signed by a qualified practitioner, but the submission does not contain a separate address for that practitioner, the USPTO will correspond with the qualified practitioner in care of the correspondence address of record and direct such correspondence to the practitioner’s attention.  If an Office action is required, the USPTO will ask the practitioner to either specify his or her address for correspondence or affirmatively state that the USPTO should continue to address correspondence to his or her attention in care of the previously submitted correspondence address. If the practitioner does not respond to the request, the USPTO will continue to send correspondence to the attention of the practitioner at the correspondence address of record.

See TBMP §§117–117.08 for information about correspondence in Board proceedings, TMEP §609.01(a) regarding correspondence in §66(a) applications, TMEP §609.02–609.02(f) for information about changing the correspondence address, and TMEP §609.04 regarding correspondence with parties who are not domiciled in the United States.

609.02 Changing the Correspondence Address  

Once the correspondence address is established, the USPTO will generally send correspondence to that address until a written request to change the address is submitted, signed by the practitioner whom the USPTO has recognized, or, if the applicant or registrant is not represented by a qualified practitioner, by the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership).   37 C.F.R. §§2.18(b)(2) and 2.193(e)(9)–2.193(e)(9)(ii) .

The mere transmittal of a response to an Office action bearing a new address does not effect a change in a correspondence address, except when a new owner takes an action in an application or registration (e.g., files a response to an Office action or statement of use) after recordation of a change of ownership, as discussed in TMEP §609.02(f) .  

The USPTO will not undertake double correspondence with the applicant or registrant and the applicant’s or registrant’s qualified practitioner, or with more than one qualified practitioner.   37 C.F.R. §2.18(a)(6) . However, if the applicant or the applicant’s qualified practitioner authorizes the USPTO to send official communications by e-mail, the applicant or the applicant’s qualified practitioner may designate one primary e-mail address and up to four secondary e-mail addresses for duplicate courtesy copies of the correspondence. See TMEP §403 regarding treatment of outgoing e-mail correspondence that is returned as undeliverable.

A written request to change the correspondence address does not revoke a power of attorney.   37 C.F.R. §§2.18(a)(7) and 2.19(a)(3) .  See TMEP §606 regarding revocation.

See also TBMP §§117–117.08  for information about correspondence in Board proceedings.

609.03 Applicant Has Duty to Maintain Current and Accurate Correspondence Address

The owner of an application or registration has a duty to maintain a current and accurate correspondence address.  If the correspondence address changes, the USPTO must be promptly notified in writing, preferably through TEAS.   See 37 C.F.R. §2.18(b)(1) .  This also applies to e-mail addresses, if the applicant or registrant has authorized the USPTO to send correspondence by e-mail ( see TMEP §304.03 ).  

609.04 Correspondence with Parties Not Domiciled in the United States

If an applicant or registrant has not clearly stated a preferred correspondence address, the USPTO will process correspondence as follows:

• If an applicant or registrant has appointed a qualified practitioner ( see TMEP §§602–602.03(e) ), the USPTO will send correspondence to that practitioner.
• If the applicant or registrant is not represented by a qualified practitioner, and the applicant or registrant has appointed a domestic representative, the USPTO will send correspondence to the domestic representative if appropriate, unless the applicant or registrant designates in writing another correspondence address.  However, the domestic representative is not authorized to prosecute an application or represent a party in a proceeding before the USPTO, unless the domestic representative is a qualified practitioner who has been recognized by the USPTO as the representative of the applicant or registrant.  See TMEP §610 regarding domestic representatives.
• If the applicant or registrant is not represented by a qualified practitioner ( see 37 C.F.R. §11.14), and the applicant or registrant does not designate a domestic representative, the USPTO will send correspondence directly to the applicant or registrant at its foreign address, unless the applicant or registrant designates in writing another correspondence address. See 37 C.F.R. §2.18(a)(5) .

See TMEP §609.01(a) regarding correspondence in §66(a) applications.

611.01 Signature and Certificate

611.02 Signatures by Authorized Parties Required

All documents filed in the USPTO must be properly signed.  The USPTO staff must review the application or registration record to determine whether the applicant or registrant is represented by a qualified practitioner, and must ensure that all documents are properly signed.

Verifications of facts on behalf of an applicant or registrant must be personally signed by someone meeting the requirements of 37 C.F.R. §2.193(e)(1) .   See TMEP §§ 611.03(a) and 804.04 .

Other documents must be personally signed by the applicant or registrant, someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership), or by a qualified practitioner.  This includes amendments, responses to Office actions, petitions to the Director under 37 C.F.R. §2.146 ,letters of express abandonment, requests to divide, and requests to change the correspondence address.  Generally, if the applicant or registrant is represented by a qualified practitioner, the practitioner must sign.   37 C.F.R. §§2.193(e)(2)(i) , 2.193(e)(5)(i) , 2.193(e)(9)(i) , and 11.18(a) .  This applies to both in-house and outside counsel.  If the applicant or registrant is not represented by a qualified practitioner, the document must be signed by the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership).  In the case of joint applicants or registrants who are not represented by a qualified practitioner, all must sign.   37 C.F.R. §2.193(e)(2)(ii) , 2.193(e)(5)(ii) , 2.193(e)(9)(ii) , and 11.14(e) .

See TMEP §§611.03–611.03(i) for guidelines as to the proper person to sign specific documents, TMEP §§611.06–611.06(h) for guidelines on persons with legal authority to bind various types of legal entities, and TMEP §611.04 for examples of authorized and potentially unauthorized parties.

611.03 Proper Person to Sign

This section provides guidelines as to the proper person to sign various documents.  Unless otherwise specified by law, the following guidelines should be followed.

611.04 Examples of Authorized and Potentially Unauthorized Signatories

Set forth below is a list of examples of parties who are authorized and potentially unauthorized to sign responses, petitions to the Director under 37 C.F.R. §2.146 , amendments, requests for express abandonment, and other documents that must be signed by the applicant or registrant, or by someone with legal authority to bind the applicant or registrant.  This list is not exhaustive.

Authorized Parties.  In the following situations, a signatory is presumed to be authorized to represent an applicant or registrant:

• Person identifies him/herself as an officer of a pro se applicant or registrant (e.g., “President,” “Vice President,” “Treasurer,” “Secretary”) of a domestic corporation or the equivalent for another type of business entity (e.g., “Partner” for a partnership, “Member” or “Principal” for a Limited Liability Company).
• Person signing for a previously pro se applicant or registrant identifies him/herself as an attorney in good standing of the bar of the highest court of any state in the United States who is practicing abroad (e.g., Mary Smith, member of New York State Bar, with offices in Nassau, Bahamas).
• Person signing for a foreign corporation identifies him/herself as “general counsel” or “in-house counsel” AND a “corporate officer” or another corporate officer position (e.g., “Secretary,” “Treasurer,” or “Vice President”).
• Person signing for a previously pro se applicant or registrant identifies him/herself as an attorney with a United States law firm or as “general counsel” or “in-house counsel” of a United States applicant, and thus is recognized as the attorney of record ( see TMEP §§604.01 .
• Person signing is a different attorney from the same United States-based firm as the current attorney of record.
• Person signing on behalf of a Canadian applicant or registrant is a Canadian trademark attorney or agent whom OED has recognized as qualified to represent parties located in Canada ( see TMEP §602.03(a) ).
• Person signing identifies him/herself as an “officer” of a pro se corporate applicant.

Potentially Unauthorized Parties.  In the following situations, a signatory is presumed to be unauthorized to represent an applicant or registrant:

• Person signing provides no title or position (e.g., applicant is Jack Smith, an individual citizen of the United States, and Mary Jones signs the response; or applicant is ABC Corporation, and Bill Miller, President, signs the original application, but Dave Wilson, with no listed title or position, signs the response).
• Person signing appears to be a foreign attorney (e.g., “solicitor” or “barrister” for a foreign entity), or is a foreign law consultant with a law firm in the United States.
• Person signing identifies him/herself as a non-attorney representing applicant or registrant in some other capacity (e.g., accountant, paralegal, trademark administrator, business manager, personal assistant, or legal secretary).
• Person signing provides the address of a foreign firm.
• Person signing in an application or registration owned by a foreign entity identifies him/herself as “attorney for applicant,” “attorney at law,” or similar language, but does not specify an address or firm or otherwise indicate that he or she is a member in good standing of the bar of the highest court of a state in the United States (which includes the District of Columbia and any Commonwealth or territory of the United States).
• Person signing identifies him/herself as “attorney-in-fact.”
• Person signing in an application or registration owned by a foreign entity identifies him/herself as “in house counsel” or “general counsel,” with no other indication of officer status or recognition to practice in the United States or before the USPTO per 37 C.F.R. §§11.14(a) or (c) .
• Person signing identifies him/herself as “representative of,” “agent for,” or “representing” applicant or registrant, with no other explanation.
• Person signing identifies him/herself as an “authorized signatory” but provides no other indication of the nature of the signer’s relationship to applicant or registrant.
• Person signing is a new attorney from a different firm, when the applicant or registrant had previously appointed a qualified practitioner and no new power of attorney or revocation of the previously appointed power has been made of record.

611.05 Processing Documents Signed by Someone Other Than the Applicant or the Applicant’s Designated Attorney  

When examining a document filed in connection with a trademark application or registration, the USPTO staff must ensure that all documents are signed by a proper party.   See TMEP §611.02 .  

When it appears that a response to an Office action is signed by an improper party, the USPTO staff must treat the response as incomplete.   See TMEP §611.05(a) .

When it appears that a document other than a response to an Office action (e.g., a proposed amendment to an application that is not responsive to an Office action, a petition to the Director under 37 C.F.R. §2.146 , or an express abandonment) is signed by an improper party, the USPTO will notify the applicant or registrant that no action will be taken on the document, unless the applicant or registrant either:  (1) establishes the signatory’s authority; or (2) submits a properly signed document.

See TBMP §106.02  for information about signature of documents filed in Board proceedings.

611.06 Guidelines on Persons with Legal Authority to Bind Certain Juristic Entities

702.01 Order of Examination

In general, applications are assigned for examination in the order in which they are received in the United States Patent and Trademark Office (“USPTO”), unless the application is made “special.”  See TMEP §702.02 regarding “special” applications. If a voluntary amendment is filed before the application is assigned for examination, it is placed in the record for consideration at the time the application is assigned to an examining attorney.

Generally, amended applications (i.e., applications that contain a response from the applicant), remands from the Trademark Trial and Appeal Board (“Board”), and statements of use are also reviewed in the order in which they are received in the USPTO.

Examining attorneys should act on applications that have been suspended as soon as they are removed from suspension.  See TMEP §§716–716.06 regarding suspension.

Examining attorneys should immediately act on inquiries regarding applications approved for publication or issue that are returned to the examining attorney to take action or provide information.

Where appropriate, the managing attorney may direct that a particular case be given special handling.

When an examining attorney resigns, the examining attorney should spend any remaining time in the Office getting his or her amended cases (including statements of use under 15 U.S.C. §1051(d) and appeal briefs), especially those with involved records, ready for final disposition.

702.02 “Special” Applications

While the USPTO normally processes applications in the order in which they are received, there are two procedures whereby an application can be made “special,” so that initial examination will be expedited.

Request to Make Special - Registration Inadvertently Cancelled or Expired Under 15 U.S.C. §1058 , §1059 , or §1141k .  A new application for registration of a mark that was the subject of a previous registration that was inadvertently cancelled or expired under 15 U.S.C. §1058 , §1059 , or §1141k will be made “special” upon the request of the applicant if the applicant is the prior registrant or the assignee of the prior registrant.  No petition fee is required in this situation.  However, the mark in the new application must be identical to the mark in the cancelled or expired registration, and the goods/services in the new application must be identical to or narrower than the goods/services in the cancelled or expired registration.

A request to make an application special because a registration was inadvertently cancelled is reviewed in the Office of the Deputy Commissioner for Trademark Examination Policy.  The applicant should first file the application via the Trademark Electronic Application System (“TEAS”).  The applicant should then submit a request to make special that includes the newly assigned serial number and the number of the cancelled registration.  To ensure proper routing and processing, the Office prefers that the request also be filed electronically.  In TEAS, the Request to Make Special form can be accessed at http://www.uspto.gov .

If it is not possible to file the request electronically, it should be faxed to the attention of the Deputy Commissioner for Trademark Examination Policy at the following fax number:  571-273-0032.

If the request is submitted by mail, it should be submitted separately from the application, marked to the attention of the Deputy Commissioner for Trademark Examination Policy.

Petition to Make Special.  A petition to make “special” is a request to the Director under 37 C.F.R. §2.146 to advance the initial examination of an application out of its regular order.  See TMEP §§1710–1710.02 regarding the petition requirements and filing procedure.  

The examining attorney must promptly examine any application that has been made “special.”

702.03 Related Applications

704.01 Initial Examination Must Be Complete

The initial examination of an application by the examining attorney must be a complete examination.  A complete examination includes a search for conflicting marks and an examination of the written application, any voluntary amendment(s) or other documents filed by applicant before an initial Office action is issued, the drawing, and any specimen(s) or foreign registration(s), to determine whether the mark is eligible for the type of registration requested, whether amendment is necessary, and whether all required fees have been paid.

If, on initial examination, the examining attorney finds the mark in an application for registration on the Principal Register to be in condition for publication for opposition, the examining attorney will approve the application for publication.  Similarly, if the examining attorney finds the mark in an application for registration on the Supplemental Register to be in condition for registration, the examining attorney will approve the application for registration.  The USPTO will send a notice of publication or certificate of registration to the applicant in due course.

If the application is not in condition to be approved for publication or issue, the examining attorney will write, telephone, or e-mail the applicant, as appropriate, informing the applicant of the reason(s) why the mark may not be registered and of the defect(s) that can be corrected or amended to make the application acceptable.

The examining attorney’s first Office action must be complete, so the applicant will be advised of all requirements for amendment and all grounds for refusal, with the exception of use-related issues that are considered for the first time in the examination of an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d) in an intent-to-use application.  See TMEP §§1102.01 and 1202–1202.16(c)(v)(B) regarding use-related issues that may be considered for the first time in the examination of an amendment to allege use or a statement of use.  Every effort should be made to avoid piecemeal prosecution, because it prolongs the time needed to dispose of an application.  See also TMEP §706 regarding new issues raised by the examining attorney after the first Office action.

Examining attorneys must also clearly explain all refusals and requirements.  For example, if the identification of goods/services is indefinite, the examining attorney must explain why the identification is not acceptable and, if possible, suggest an acceptable identification.  See TMEP §§705–705.08 for further information about examining attorneys’ Office actions.

704.02 Examining Attorney’s Search

If the examining attorney finds no conflicting marks, but must write to the applicant about other matters, the examining attorney must inform the applicant that no conflicting marks have been found.  This is commonly called the “search clause.”

In an application filed under §1 or §44 of the Trademark Act, if the examining attorney cannot make a proper search or cannot examine the application properly due to a lack of adequate information, the examining attorney must specifically indicate what information is needed, request that it be furnished, and state that further action on the matter will be taken as soon as the information is received.  See 37 C.F.R. §2.61(b) and TMEP §814 regarding requirements for additional information.

If some but not all of the goods/services in a §66(a) application are so indefinite that the examining attorney cannot make a proper search, the examining attorney may defer the search in part.  The examining attorney must specifically indicate the good/services for which a search has been conducted by listing the goods/services for which no conflicting marks have been found, and, if relevant, issuing a §2(d) refusal that is specifically limited to certain goods/services.  See TMEP §718.02(a) regarding partial refusals.

If all the goods/services in a §66(a) application are so indefinite that the examining attorney cannot make a proper search, the examining attorney may defer the search.  The examining attorney must issue a full refusal, require the necessary amendments to the goods/services, and state that further action on the merits with respect to likelihood of confusion will be considered as soon as a sufficiently definite identification of goods/services is received.

Before issuing a letter deferring action, the examining attorney should consult with the managing attorney or senior attorney.

704.03 Supervisory Examining Attorney May Indicate Action for Non-Signatory Examining Attorney

When a non-signatory examining attorney examines an application, a supervisory examining attorney must thoroughly review the action.  The usual procedure is for the non-signatory examining attorney to explain relevant information to the supervisory examining attorney, discussing any potential refusals or requirements.  The supervisory examining attorney may indicate the action to be taken.

705.01 Language in Examining Attorney’s Letter

The examining attorney must indicate the status of the application at the beginning of each letter.

In first actions, this may be done by stating that the examining attorney has reviewed the application and made the determinations that follow, or by using language such as “Upon examination of this application....”  The examining attorney must acknowledge any document received before the first action by identifying the document and the date of its receipt.

In subsequent actions, examining attorneys should begin letters with a sentence such as, “This Office action is in response to applicant’s communication filed on [date].”  Other documents received, such as supplemental amendments, affidavits, and new drawings, should also be acknowledged.

Refusals to register should be couched in the statutory language of the section of the Trademark Act that is the basis of the refusal, and the examining attorney must cite the appropriate section of the Act.  For example, registration of a trademark should not be refused “because it is a surname,” but “because it consists of matter that is primarily merely a surname under §2(e)(4) of the Trademark Act .”

Registration must be refused only as to the specific register (i.e., Principal or Supplemental) for which registration is requested.  However, when refusing registration on the Principal Register, the examining attorney should also state, to the extent possible, whether the record indicates that an amendment to the Supplemental Register or to seek registration on the Principal Register under §2(f) may be appropriate.

The words “capable” and “incapable” should be reserved for addressing an amendment to the Supplemental Register.

Examining attorneys are encouraged to use form paragraphs to accelerate the preparation of Office actions and increase the uniformity of the substance and appearance of these actions.  However, examining attorneys should use the form paragraphs only if they apply to a particular situation, and should expand on the form paragraphs when necessary to explain and support the relevant requirements or refusals.

705.02 Examining Attorneys Should Not Volunteer Statements

In Office actions, and e-mail and telephone communications, examining attorneys should not volunteer statements about applicants’ rights that are gratuitous and unnecessary to the examination of the matters presented in applications.  The examining attorney’s responsibility is limited to evaluating the registrability of the mark presented in the application.   See In re Am. Physical Fitness Research Inst. Inc ., 181 USPQ 127, 127–28 (TTAB 1974) .   See also TMEP §1801.

705.03 Citation of Conflicting Marks

When refusing registration under §2(d) of the Trademark Act, 15 U.S.C. §1052(d) , based on a likelihood of confusion with a previously registered mark, the examining attorney must give the registration number(s) and attach to the Office action a copy of each cited registration, which will become part of the record.  The examining attorney should explain the reasons that the mark in each cited registration is a basis for refusal under §2(d).

If an applicant notifies the USPTO that the USPTO failed to attach a cited registration, or that the USPTO attached a registration but did not cite the registration as a bar to registration in the Office action, the USPTO will reissue the Office action citing and attaching the relevant registration(s) and provide the applicant with a new response period.

705.04 Reference to Matter in Printed or Online Publications

When the examining attorney refers to matter in a printed publication, the examining attorney should provide the citation for the publication, and include the relevant material with the Office action.  It is not necessary to attach a published legal decision to an Office action.  A citation is sufficient.  See TMEP §705.05 regarding citation of decisions.

When the examining attorney refers to an online publication, such as an article downloaded from the Internet, the examining attorney should provide any information that would aid a party in locating the document, including the complete URL address of the website, the time and date the search was conducted, and the terms searched.  See TMEP §710.01(b) for a discussion of the weight accorded to Internet evidence.  See also TMEP §710.01(a) regarding evidence from a research database.

705.05 Citation of Decisions and USPTO Publications

When citing court or administrative decisions, the United States Patents Quarterly (USPQ or USPQ2d) citation should be given.  If possible, a parallel citation to the United States Reports (U.S.), Federal Reporter (F., F.2d, or F.3d), or Federal Supplement (F. Supp. or F. Supp.2d) should also be given.  The court or tribunal (2d Cir., C.C.P.A., Fed. Cir., TTAB, etc.) and the date of the decision should always be given.

When citing to a decision that is published and reported only in LexisNexis® and/or Westlaw®, for which there are no official print versions, the citing party should provide the name of the research service, case name, proceeding name and docket number, database identifier, court name, date, and screen, page, or paragraph numbers, if assigned.  When citing to an unpublished decision of the Board, the examining attorney must either provide the Board’s TTABVUE website address and explain how the applicant may locate and view the decision, or append the decision to the Office action.

Non-Precedential Decisions.  Prior to December 27, 2006, it was the policy of the Trademark Trial and Appeal Board that Board opinions not designated as precedential should not be cited and, if cited, were to be disregarded.   Gen. Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270, 1275 n.9 (TTAB 1992) .  The Board has changed that policy.  In announcing the change, the Board stated that:

[T]he Board will henceforth permit citation to any TTAB disposition as follows:

• The TTAB will continue its current practice of designating all final decisions as either precedential or not precedential.  Unless specifically designated as precedential, an order on a motion should be considered not precedential.
• The TTAB will continue its practice of considering precedential decisions as binding upon the TTAB.
• A decision designated as not precedential is not binding upon the TTAB but may be cited for whatever persuasive value it might have.
• Citation to all TTAB decisions should be to the United States Patent Quarterly, if the decision appears therein; otherwise, to a USPTO public electronic database.  If a non-precedential decision does not appear in the United States Patent Quarterly or the USPTO's public electronic databases, the citing party should append a copy of the decision to the motion or brief in which the decision is cited.
• Decisions of other tribunals may be cited to the extent allowed and for the purposes permitted by the tribunal that issued the decision.

Citation of Opinions to the Trademark Trial and Appeal Board, OG Notice ( Jan. 23, 2007).

The examining attorney may cite sections of the Trademark Manual of Examining Procedure (“TMEP”) or Trademark Trial and Appeal Board Manual of Procedure (“TBMP”).  The abbreviations “TMEP” and “TBMP” are usually sufficient; however, if the person prosecuting the application appears to be unfamiliar with USPTO practice, the examining attorney should identify the Manuals by their full names in the first citation to the Manuals.  It is not necessary to provide a copy of the relevant section(s) of the Manuals.

When the examining attorney cites a Director’s order or notice, the examining attorney should provide the title and date of the notice, and the specific issue of the Official Gazette in which it may be found.

705.06 Reviewing and Signing of Letters

Examining attorneys must review and sign every Office action using an electronic signature.  The signature block should include the name, title, law office, telephone number, and e-mail address of the examining attorney.  Thus, the signature block for an Office action issued by an examining attorney should be set forth as follows:

/Examining attorney’s full name/

Trademark Examining Attorney

Law Office xxx

(571) xxx-xxxx

_____________@uspto.gov

If an examining attorney does not have signatory authority, he or she must sign the action and refer it to an authorized signatory examining attorney, who will review and approve the action.  Review by a reviewer should ordinarily be done within two working days after receipt from the non-signatory examining attorney.

705.07 Processing Outgoing Office Actions

A date is placed on all copies of paper Office actions when they are issued.  For outgoing e-mail communications, including electronically issued Office actions, the date is applied automatically when the communication is released to the USPTO's electronic mail system.

One copy of the action signed by the examining attorney, along with any supporting evidence and/or copies of registered marks or pending applications cited as a bar to registration, is sent to the Trademark Image Capture and Retrieval System (“TICRS”) and is available for review by the public through the Trademark Status and Document Retrieval (“TSDR”) portal on the USPTO website at http://tsdr.uspto.gov/ .

An applicant who authorizes e-mail communication will not receive the actual Office action by e-mail.  Instead, upon issuance of the Office action, the USPTO will e-mail a notice to the applicant with a link or web address to access the Office action using TSDR.  The Office action will not be attached to the e-mail notice.  Upon receipt of the e-mail notice, the applicant may use the link or web address to view and print the actual Office action and any evidentiary attachments.

705.08 Six-Month Response Clause

Generally, the examining attorney’s letter or Office action should include a “six-month response clause” notifying the applicant that the applicant must respond to the action within six months of the issuance date to avoid abandonment under 15 U.S.C. §1062(b) .  See TMEP §§711–711.02 regarding the deadline for response to an Office action.

The examining attorney must not include a six-month response clause in an examiner’s amendment (see TMEP §§707–707.03 ) or suspension notice (see TMEP §§716–716.06 ), or in a situation where the time for response runs from the issuance date of a previous Office action (see TMEP §§711.01 , 715.03(c) ).

706.01 “Clear Error”

The term “clear error” refers to an administrative internal guideline used by the USPTO to determine whether an examining attorney should issue a refusal or requirement that could or should have been raised in a previous action.

It is the policy of the USPTO to do a complete examination upon initial review of an application by an examining attorney, and to issue all possible refusals and requirements in the first Office action.   See TMEP §704.01 .  The USPTO will not issue a new refusal or requirement that could or should have been made in an earlier Office action unless it is necessary to do so to prevent the issuance of a registration that would violate the Trademark Act or applicable rules.   See, e.g., TMEP §706 .  For example, if evidence is discovered, after publication, that clearly demonstrates the proposed mark is a generic identifier for the goods, registration on either the Principal or Supplemental Register would be in violation of the Trademark Act and the Director will restore jurisdiction to the examining attorney to issue a new refusal of registration.   See TMEP §1504.04 .  See also TMEP §1109.08 regarding the issuance of refusals and requirements during examination of a statement of use that could or should have been issued during initial examination of the application.

The internal “clear error” standard is merely an administrative guideline.  It does not confer on an applicant any entitlement to a showing of clear error, nor does it impose a higher standard of proof on the examining attorney than is otherwise required to establish a prima facie case for the refusal or requirement.

Except as provided in 15 U.S.C. §1141h(c)(4) ,  there is no restriction in the Trademark Act or Trademark Rules of Practice as to the period of time prior to registration when the USPTO may issue a new requirement or new refusal.  The USPTO has a duty to issue valid registrations and has broad authority to correct errors made by examining attorneys and other USPTO employees.   See Last Best Beef LLC v. Dudas, 506 F.3d 333, 340, 84 USPQ2d 1699, 1704 (4th Cir. 2007) (“[F]ederal agencies, including the USPTO, have broad authority to correct their prior errors.”); see also BlackLight Power Inc. v. Rogan , 295 F.3d 1269, 63 USPQ2d 1534 (Fed. Cir. 2002) (affirming that USPTO officials acted within their authority in a reasonable manner when withdrawing a patent from issuance in order to fulfill the USPTO’s mission to issue valid patents, even after Notice of Allowance, payment of the issue fee, and notification of the issue date, and with publication of the drawing and claim in the Official Gazette).  Thus, if the USPTO discovers that a mistake made during examination would result in issuance of a registration in violation of the Trademark Act or applicable rules, the USPTO must issue any necessary requirements or refusals, even if they could or should have been previously raised.

The question of whether a refusal or requirement was procedurally proper is reviewable on petition under 37 C.F.R. §2.146 . However, “[q]uestions of substance arising during the ex parte prosecution of applications, including, but not limited to, questions arising under sections 2, 3, 4, 5, 6 and 23 of the Act of 1946, are not considered to be appropriate subject matter for petitions to the Director.”   37 C.F.R. §2.146(b) .  Thus, the Director cannot consider on petition whether the issuance of or failure to issue a substantive refusal was a “clear error.”  See TMEP §1704 regarding petitionable subject matter, and TMEP §1706 regarding the standard of review on petition.

On appeal, the Trademark Trial and Appeal Board will review only the correctness of the underlying substantive refusal of registration.   See In re Jump Designs, LLC , 80 USPQ2d 1370, 1373–74 (TTAB 2006) ; In re Sambado & Son, Inc., 45 USPQ2d 1312, 1314–15 (TTAB 1997).

707.01 Approval of Examiner’s Amendment by Applicant or Applicant’s Attorney

Except in the situations set forth in TMEP §707.02 in which an examiner’s amendment is permitted without prior authorization by the applicant, an examining attorney may amend an application by examiner’s amendment only after securing approval of the amendment from the individual applicant, someone with legal authority to bind a juristic applicant, or the applicant’s qualified practitioner by telephone, e-mail, or in person during an interview.   Cf. 37 C.F.R. §§2.62(b) , 2.74(b) ;  see TMEP §§ 304.01 , 304.02 , 602 , 709.01–709.05 .

If the applicant is represented by a qualified practitioner, the examining attorney must communicate directly with the practitioner by phone or e-mail.  If a qualified practitioner from the same firm as the qualified practitioner of record claims to be authorized by the practitioner of record to conduct business and approve amendments with respect to a specific application, the examining attorney will permit the practitioner to conduct business, and will note this fact in the examiner’s amendment.  Paralegals and legal assistants cannot authorize examiner’s amendments, even if only conveying the appointed qualified practitioner’s approval by indicating that the practitioner has approved the amendment.

If the applicant is pro se, the examining attorney must communicate directly with the individual applicant or with someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership).   Cf. 37 C.F.R. §11.14(e) .  For joint applicants who are not represented by a qualified practitioner, each joint applicant must authorize the examiner’s amendment.  See TMEP §§611.06–611.06(h) for guidelines on persons who have legal authority to bind various types of applicants.

A non-attorney who is authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.193(e)(1) is notentitled to authorize an examiner’s amendment, unless he or she has legal authority to bind the applicant.  The broad definition of “person properly authorized to sign on behalf of the [applicant]” in 37 C.F.R. §2.193(e)(1) ( see TMEP §§611.03(a) , 804.04 ) does not apply to examiner’s amendments.

The applicant or the applicant’s qualified practitioner must actually authorize the examiner’s amendment.  The examining attorney may not leave an e-mail or voicemail message for the applicant or the qualified practitioner indicating that an amendment shall be entered if the applicant or practitioner does not respond to the message.

If an examining attorney contacts an applicant and reaches agreement to issue an examiner’s amendment, but later determines that an Office action must be issued instead to state a refusal or requirement, the examining attorney should telephone or e-mail the applicant immediately to advise the applicant of the change of position.

Examining attorneys without partial signatory authority must advise applicants that issuance of the examiner’s amendment is subject to review by a supervisory attorney.

707.02 Examiner’s Amendment Without Prior Authorization by Applicant or Applicant’s Attorney

Examining attorneys have the discretion to amend applications by examiner’s amendment without prior approval by the applicant or the applicant’s qualified practitioner (sometimes referred to as a “no-call” examiner’s amendment) in the following situations:

• (1) In applications under §1 or §44, changes to international classification, either before or after publication ( see Groening v. Mo. Botanical Garden, 59 USPQ2d 1601, 1603 (Comm’r Pats. 1999));
• (2) Deletion of “TM,” “SM,” “©,” or “®” from the drawing;
• (3) Addition of a description of the mark where an Office action or regular examiner’s amendment is otherwise unnecessary and one of the following conditions applies:
• (a) The record already contains an informal indication of what the mark comprises ( see TMEP §808.03(b) );

          Example - The cover letter accompanying a paper application refers to the mark as a stylized golf ball design.  If appropriate, the examining attorney could enter an amendment that “the mark consists of the stylized design of a golf ball.”

          Example – The application refers to the mark as a blue, red, and yellow ball and includes an accurate and properly worded color claim listing all colors in the mark, but the color yellow is omitted from the formal description of the colors in the mark ( see TMEP §807.07(a)(ii)) .  The examining attorney may enter an amendment of the formal color description to accurately reflect all colors in the mark;

• (b) The mark consists only of wording in stylized font, with no color claim and with no design element, and the applicant did not provide the “literal element” of the mark in the appropriate field ( see TMEP §808.03(b) ); or
• (c) The mark includes no color claim and consists only of wording in combination with underlining or a common geometric shape used as a vehicle for the display of the wording ( see TMEP §808.03(b) ).
• (4) If the examining attorney determines that a description of the mark will not be printed in the Official Gazette or on the registration certificate, and it is unnecessary to issue an Office action or a regular examiner’s amendment regarding other matters, the examining attorney may enter a Note to the File in the record or issue a "no-call" amendment to that effect.   See TMEP § 808.03 ;
• (5) In applications under §1, amendment of the application to enter a standard character claim when the record clearly indicates that the drawing is intended to be in standard character form.   See TMEP § 807.03(g) ;
• (6) Correction of obvious misspellings, typographical errors, and redundancies in the identification of goods/services, or in an otherwise accurate and complete description of the mark.  See TMEP §§808.03(a) , 1402.01(a) ;

          Example - The goods are identified as “T-shurtz.”  The examining attorney may amend to “T-shirts.”  However, “shurtz” may not be amended to “shirts” without calling the applicant, because “shurtz” (without the “T-” prefix) might also be a misspelling of “shorts.”

• (7) When an applicant fails to respond to a refusal or requirement that is expressly limited to only certain goods, services, and/or class(es), the examining attorney may issue an examiner’s amendment deleting the goods/services/classes to which the refusal or requirement pertained.  Similarly, when an applicant fails to respond to a requirement to amend some terminology in an otherwise acceptable identification of goods/services, the examining attorney may issue an examiner’s amendment deleting the unacceptable terminology from the identification.   See TMEP §§718.02(a) , 1402.13 ;
• (8) In applications under §1 or §44, deletion of bracketed material from an entry taken from the USPTO’s Acceptable Identification of Goods and Services Manual.  Bracketed material sometimes appears in the Manual for informational purposes but should not be included in an identification of goods/services.   See TMEP §1402.12 . If this material is entered in an identification, it will be automatically deleted in all TEAS applications.  In a paper application, the examining attorney may delete the bracketed material with a “no-call” examiner’s amendment;
• (9) If, in response to a general or specific inquiry about translation and/or transliteration of non-English wording in the mark, the applicant does not directly state that the term has no meaning in a foreign language but instead responds to the effect that “the mark has only trademark significance,” the examining attorney may enter a statement that “the term has no meaning in a foreign language” into the record.   See TMEP §809.01(a) ;
• (10) When an applicant provides a translation statement that has the proper translation but is in a format that is not suitable for printing, the examining attorney may “reformat” the statement, without changing the substance, into a simple, clear statement as to meaning.   See TMEP §809.03 .
• (11) When an application includes foreign wording that is not translated, and a translation of the same foreign wording appears in a prior registration for which the applicant has claimed ownership, and the translation is acceptable to the examining attorney, the examining attorney may enter the identical translation into the record. Note: If the application was filed using the TEAS Plus form and the translation was omitted, the examining attorney may not issue an examiner’s amendment without prior authorization. The examining attorney must take appropriate action requiring the translation and the additional TEAS Plus processing fee. 37 C.F.R. §§2.6(a)(1)(iv) , 2.22(a)(16) , (b) ; TMEP §§ 819.01 , 819.01(m) .

If the examining attorney must contact the applicant or the applicant’s qualified practitioner about other matters, or if the record contains any ambiguity as to the applicant’s intent, the examining attorney should advise the applicant that the above changes have been made.

If the applicant has authorized e-mail communication with the USPTO, the applicant will receive an e-mail notification when an examiner’s amendment is issued. The applicant may then view and/or print the examiner’s amendment from the USPTO website. If the applicant has not authorized e-mail communication with the USPTO, a copy of the examiner’s amendment will be sent to the applicant.  Any applicant who disagrees with any of these changes should contact the examining attorney immediately after reviewing or receipt of the examiner’s amendment, preferably by telephone or e-mail.

Note: In a §66(a) application, an examiner’s amendment may not be issued on first action because the IB will not accept such amendments. Examiner’s amendments may be issued on second and subsequent actions. See TMEP §1904.02(h) regarding Office actions in §66(a) applications.

707.03 Form of the Examiner’s Amendment

An examiner’s amendment should include the following information:  the name, law office, telephone number, and e-mail address of the examining attorney; the name of the person interviewed; the date of the interview; the actual amendment; and, if applicable, a statement to the effect that the amendment has been authorized by the applicant or the applicant’s qualified practitioner.

The examiner’s amendment must not include a six-month response clause, because a written response by the applicant is not required for an examiner’s amendment.

The examiner’s amendment must include a search clause ( see TMEP §704.02 ) if it is a first action, or if the applicant has not previously been advised of the results of a search.

The examining attorney must not state in the examiner’s amendment that the application is ready for publication or issue, because some unforeseen circumstance might require that further action be taken in the application.

The examiner’s amendment must indicate any refusals or requirements that are withdrawn and/or continued by the examining attorney.

708.01 Priority Action Defined

A “priority action” is an Office action that is issued following a telephone conversation, personal interview, or e-mail communication in which the examining attorney and the individual applicant, someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership), or the applicant’s qualified practitioner discuss the various issues raised in an application and what actions the applicant must take to put the application in condition for publication or registration.  A priority action is generally used when the action requires verification by the applicant.  The use of priority actions is encouraged to expedite examination.

A priority action should be issued according to the following procedure:  (1) the examining attorney telephones or e-mails the applicant or applicant’s qualified practitioner and requests that the applicant take some specific action, explaining the reasons; (2) the applicant or applicant’s qualified practitioner specifically discusses the merits of the application with the examining attorney; (3) the examining attorney prepares and signs a priority action that fully discusses all refusals or requirements, includes evidence to support the refusals and/or requirements, and specifically describes what action the applicant may take in order to put the application into condition for publication or registration; and (4) the USPTO sends a copy of the priority action to the applicant.

If the evidence of record supports a statutory refusal of registration, a priority action may be issued only if the examining attorney believes that an amendment or explanation will obviate the refusal.   See TMEP §708.04 .

See TMEP §708.03 regarding the form of a priority action.

Note: In a §66(a) application, an examining attorney may issue a priority action as a first action. See TMEP §1904.02(h) regarding Office actions in §66(a) applications.

708.02 Discussion of Issues and Agreements

The examining attorney must discuss the issues with the individual applicant, a person with legal authority to bind a juristic applicant, or the applicant’s qualified practitioner.  The broad definition of “person properly authorized to sign on behalf of the [applicant]” in 37 C.F.R. §2.193(e)(1) ( see TMEP §§611.03(a) , 804.04 ) does not apply to priority actions.

Only the applicant, someone with legal authority to bind the applicant, or a qualified practitioner can agree to a priority action.  If the applicant is represented by a qualified practitioner, the examining attorney must speak directly to the practitioner.  See TMEP §§602–602.03(e) for guidelines on persons authorized to practice before the USPTO in trademark matters.

If a qualified practitioner from the same firm as the qualified practitioner of record claims to be authorized by the qualified practitioner of record to conduct business and approve amendments with respect to a specific application, the examining attorney will permit the practitioner to authorize issuance of the priority action, and will note this fact in the priority action.

Paralegals and legal assistants cannot authorize issuance of a priority action, even if only conveying the qualified practitioner’s approval by indicating that the practitioner has agreed to the priority action.

If the applicant is pro se, the examining attorney must speak directly to the individual applicant or to someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership).   Cf. 37 C.F.R. §11.14(e) .  See TMEP §§611.06–611.06(h) for guidelines on persons who have legal authority to bind various types of applicants.

A non-attorney who is authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.193(e)(1) may not authorize issuance of a priority action, unless he or she also has legal authority to bind the applicant.

During the telephone conversation, e-mail discussion, or other communication, the examining attorney must fully discuss all refusals and requirements relating to the application, and explain the reason(s) for each refusal or requirement.  Whenever possible, the examining attorney should suggest appropriate language for amendments. A priority action is not appropriate when:

• 1. the examining attorney leaves a voicemail or e-mail message for the applicant or applicant’s qualified practitioner, but the applicant or practitioner does not call back or respond to the message;
• 2. the examining attorney telephones the applicant or applicant’s attorney but the attorney does not have time to discuss the application and requests that the examining attorney send a letter; or
• 3. the examining attorney e-mails the applicant or applicant’s attorney and merely states that there are problems with the application (e.g., indefinite identification, a disclaimer requirement, and clarification of entity type) and that a letter will be sent.

All the issues in the priority action must be discussed on the merits with the applicant or the applicant’s qualified practitioner in a good-faith attempt to resolve any issues and place the application in condition for publication or registration, as appropriate. However, an agreement as to precisely how all issues will be resolved is not necessary.

The priority action may state that the applicant will follow one of two alternative courses of action, for example, providing either an amended drawing or a new specimen.

708.03 Form of the Priority Action

The priority action should reference the date of the telephone call, e-mail message, or other communication, and the name and title (where appropriate) of the person who authorized the priority action.  See TMEP §708.02 for information about who may authorize issuance of a priority action.

A priority action must include a six-month response clause ( see TMEP §705.08 ) so that it is clear that the applicant must timely respond to the priority action to avoid abandonment of the application.

The priority action must include a search clause ( see TMEP §704.02 ) if it is a first action, or if the applicant has not previously been advised of the results of a search.  

The priority action must also:  (1) fully discuss all refusals and/or requirements; (2) include sufficient evidence to support all refusals and/or requirements; and (3) specifically describe what action the applicant may take in order to put the application into condition for publication or registration.  See TMEP §708.02 regarding discussion of issues on the merits.

The examining attorney should discuss each issue separately, stating the reason for the refusal and/or requirement and/or citing the relevant sections of the statute, rules, and/or TMEP.  The essential nature of the refusal or requirement, and any pertinent advisories relating thereto, must be clearly stated in the priority action, and fully supported by appropriate evidence (if applicable), because the action of the USPTO is based exclusively on the written record.   37 C.F.R. §2.191 .

A priority action may be used for a final or nonfinal refusal or requirement.  See TMEP §708.04 regarding refusal of registration in a priority action, and TMEP §§714–714.06 regarding final actions.

708.04 Refusal of Registration in Priority Action

Priority actions are generally used when there are no statutory refusals.  However, if there is sufficient evidence to support a statutory refusal, and the examining attorney believes that an amendment or explanation will obviate the refusal, the examining attorney may attempt to resolve the issues through a priority action.

In the priority action, the examining attorney must clearly state the basis for the refusal that was discussed, citing the relevant sections of the statute and rules, attaching evidence to support the refusal, and indicating the resolutions agreed upon or the options offered.

If the priority action includes a final refusal, the priority action must clearly indicate that the refusal is FINAL, and should contain any additional supporting evidence necessary for a complete record on appeal.  See TMEP §§714–714.06 regarding final actions.

708.05 Combined Examiner’s Amendment/Priority Action

An examining attorney may issue an Office action that combines an examiner’s amendment and priority action, if the requirements for both have been met.  The examiner’s-amendment portion reflects the authorized amendments, and the priority-action section addresses the refusals and requirements that remain outstanding and to which the applicant must still respond.  An examining attorney may not issue a “no-call” examiner’s amendment/priority action, because the issues in the priority action portion of the action have not been discussed with the applicant or applicant’s qualified practitioner.

The action must include a six-month response clause ( see TMEP §705.08 ) so that it is clear that the applicant must timely respond to the issues raised in the priority action to avoid abandonment of the application.  The action must also include the subheadings “Priority Action” and “Examiner’s Amendment” to facilitate processing.

NOTE:  In a §66(a) application, an examining attorney may not issue a combined examiner’s amendment/priority action as a first action.  See TMEP §1904.02(h) regarding Office actions in §66(a) applications.

709.01 Personal Interviews

Personal interviews with examining attorneys concerning applications and other matters pending before the USPTO are permissible on any working day and must be in the office of the respective examining attorney, within office hours that the examining attorney may designate.

Personal interviews must be arranged in advance, preferably by fax, e-mail, or telephone.  This will ensure that the assigned examining attorney will be available for the interview at the scheduled time and will have an opportunity to review the application record.  The unexpected appearance of a qualified practitioner or applicant requesting an interview without any previous notice to the examining attorney is not appropriate.

An interview should be conducted only when it could serve to develop and clarify specific issues and lead to a mutual understanding between the examining attorney and the applicant.  Interviews should not extend beyond a reasonable time.

The examining attorney should not hesitate to state that matter presented for consideration during the interview requires further research, if this is the case.  Furthermore, the examining attorney may conclude an interview when it appears that no common ground can be reached.

During an interview with a pro se applicant who is not familiar with USPTO procedure, the examining attorney may in his or her discretion make suggestions that will advance the prosecution of the application, but these interviews should not be allowed to become unduly long.

When an agreement is reached during an interview but it is not possible to resolve all issues through an examiner’s amendment, the examining attorney should enter a Note to the File in the record concerning the agreement, and request that the applicant incorporate the agreement in its response.

Sometimes, the examining attorney who conducted the interview is transferred, resigns, or retires, and examination of the application is taken over by another examining attorney.  If there is an indication in the record that an interview was held, the new examining attorney should endeavor to ascertain whether any agreements were reached during the interview.  The new examining attorney should take a position consistent with agreements previously reached, unless doing so would be a clear error ( see TMEP §706.01 ).

Except in unusual situations, no interview on the merits is permitted after the brief on appeal is filed, or after an application has been forwarded for publication or issue.

709.02 Persons Who May Represent Applicant in an Interview

In general, interviews are not granted to persons who lack proper authority from the applicant.  See TMEP §§602–602.03(e) regarding persons who may represent an applicant before the USPTO in a trademark matter, and TMEP §§611.06–611.06(h) for information on persons with legal authority to bind various types of juristic applicants.

The examining attorney may request proof of a person’s authority if there is any reason to suspect that the person is not, in fact, a qualified practitioner who is authorized to represent the applicant.   37 C.F.R. §2.17(b)(2) .

For an interview with an examining attorney who does not have signatory authority, arrangements should be made for the presence of an examining attorney who does have such authority and who is familiar with the application, so that an authoritative agreement may be reached, if possible, at the time of the interview.

USPTO employees are forbidden to engage in oral or written communication with a disbarred, suspended, or excluded practitioner ( see TMEP §608.02 ), unless the practitioner is the applicant.

Requests for interviews from third parties are inappropriate and should be directed to the Office of the Deputy Commissioner for Trademark Examination Policy.   See TMEP §1801.

709.03 Making Substance of Interview of Record

The substance of an interview must always be made of record in the application, since the action of the USPTO is based exclusively on the written record.   37 C.F.R. §2.191 .  This should be done promptly after the interview while the matters discussed are fresh in the minds of the parties.

If possible, agreements reached in the interview should be incorporated in an examiner’s amendment or priority action.  Otherwise, to ensure that any agreements reached at an interview will be implemented, and to avoid subsequent misunderstanding, the examining attorney should include, in a Note to the File, a list of the issues discussed and indicate whether any agreement was reached.  See TMEP §709.04 for further information about  Notes to the File.

The applicant or the applicant’s qualified practitioner may also make the substance of an interview part of the record by incorporating a summary of the interview in the applicant’s response to the Office action.  If there is any disagreement between the examining attorney and the applicant as to the substance of the interview, the written record governs.   37 C.F.R. §2.191 .

709.04 Telephone and E-Mail Communications

 Examining attorneys should initiate telephone or e-mail communications (i.e., "informal communications") whenever possible to expedite prosecution of an application.  Similarly, applicants and qualified practitioners may telephone or e-mail examining attorneys, if they feel that a telephone call or e-mail will advance prosecution of an application. See TMEP §709.05 regarding guidelines for informal communications. Therefore, all documents filed in connection with the application should include the telephone number of the applicant or the applicant’s qualified practitioner.

The examining attorney must respond to telephone calls and e-mail messages within a reasonable time, normally the same working day and never later than the next working day.

Generally, the examining attorney who prepared the action, and not the supervisory or reviewing examining attorney, should be the person contacted by telephone or e-mail.  However, a non-signatory examining attorney must secure proper authorization from the managing attorney, senior attorney, or reviewing examining attorney before approving an amendment.

The action of the USPTO is based exclusively on the written record and all relevant communications, including informal communications, must be made part of the record.   37 C.F.R. §2.191 .  Therefore, the examining attorney must use an examiner’s amendment ( see TMEP §§707–707.03 ), or priority action ( see TMEP §§708–708.05 ), upload all relevant e-mail communications, and enter a Note to the File regarding issues discussed by telephone.   See TMEP §709.03 .

Notes to the File must not summarize arguments or legal conclusions.  Rather, the Note to the File must merely list the issues discussed and indicate any agreement that may have been reached.  If no agreement was reached, that should be noted also.

If an examining attorney does not respond to a telephone or e-mail message within two business days, the applicant may telephone the law office manager or supervisor.  Contact information is available on the USPTO website at http://www.uspto.gov/trademarks/Other_TM_Contact_Info.jsp .

709.05 Informal Communications

An applicant may conduct informal communications with an examining attorney regarding a particular application by telephone, e-mail ( see TMEP §§304.01–304.02 ), or fax.  Informal communications should be conducted only if they serve to develop and clarify specific issues and lead to a mutual understanding between the examining attorney and the applicant.  For example, an applicant may telephone or send an e-mail regarding:

• Questions regarding an outstanding Office action that do not constitute a response;
• Authorization to issue an examiner’s amendment or priority action ( see TMEP §§707.01 , 708.01 );
• Objection to an examiner's amendment (see TMEP §§ 707 , 707.02 );
• Notification of termination of a cancellation proceeding that is the basis for suspension ( see TMEP §716.02(a) ); or
• A request to arrange a convenient time to speak by telephone.

Informal communications may not be used to request advisory opinions as to the likelihood of overcoming a substantive refusal. The examining attorney should advise the applicant to file a formal response for consideration of arguments regarding any substantive refusal.

If the examining attorney determines that continuing (or prolonged) informal communications by telephone or e-mail will not serve to further develop and clarify specific issues and lead to a mutual understanding between the examining attorney and the applicant, he or she must advise the applicant to file a formal response.

An informal communication does not constitute a response to an outstanding Office action and does not extend the deadline for response.

Relevant e-mail and phone communications must be made part of the record, because the USPTO uses them in decision making, and anything used in decision making must be made of record.   37 C.F.R. §2.191 .  Therefore, the examining attorney must upload all relevant e-mail communications and must enter a Note to the File regarding issues discussed by telephone. See TMEP §709.04 for further information about Notes to the File.

The applicant should monitor the status of an application after an informal communication to avoid abandonment.  For example, if the applicant expects an examiner’s amendment or priority action to be issued and the status does not show that it has been sent, the applicant should promptly contact the examining attorney to inquire. Reviewing the status may be done through the Trademark Status and Document Retrieval (“TSDR”) database at http://tsdr.uspto.gov/ , or by calling the Trademark Assistance Center (“TAC”) at (571) 272-9250 or (800) 786-9199.  See TMEP §§108.03 and 1705.05 regarding the duty to monitor the status of an application in cases where a notice or action from the USPTO is expected.

709.06 Interviews Prior to Filing Application

No interviews are permitted before the filing of an application.  If a party has general questions about how to file an application, he or she can call the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199.   See TMEP §108.02 .

USPTO employees cannot give advice on trademark law.  It is inappropriate for USPTO personnel to give legal advice, to act as a counselor for individuals, or to recommend a qualified practitioner.   37 C.F.R. §2.11 .

710.01 Evidence Supporting Refusal or Requirement

In general, the examining attorney must always support his or her action with relevant evidence and ensure that proper citations to the evidence are made in the Office action.

All evidence that the examining attorney relies on in making a requirement or refusal must be placed in the record and copies must be sent to the applicant.  

In appropriate cases, the examining attorney may also present evidence that may appear contrary to the USPTO’s position, with an appropriate explanation as to why this evidence was not considered controlling.  In some cases, this may foreclose objections from an applicant and present a more complete picture if there is an appeal.   Cf. In re Federated Dep't Stores Inc., 3 USPQ2d 1541, 1542 n.2 (TTAB 1987) (noting that the examining attorney is not obligated to provide every story found in a LexisNexis® search though it may present a more complete picture).

710.02 Search for Evidence Indicating No Refusal or Requirement Necessary

USPTO practice is to indicate the results of a search for evidence when the examining attorney considers an issue and determines that no action will be taken on it.  This information is helpful for internal review.  A Note to the File should be entered in the record to reflect that a search for evidence was conducted in any case in which the examining attorney determines that a search would be useful for review of the application, but that no further action is required.

 The examining attorney should simply note the parameters of the search conducted without stating any opinions or conclusions .

For instance, in the case of a search of telephone directories for surnames, the record should indicate only the directories investigated and the number of occurrences of the surname.  Or, in the case of a search for the meaning of a term, the record should show the sources checked and whether the term was found.  

The Note to the File should not provide any of the examining attorney's analysis, opinions, or conclusions regarding the evidence when the examining attorney determines that a refusal or requirement is not appropriate.  Nor should the examining attorney place in the record copies of e-mail messages or other communications between the examining attorney and other USPTO personnel concerning the application.  And the examining attorney should not refer to, or place copies of, any registration or pending application that was considered in a §2(d) search, unless the examining attorney determines that there is a conflict and issues an Office action based on the application or registration.

710.03 Evidence of Third-Party Registrations

The Trademark Trial and Appeal Board does not take judicial notice of registrations, and the submission of a list of registrations does not make these registrations part of the record.   In re 1st USA Realty Prof'ls, Inc., 84 USPQ2d 1581, 1583 (TTAB 2007) ; In re Duofold Inc ., 184 USPQ 638, 640 (TTAB 1974) ; TBMP §1208.02 (“[T]he Board does not take judicial notice of records residing in the Patent and Trademark Office.”).   Furthermore, the submission of a copy of a commercial search report is not proper evidence of third-party registrations.   In re Hub Distrib., Inc., 218 USPQ 284, 285 (TTAB 1983).

To make registrations of record, copies of the registrations or the complete electronic equivalent (i.e., complete printouts taken from the USPTO’s Trademark database) must be submitted.   In re Ruffin Gaming LLC, 66 USPQ2d 1924, 1925 n.3 (TTAB 2002) ; In re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1456 n.2 (TTAB 1998) ; In re Broadway Chicken Inc. , 38 USPQ2d 1559, 1561 n.6 (TTAB 1996) ; In re Smith & Mehaffey , 31 USPQ2d 1531, 1532 n.3 (TTAB 1994) .

If the applicant's response includes improper evidence of third-party registrations, the examining attorney must object to the evidence in the first Office action following the response. Otherwise the Board may consider the objection to be waived.   See In re Houston, 101 USPQ2d 1534, 1536 (TTAB 2012) (finding that the examining attorney's failure to advise applicant of the insufficiency of the list of registrations when it was proffered during examination constituted a waiver of any objection to consideration of that list); In re 1st USA Realty Prof'ls, 84 USPQ2d at 1583 (allowing evidence of a list of third-party registrations because the examining attorney did not advise applicant of the insufficiency of the list while there was still time to correct the mistake) ; In re Broyhill Furniture Indus., Inc. , 60 USPQ2d 1511, 1513 n.3 (TTAB 2001) (finding examining attorney's objection to a listing of third-party registrations waived because it was not raised in the Office action immediately following applicant's response in which applicant’s reliance on the listing as evidence was indicated).  If the applicant files an appeal, the examining attorney should continue the objection to the evidence in his or her appeal brief.

Note that third-party applications have no probative value other than as evidence that the applications were filed. In re Toshiba Med. Sys. Corp ., 91 USPQ2d 1266, 1270 n.8 (TTAB 2009) ; In re Fiesta Palms LLC , 85 USPQ2d 1360, 1366 n.7 (TTAB 2007) ; In re 1st USA Realty Prof’ls Inc ., 84 USPQ2d 1581, 1583 (TTAB 2007) ; In re Phillips-Van Heusen Corp ., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002) ; TBMP §1208.02 .

711.01 Time May Run from Previous Action

In most cases, the six-month statutory period to respond to an Office action runs from the issuance date of the Office action.  In some situations, the examining attorney’s Office action does not re-start the beginning of a statutory response period.  For example, a notice that an applicant’s response was incomplete ( see TMEP §718.03 ), or a notice that an applicant’s request for reconsideration of a final action fails to overcome a refusal or satisfy an outstanding requirement ( see TMEP §715.03(c) ), does not begin a new response period.  In all cases in which the statutory response period runs from the date of a previous Office action, the examining attorney must include a statement to that effect in the Office action, and must omit the six-month response clause.

711.02 Supplemental Office Action Resetting Response Period

Sometimes the examining attorney must issue a supplemental Office action that resets the six-month statutory period for response.  If the examining attorney discovers after issuing an action that a refusal or requirement that should have been raised was overlooked, the examining attorney must issue a supplemental Office action addressing the issue and resetting the period for response.   See TMEP §706 .  The examining attorney must also issue a supplemental Office action if a new issue arises after the issuance date of a previous Office action (e.g. , during examination of an amendment to allege use).

If the examining attorney issues a supplemental Office action, a new six-month response period will begin running from the issuance date of the supplemental action.   See 15 U.S.C. §1062(b) .  In a supplemental Office action, the examining attorney should:  (1) indicate that the action is supplemental to and supersedes the previous action; (2) specifically identify all of the outstanding refusals and/or requirements; and (3) include the standard six-month response clause.

In a §66(a) application, the examining attorney cannot issue a new refusal more than 18 months after the date on which the IB forwards the request for extension of protection to the USPTO.   15 U.S.C.  §1141h(c) ; TMEP §1904.03(a) .

See TMEP §717 regarding reissuing of Office actions.

712.01 Persons Who May Sign Response

If an applicant is represented by a qualified practitioner, the practitioner must personally sign the response.   37 C.F.R. §§2.193(e)(2)(i) , 11.18(a) .  This applies to both in-house and outside counsel.

If the applicant or registrant is not represented by a qualified practitioner, the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership) must sign the response.   37 C.F.R. §§2.62(b) , 2.193(e)(2)(ii) .  In the case of joint applicants who are not represented by a qualified practitioner, all must sign the response. 37 C.F.R.§2.19(e)(2)(ii) . See TMEP §611.06 for guidelines as to persons who have legal authority to bind various types of juristic entities.  A person who is authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.193(e)(1) is not entitled to sign responses to Office actions, unless he or she also has legal authority to bind the applicant or is a qualified practitioner.

If the applicant is represented by a qualified practitioner, and the response consists only of a declaration (e.g., if the verification was omitted from the initial application and no other issues were raised in the Office action), the response may be signed by a person authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.193(e)(1) ( see TMEP §804.04 ), and no separate signature by the practitioner is required.  However, if the response includes a verification and also contains legal arguments or amendments, the response must be signed by the practitioner. See 37 C.F.R. §2.193(e)(2) .

Similarly, if the applicant is not represented by a qualified practitioner, and the response consists only of a declaration, the response may be signed by a person authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.193(e)(1) , and no separate signature by the applicant or someone with legal authority to bind the applicant is required.  However, if the response includes a verification and also contains legal arguments or amendments, the response must be signed by the individual applicant or someone with legal authority to bind a juristic applicant.   37 C.F.R. §§2.62(b) , 2.74(b) , 2.193(e)(2) .

The examining attorney must ensure that the record establishes the authority of the person who signs the response. If a response to an Office action appears to be signed by an unauthorized person (e.g. , a foreign attorney who is not authorized to practice before the USPTO or a corporate employee who does not have legal authority to bind the applicant), the examining attorney must treat the response as incomplete and require the applicant to submit a properly signed response.  The response cannot be ratified by an examiner’s amendment.  See TMEP §§ 608.01 , 611.05–611.05(c) , and 712.03 for further information.

See TMEP §§602–602.03(e) regarding persons who are authorized to represent others before the USPTO, and TMEP §611.04 for examples of authorized and potentially unauthorized signatories.

These same principles apply to authorizations of examiner’s amendments and priority actions.   See TMEP §§ 707.01 , 708.02 .

712.02 Unsigned Response

The examining attorney should treat an unsigned response as an incomplete response, and should either call the applicant to obtain permission to enter an examiner’s amendment from an authorized party (if appropriate), or issue a notice of incomplete response granting the applicant 30 days, or to the end of the six-month response period set forth in the previous Office action, whichever is longer, to perfect the response, pursuant to 37 C.F.R. §2.65(a)(2) .   See TMEP §718.03(b) .  To issue a notice of incomplete response, the examining attorney should use the “Examiner’s Non-Responsive Amendment” (or, if appropriate, “SU – Examiner’s Non-Responsive Amendment”) selection for a response to a nonfinal action or the “Examiner’s Action Continuing a Final Refusal – 30-day Letter” (or, if appropriate, “SU – Examiner’s Action Continuing a Final Refusal – 30-day Letter”) selection if the response is to a final action. In either instance, the notice of incomplete response must not include a six-month response clause.

If the applicant is not represented by a qualified practitioner and the response does not require a signed verification ( see TMEP §§804–804.05 ), the applicant or a person with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership) may either request that the amendment(s) be entered through an examiner’s amendment or submit a properly signed copy of the response.  If the applicant is represented by a qualified practitioner, that practitioner must submit the response or request entry of an examiner’s amendment. A duplicate of the original response can be submitted through TEAS (using the response to Office action form) or a properly signed copy of the original document can be submitted by fax (unless it is excluded by 37 C.F.R. §2.195(d) ).  In a TEAS Plus or TEAS RF application, the response must be filed through TEAS or the application will lose TEAS Plus or TEAS RF status (see TMEP §§819.02(b), 820.02(b) ). The examining attorney must defer action on the merits of the response until the applicant files a properly signed response.  

The substitute response must be personally signed by a qualified practitioner or, if the applicant is not represented by a qualified practitioner, by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership).   37 C.F.R. §§2.62(b) , 2.193(e)(2) , and 11.18(a) ;   see TMEP §§611.03(b) .

If an applicant fails to submit a properly signed response within the time granted under 37 C.F.R. §2.65(a)(2) , the examining attorney must hold the application abandoned for failure to file a complete response.   See TMEP §718.03 .  In this situation, the applicant cannot file a petition to revive under 37 C.F.R. §2.66 .  The applicant’s recourse is to file a petition to the Director to reverse the examining attorney’s holding of abandonment under 37 C.F.R. §2.146 .   See TMEP §1713.02 .

712.03 Response Signed by an Unauthorized Person

Notice of Incomplete Response.  When it appears that a response to an Office action was signed by an improper party (e.g., a foreign attorney who is not authorized to practice before the USPTO, a corporate employee who does not have legal authority to bind the applicant, or, when the applicant is represented by a qualified practitioner, someone other than the practitioner or another qualified practitioner from the same firm), the examining attorney must treat the response as incomplete.  The examining attorney must issue a notice of incomplete response granting the applicant 30 days, or to the end of the six-month response period set forth in the previous Office action, whichever is longer, to perfect the response, pursuant to 37 C.F.R. §2.65(a)(2) ( see TMEP §§ 611.05(a), 718.03(b) ).  The examining attorney must defer action on the merits of the response until a properly signed response is filed.

Applicant’s Reply to Notice of Incomplete Response.  If the person who signed the response was authorized to sign, the applicant’s reply to the notice of incomplete response should state the nature of the relationship of the signer to the applicant.  If the signer has legal authority to bind the applicant, the person should so state, and should set forth his or her title or position.  If the signer is an attorney authorized to practice before the USPTO pursuant to 37 C.F.R. §11.14(a) , the attorney should identify him or herself as an attorney and indicate the United States state bar of which he or she is a member in good standing.  If the signer meets the requirements of either 37 C.F.R. §11.14(b) or (c) , the person should explain how he or she meets these requirements.  See TMEP §611.05(b) for further information.

If the person who signed the response is not an authorized signer, the applicant is unrepresented, and all proposed amendments in the improperly signed response can be resolved by an examiner’s amendment, the individual applicant or a person with legal authority to bind a juristic applicant may telephone the examining attorney to authorize such an amendment.  If the applicant is represented by a qualified practitioner, that practitioner must authorize any examiner’s amendment. Otherwise, the applicant must submit a response signed by the applicant or someone with legal authority to bind the applicant ( see TMEP §§712.01 et seq.), or by a qualified practitioner.  This should be done through TEAS (using either the "Response to Office Action" or "Request for Reconsideration after Final Office Action" form, as appropriate), or may be done by fax (unless it is excluded by 37 C.F.R. §2.195(d) ).  In a TEAS Plus or TEAS RF application, the response must be filed through TEAS, or the application will lose TEAS Plus or TEAS RF status ( see TMEP §§819.02(b), 820.02(b)) .  See TMEP §611.01(c) regarding signature of documents submitted through TEAS.  When a response is signed by an unauthorized party, it is not acceptable for the applicant to ratify the response through an examiner’s amendment.

Unsatisfactory Response or No Response.  If no acceptable response is received within the time granted under 37 C.F.R. §2.65(a)(2) , the examining attorney must hold the application abandoned for failure to file a complete response.   See TMEP §718.03 .  In this situation, the applicant cannot file a petition to revive under 37 C.F.R. §2.66 .  The applicant’s recourse is to file a petition to the Director to reverse the examining attorney’s holding of abandonment under 37 C.F.R. §2.146 .  See TMEP §1713.01 regarding the standard of review for reversing an examining attorney’s holding of abandonment due to incomplete response.

713.01 Previous Action by Different Examining Attorney

When assigned to act on an application that was previously handled by a different examining attorney, the examining attorney should act consistently with the examining attorney who handled the earlier-filed application, unless it would be clear error ( see TMEP §706.01 ) to act consistently.

713.02 Noting All Outstanding Refusals or Requirements

Every refusal or requirement made in a prior Office action that is still outstanding must be referenced in any subsequent action, including Notices of Suspension. In addition, when a particular refusal or requirement has been withdrawn, obviated, or satisfied because of applicant’s response or otherwise, the examining attorney should notify the applicant in any action that immediately follows.

Noting all outstanding refusals and requirements is done only as a courtesy to prevent any misunderstanding. A refusal or requirement issued in a previous action remains in effect unless the examining attorney specifically indicates that it has been withdrawn, obviated, or satisfied. Thus, if an examining attorney issues an Office action that does not mention an outstanding refusal or requirement that was raised in a previous action, the refusal or requirement may nonetheless be made final in a subsequent action, if the application is otherwise in condition to be made final.

713.03 Response to Applicant’s Arguments in Nonfinal Actions

When the applicant submits arguments attempting to overcome a refusal or requirement, the examining attorney must respond to the applicant’s arguments. See TMEP §718.02(a) for an examining attorney’s response to an applicant’s incomplete response to a partial nonfinal refusal or requirement and TMEP §§715.03 and 715.04 for an examining attorney’s response to an applicant’s arguments in a request for reconsideration after final action.

In response to a refusal under §2(d) of the Trademark Act, 15 U.S.C. §1052(d) ,  the applicant may respond that the cited registration should be cancelled because the registrant has not filed the required maintenance documents.

The examining attorney must not withdraw a refusal of registration under §2(d) until the Trademark database shows that the registration is cancelled or expired.  To allow ample time for processing of timely filed post-registration maintenance documents, the USPTO waits until 30 days after the expiration of the grace period before updating its records to show that the registration is cancelled or expired.

If the examining attorney determines that 30 days have passed since the expiration of the grace period, but the Trademark database does not indicate that the registration is cancelled or expired, the examining attorney should contact the Supervisor of the Post Registration Section and request that the database be updated to show that the registration is cancelled or expired. See TMEP §1611 . If a party other than the examining attorney determines that 30 days have passed since the expiration of the grace period, but the Trademark database does not indicate that the registration is cancelled or expired, the party should contact the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 and request that the database be updated to show that the registration is cancelled or expired.

See TMEP §716.02(e) regarding when suspension is proper for awaiting cancellation/expiration of a cited registration for failure to file required maintenance documents.