110    Certificate of Mailing Procedure and Electronic Filing Using ESTTA

110.01    Certificate of Mailing – In General

37 CFR § 2.197  Certificate of mailing or transmission.

  • (a) Except in the cases enumerated in paragraph (a)(2) of this section, correspondence required to be filed in the Office within a set period of time will be considered as being timely filed if the procedure described in this section is followed. The actual date of receipt will be used for all other purposes.
    • (1) Correspondence will be considered as being timely filed if:
      • (i) The correspondence is mailed or transmitted prior to expiration of the set period of time by being:
        • (A) Addressed as set out in § 2.190 and deposited with the U.S. Postal Service with sufficient postage as first class mail; or
        • (B) Transmitted by facsimile to the Office in accordance with § 2.195(c); and
      • (ii) The correspondence includes a certificate for each piece of correspondence stating the date of deposit or transmission. The person signing the certificate should have reasonable basis to expect that the correspondence would be mailed or transmitted on or before the date indicated.
    • (2) The procedure described in paragraph (a)(1) of this section does not apply to:
      • (i) Applications for the registration of marks under 15 U.S.C. 1051 or 1126; and
      • (ii) Madrid-related correspondence filed under § 7.11, § 7.21, § 7.14, § 7.23, § 7.24 or § 7.31.
  • (b) In the event that correspondence is considered timely filed by being mailed or transmitted in accordance with paragraph (a) of this section, but not received in the Office, and an application is abandoned, a registration is cancelled or expired, or a proceeding is dismissed, terminated, or decided with prejudice, the correspondence will be considered timely if the party who forwarded such correspondence:
    • (1) Informs the Office of the previous mailing or transmission of the correspondence within two months after becoming aware that the Office has no evidence of receipt of the correspondence;
    • (2) Supplies an additional copy of the previously mailed or transmitted correspondence and certificate; and
    • (3) Includes a statement which attests on a personal knowledge basis or to the satisfaction of the Director to the previous timely mailing or transmission. If the correspondence was sent by facsimile transmission, a copy of the sending unit’s report confirming transmission may be used to support this statement.
  • (c) The Office may require additional evidence to determine whether the correspondence was timely filed.

    The certificate of mailing procedure discussed below applies only to submissions filed in paper form. For information regarding the filing of submissions via the Internet using ESTTA, see TBMP § 110.09.

Except in certain instances, specified in 37 CFR § 2.197(a), as amplified by 37 CFR § 2.195(c), correspondence required to be filed within a set period of time will be considered as being timely filed, even though the correspondence is not received by the Office until after the expiration of the set period, if, prior to the expiration of the set period, (1) the correspondence is mailed to the Office by first-class mail, with the proper address, or (for correspondence which is permitted to be filed by fax) is transmitted to the Office by fax, in accordance with 37 CFR § 2.195(c), and (2) includes a certificate of mailing or transmission which meets the requirements specified in 37 CFR § 2.197(a). [ Note 1.]

In effect, the certificate of mailing or transmission procedure permits certain types of correspondence, as specified in 37 CFR § 2.197(a)  and 37 CFR § 2.195(c), to be sent to the Office by first-class mail, or by fax transmission, even on the due date for the correspondence and still be considered timely, notwithstanding the fact that the mailed correspondence will not be received in the Office until after the due date, or that the fax transmission may not, because of USPTO equipment failure or maintenance requirements, be completed until the next day. [ Note 2.]

However, the Office, in its discretion, may require additional evidence to determine if correspondence which bears a certificate of mailing or a certificate of transmission was timely filed, i.e., was mailed or transmitted on the date stated in the certificate. [ Note 3.]

The certificate of mailing procedure applies to the filing of all types of correspondence in Board proceedings.

The certificate of transmission procedure is available in Board proceedings only for the filing of a notice of ex parte appeal to the Board. [ Note 4.] See TBMP § 107 (How and Where to File Papers and Fees).

NOTES:

 1.   37 CFR § 2.197(a); In re LS Bedding, 16 USPQ2d 1451, 1452-53 (Comm’r 1990) (certificate of mailing procedure is used to determine timeliness, while the actual receipt date is used for all other purposes, such as an application filing date). See Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733, 1734 n.2 (TTAB 2001) (no certificate of mailing).

 2.   See Luemme Inc. v. D.B. Plus Inc., 53 USPQ2d 1758, 1759 n.1 (TTAB 1999) (motion to extend filed by a certificate of mailing dated next business day was timely where the period closed on the preceding day, a Sunday).

 3.   37 CFR § 2.197(c); S. Industries Inc. v. Lamb-Weston Inc., 45 USPQ2d 1293, 1295 (TTAB 1997) (where prima facie proof of certificate of mailing is rebutted by other evidence, person signing certificate must submit an affidavit specifying the date of actual deposit); In re Klein, 6 USPQ2d 1547, 1551-52 (Comm’r 1987), aff’d sub nom. Klein v. Peterson, 696 F. Supp. 695, 8 USPQ2d 1434 (D.D.C. 1988), aff’d 866 F.2d 412, 9 USPQ2d 1558 (Fed. Cir. 1989).

 4.   37 CFR § 2.195(d)(3).

110.02    Requirements for Certificate

37 CFR § 2.190  Addresses for trademark correspondence with the United States Patent and Trademark Office.

  • (a) Trademark correspondence . In general. All trademark-related documents filed on paper, except documents sent to the Assignment Services Division for recordation; requests for copies of trademark documents; and certain documents filed under the Madrid Protocol as specified in paragraph (e) of this section, should be addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451. All trademark-related documents may be delivered by hand, during the hours the Office is open to receive correspondence, to the Trademark Assistance Center, James Madison Building--East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia 22314.
  • (b) Electronic trademark documents. An applicant may transmit a trademark document through TEAS, at http://www.uspto.gov.
  • (c) Trademark Assignments. Requests to record documents in the Assignment Services Division may be filed through the Office’s website, at http://www.uspto.gov. Paper documents and cover sheets to be recorded in the Assignment Services Division should be addressed to: Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450. See § 3.27 of this chapter.
  • (d) Requests for copies of trademark documents. Copies of trademark documents can be ordered through the Office’s website at www.uspto.gov. Paper requests for certified or uncertified copies of trademark documents should be addressed to: Mail Stop Document Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
  • (e) Certain Documents Relating to International Applications and Registrations. International applications under § 7.11, subsequent designations under § 7.21, responses to notices of irregularity under § 7.14, requests to record changes in the International Register under § 7.23 and § 7.24, requests to note replacements under § 7.28, requests for transformation under § 7.31, and petitions to the Director to review an action of the Office’s Madrid Processing Unit, when filed by mail, must be mailed to: Madrid Processing Unit, 600 Dulany Street, MDE-7B87, Alexandria, VA 22314-5793.

The requirements for filing trademark-related documents (except for trademark-related documents sent to the Assignment Recordation Branch for recordation and requests for certified copies of trademark application and registration documents) by the certificate of mailing or transmission procedure are as follows:

(1). Prior to the expiration of the set period, the correspondence must be either (i) deposited with the U.S. Postal Service, with sufficient postage as first-class mail, addressed to:

United States Patent and Trademark Office

Trademark Trial and Appeal Board

P.O. Box 1451

Alexandria,VA 22313-1451

or (ii) (for correspondence which is permitted to be filed by fax) transmitted to the Office by fax, in the manner described in 37 CFR § 2.195(c); and

(2). Each piece of correspondence must include a certificate which states the date of deposit or transmission, and is signed (separate and apart from any signature for the piece of correspondence itself) by a person who has a reasonable basis to expect that the correspondence will be mailed or transmitted on or before the date indicated. [ Note 1.]

Trademark-related documents sent to the Assignment Recordation Branch for recordation should be addressed to: Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450. If a certificate of mailing is used on such correspondence, it should specify that address. [ Note 2.]

Requests for copies (certified or uncertified) of trademark documents pertaining to applications and registrations are handled by the USPTO Patent and Trademark Copy Fulfillment Branch, Public Records Division. The address for all such requests mailed to the Office is: Mail Stop Document Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450. [ Note 3.] See TBMP § 121 for further information on obtaining file copies.

The Assignment Recordation Branch of the Public Records Division also has an electronic trademark assignment recording form on the Office website. The system is called ETAS (Electronic Trademark Assignment System) and allows customers to create and submit a Trademark Assignment Recordation Coversheet by completing on-line web forms and attaching the supporting legal documentation. The form and additional information can be accessed at www.uspto.gov/trademarks/process/assign.jsp. [ Note 4.]

The certificate of mailing procedure may not be used for mail sent to the United States Patent and Trademark Office from a foreign country, because U.S. Postal Service first-class mail services are not available in foreign countries.

A certificate of mailing or a certificate of transmission should be clearly labeled as such and should include a reference to the proceeding number to which it pertains, the date of transmission, and the signature of the person attesting that the document is being transmitted on a certain date. When possible, the certificate should appear on the paper being transmitted, rather than on a separate sheet of paper.

NOTES:

 1.   37 CFR § 2.197(a).

 2.   37 CFR § 2.190(c).

 3.   37 CFR § 2.190(d).

 4.   37 CFR § 2.190(c).

110.03    Suggested Format

Shown below is a suggested format for a certificate of mailing, under 37 CFR § 2.197, for trademark-related mail (except for trademark-related documents sent to the Assignment Recordation Branch for recordation and requests for certified copies of trademark application and registration documents):

Certificate of Mailing

I hereby certify that this correspondence

is being deposited with the United States

Postal Service with sufficient postage as

First-class mail in an envelope addressed to:

ATTN: Trademark Trial and Appeal Board

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA 22313-1451

on ___________ _________________

Date Signature

_________________________________

Typed or printed name of

person signing certificate

Shown below is a suggested format for a certificate of transmission under 37 CFR § 2.197:

Certificate of Transmission

I hereby certify that this correspondence

is being facsimile transmitted to the United

States Patent and Trademark Office

on ___________ _________________

Date Signature

_________________________________

Typed or printed name of

person signing certificate

110.04    Location of Certificate

If one of the simple certificate of mailing or certificate of transmission formats shown in TBMP § 110.03 is used, it may appear on the first page of the correspondence, if feasible. Otherwise, it should appear in its entirety on the last page of the correspondence to which it pertains. If the certificate is typed, and there is not enough room on the last page to type the certificate in its entirety, it should at least be started on the last page, so that only part of it continues over to another page. The simple certificate of mailing or certificate of transmission format should never be used by itself on a separate page at the end of the correspondence. If it is, and the page becomes detached from the rest of the submission, there will be no way of determining the identity of the correspondence to which it relates, and the benefit of the certificate will be lost.

In some cases, there may not be room for a certificate of mailing or a certificate of transmission on a piece of correspondence. In such a case, the certificate may be typed on a separate sheet of paper securely attached to the correspondence.

However, the simple certificate formats shown in TBMP § 110.03 are not appropriate for use on a separate sheet of paper. Rather, a certificate placed on a separate sheet of paper must include additional information, namely, a description of the nature of the correspondence to which it pertains, as well as the identity of the application, registration, or Office proceeding in connection with which the correspondence is being filed. If there is any doubt concerning the identity of the correspondence to which a certificate of mailing or certificate of transmission on a separate sheet pertains, the certificate will not be accepted.

110.05    Loss of Certificate of Mailing

If a certificate of mailing is typed on a separate sheet of paper attached to a piece of correspondence, and the certificate becomes detached, after the correspondence is filed in the Office, and does not contain identifying information sufficient to enable the Office to associate the certificate with the appropriate piece of correspondence, the Office will accept, as evidence that the certificate was filed with the specified correspondence, a postcard receipt (see TBMP § 108) which identifies the separate certificate of mailing sheet and the correspondence to which it was attached; accompanied by a copy of the certificate of mailing sheet as originally mailed.

110.06    No receipt of Correspondence Bearing Certificate

In the event that correspondence intended for the USPTO is timely filed with an appropriate certificate of mailing or certificate of transmission, pursuant to 37 CFR § 2.197, but is not received in the Office, and there is a resulting Office action, in a proceeding or an application, which is adverse to the submitting party, the correspondence will be considered timely if the party which submitted it (1) informs the Office of the previous mailing or facsimile transmission of the correspondence promptly after becoming aware that the Office has no evidence of receipt of the correspondence, (2) supplies an additional copy of the previously mailed or transmitted correspondence and certificate, and (3) includes a statement attesting, on a personal knowledge basis or to the satisfaction of the Director, to the previous timely mailing or transmission. The statement must be verified if it is made by a person other than a practitioner, as that term is defined in 37 CFR § 11.1. If the correspondence was appropriate for filing by fax transmission, a copy of the sending fax machine’s report confirming transmission may be used to support the statement. See also TBMP § 107 (How and Where to File Papers and Fees). [ Note 1.] If the document is not one authorized to be filed by facsimile transmission, the document will not be accepted. [ Note 2.]

For lost or misplaced correspondence intended for the Board, the evidence required by 37 CFR § 2.197(b)  should be submitted to the Board for consideration. If the requirements of 37 CFR § 2.197(b)  cannot be met, the only alternative is a petition to the Director.

NOTES:

 1.   37 CFR § 2.197(b).

 2.   A notice of ex parte appeal to the Board is the only document that may be filed by fax. 37 CFR § 2.195(d)(3).

110.07    Excluded Filings

The certificate of mailing procedure is not applicable to the filing of an extension of time to oppose, or a notice of opposition involving an application under Trademark Act § 66(a), 15 U.S.C. § 1141f(a). [ Note 1.] The certificate of mailing procedure is applicable to all other types of paper filings in Board proceedings, including a notice of opposition; a petition to cancel; a request for an extension of time to oppose; a notice of appeal to the Board from a final refusal of registration; a notice of appeal to the Court of Appeals for the Federal Circuit from a decision of the Board; and a notice of election (in an inter partes proceeding) to proceed by civil action under Trademark Act § 21(a)(1), 15 U.S.C. § 1071(a)(1), in response to another party’s appeal to the Court of Appeals for the Federal Circuit.

The certificate of transmission procedure is not applicable to any correspondence intended for the Board, except for the notice of appeal in an ex parte appeal to the Board, if sent by facsimile. [ Note 2.] Neither a certificate of mailing nor a certificate of transmission is necessary or appropriate for documents filed via ESTTA. When an ESTTA filing is received by the Board, the filer will be provided with a notice that the document has been successfully filed. See generally TBMP §110.09.

NOTES:

 1.   37 CFR § 2.102(a)(2)  ("A written request to extend the time for filing an opposition to an application filed under section 66(a) of the Act must be filed through ESTTA."); 37 CFR § 2.101(b)(2)  ("An opposition to an application based on section 66(a) of the Act must be filed through ESTTA."). In addition, the certificate of mailing procedure may not be used in connection with the filing of trademark applications, 37 CFR § 2.197(a)(2)(i), and certain other Madrid-related correspondence, 37 CFR § 2.197(a)(2)(ii). See TMEP § 305.02(a).

 2.   37 CFR § 2.195(d).

110.08    A Certificate of Mailing or Transmission is Not ...

As is evident from the requirements for a certificate of mailing, specified in 37 CFR § 2.197(a), the certificate of mailing procedure is not the same as mailing by certified mail. Correspondence sent to the Board by certified mail, and not in compliance with the 37 CFR § 2.197(a)  requirements for a certificate of mailing, will be stamped with the date of receipt of the correspondence in the Office, and that date will be used for all purposes, including the timeliness of the filing of the correspondence. [ Note 1.]

Further, a certificate of mailing or certificate of transmission is not the equivalent of a certificate of service. A certificate of mailing or certificate of transmission indicates when correspondence was sent to the Office pursuant to the provisions of 37 CFR § 2.197(a). The mailing date recited in a certificate of mailing, or the transmission date recited in a certificate of transmission, is used for purposes of determining the timeliness of the filing of the correspondence bearing the certificate. A certificate of service, on the other hand, indicates the date when a copy of the correspondence was served upon another party. A certificate of service cannot be used to prove the timeliness of the filing of the correspondence. See TBMP § 113 for information concerning a certificate of service.

NOTES:

 1.   See 37 CFR § 2.195  and 37 CFR § 2.197.

110.09    Electronic Filing Using ESTTA

37 CFR § 2.2(g) The acronym ESTTA means the Electronic System for Trademark Trials and Appeals, available at http://www.uspto.gov/.

37 CFR § 2.126(b) Submissions may be made to the Trademark Trial and Appeal Board electronically via the Internet where the rules in this part or Board practice permit, according to the parameters established by the Board and published on the website of the Office. Text in an electronic submission must be in at least 11-point type and double-spaced. Exhibits pertaining to an electronic submission must be made electronically as an attachment to the submission.

37 CFR § 2.101(b)(2) An opposition to an application based on section 66(a) of the Act must be filed through ESTTA.

37 CFR § 2.102(a)(2) A written request to extend the time for filing an opposition to an application filed under section 66(a) of the Act must be filed through ESTTA.

ESTTA – the Electronic System for Trademark Trials and Appeals – is the Board’s electronic filing system. ESTTA is a web-based application available on the Internet. No special software (apart from a web browser) need be installed on the user’s computer. Likewise, users need not open an account or obtain a password, and there is no additional fee for use of ESTTA.

The Board strongly encourages use of ESTTA for the filing of all submissions in Board proceedings. ESTTA permits round-the-clock filing with real-time receipt confirmation, while reducing delay and the possibility of mishandling of submissions in route to or within the USPTO. Many ESTTA filings are processed automatically, with an appropriate Board order issuing within minutes of filing. Use of ESTTA helps filers avoid common (and sometimes fatal) pitfalls in filing, and allows the Board to efficiently and expeditiously process and act upon filings.

Upon completion of a successful filing, a filer using ESTTA will receive both an on-screen and email acknowledgement of receipt from ESTTA with the ESTTA tracking number and the filing information including the official filing date. The filing date is the date on which the complete ESTTA filing (including any required fee) is received in the USPTO. Eastern time controls the filing date, not the local date from where the document was sent. [ Note 1.] ESTTA filers should not send hard copies of electronically-filed documents to the Board.

Filers outside of the United States generally cannot receive the benefit of a certificate of mailing, 37 CFR § 2.197, or filing by Priority Mail Express®, 37 CFR § 2.198, because both provisions require deposit of the correspondence with the U.S. Postal Service. However, ESTTA provides proof of timely filing from anywhere in the world.

The ESTTA user manual, ESTTA forms, and instructions for their use can be found at http://estta.uspto.gov/. Contextually appropriate help is available throughout ESTTA by clicking on highlighted, hyper-linked terms. These terms usually appear in blue, but may differ depending on your browser settings. Filers should also check "What’s New in ESTTA" for important user guidelines.

It is the responsibility of the party making submissions to the Board via ESTTA to ensure that the submissions have been entered into the trial record. [ Note 2.] Parties are urged to check not only the ESTTA filing receipts but also TTABVUE, the Board's electronic docket information and file database, to ensure that all documents have been properly transmitted. [ Note 3.]

This section is not intended to provide a comprehensive reference for use of ESTTA, but merely to emphasize ESTTA’s benefits and availability, and to provide some basic facts about its use.

NOTES:

 1.   37 CFR § 2.195(a)(2); http://estta.uspto.gov (instructions for filing via ESTTA).

 2.   Weider Publications, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1351 (TTAB 2014), appeal dismissed per stipulation, No. 2014-1461 (Fed. Cir. Oct. 10, 2014).

 3.   Weider Publications, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1351 (TTAB 2014), appeal dismissed per stipulation, No. 2014-1461 (Fed. Cir. Oct. 10, 2014).

110.09(a)    Plan Ahead

ESTTA users are strongly urged to plan ahead. Because unexpected problems can occur, users should keep filing deadlines in mind and allow plenty of time to resolve any issue which may arise. [ Note 1.] The Board will provide general assistance to ESTTA filers, see TBMP § 110.09(e) (Questions about ESTTA Filing), but cannot guarantee that any problem will be resolved prior to a deadline. Except when filing extensions of time to oppose or oppositions to Madrid Protocol applications, ESTTA filing is optional. If ESTTA filing is not possible prior to a deadline for any reason, parties should timely submit their filings on paper, using another filing option as appropriate (e.g., certificate of mailing or Priority Mail Express® procedures). See TBMP § 110 (Certificate of Mailing), and TBMP § 111 (Priority Mail Express® procedure). Note, however, that an extension of time to oppose, or a notice of opposition involving an application under Trademark Act § 66(a) must be filed through ESTTA. [ Note 2.] Users should not anticipate that the Board will extend a deadline because it was not possible to file a paper by ESTTA on the due date.

NOTES:

 1.   Vibe Records Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280 (TTAB 2008) (ESTTA filer encountered unexpected problem in ESTTA filing; filer transmitted notice of opposition by fax. Held: ESTTA filing not received and fax filing is unacceptable; opposition dismissed as a nullity.).

 2.   See 37 CFR § 2.102(a)(2)  (extension of time to oppose) and 37 CFR § 2.101(b)(2)  (notice of opposition). CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1960 (TTAB 2011) (any opposition to a Trademark Act § 66(a), 15 U.S.C. § 1141f(a), application must be filed through ESTTA); Hunt Control System, Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1561 (TTAB 2011) (same).

110.09(b)    ESTTA is Mandatory for Some Filings

Use of ESTTA is optional for most papers, but is mandatory for the filing of either (1) extensions of time to oppose Madrid Protocol applications, i.e., applications under Trademark Act § 66(a), 15 U.S.C. § 1141f, or (2) notices of opposition against Madrid Protocol applications. [ Note 1.] The requirement for use of ESTTA for such filings enables the USPTO to fulfill its obligation to timely notify the International Bureau of the World Intellectual Property Organization of oppositions against requests for extension of protection under the Madrid Protocol. A request for an extension of time to oppose a Madrid Protocol application which is not filed through ESTTA will be denied. [ Note 2.] Similarly, a notice of opposition not filed through ESTTA against such an application will not be instituted. [ Note 3.] Once a notice of opposition is filed, subsequent submissions may be filed either on paper, or through ESTTA, although use of ESTTA is strongly encouraged for all filings.

For a further discussion of filing notices of opposition against Madrid Protocol applications via ESTTA, see TBMP § 306.01.

NOTES:

 1.   See 37 CFR § 2.102(a)(2)  (extensions of time to oppose Trademark Act § 66(a), 15 U.S.C. § 1141f (a)  applications must be filed through ESTTA); 37 CFR § 2.101(b)(2)  (notice of opposition against § 66(a) application must be filed through ESTTA). See, e.g., CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1960 (TTAB 2011); Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1561 (TTAB 2011); O.C. Seacrets Inc. v. Hotelplan Italia S.p.A., 95 USPQ2d 1327, 1328 n.2 (TTAB 2010) (opposition to § 66(a) application must be filed via ESTTA).

 2.   In re Börlind Gesellschaft für kosmetische Erzeugnisse mbH, 73 USPQ2d 2019, 2020-21 (TTAB 2005).

 3.   See In re Börlind Gesellschaft für kosmetische Erzeugnisse mbH, 73 USPQ2d 2019, 2020-21 (TTAB 2005).

110.09(c)    Attachments to ESTTA Filings

110.09(c)(1)    In General

Many ESTTA forms permit or require the filer to attach an electronic file to be transmitted to the Board as part of the filing. For instance, an ESTTA user filing a notice of opposition or petition for cancellation must attach to its filing a pleading (i.e., a short and plain statement showing that the filer is entitled to relief). Likewise, a party filing a motion for summary judgment must attach a motion, as well as any affidavits or other evidence in support of it. When such a file can or must be attached, ESTTA will prompt the user to identify the file on the user’s computer and attach it to the ESTTA submission. Once a file has been selected and attached, ESTTA will display its pages in "thumbnail" form, so that the user may determine whether all of the relevant pages of the selected file or files have been designated for filing.

110.09(c)(2)    Form of ESTTA Attachments

Attachments to ESTTA filings may be in PDF, TIFF or TXT format. [ Note 1.] PDF is preferred, and should be used, if possible. Files should be formatted in letter size (8.5" x 11"), and should be rendered at 300 dpi resolution. ESTTA will accept either color or black and white PDF documents for uploading.

The filer is responsible for ensuring that all Board submissions – including attachments to ESTTA filings – are legible. Filers should be aware that the quality of ESTTA submissions is often better than those submitted in paper. [ Note 2.] Problems with image quality sometimes arise when poor quality documents are scanned or when the quality of legible documents is degraded in the scanning process; these problems typically arise in documents (or parts of documents) featuring graphical material, as opposed to text. Quality can sometimes be significantly degraded when contrast settings used in scanning are not appropriate for graphical material, or when color materials are scanned or copied in black and white prior to submission. If legibility of material in color or grayscale is important, filers are urged to scan the papers in color and to adjust the scanner’s contrast settings to achieve acceptable results prior to ESTTA filing. Users are urged to check the quality of their submission in TTABVUE after filing. TTABVUE contains the same images that the Board will use in considering the submission; if the TTABVUE image is not of acceptable quality, the user should not assume that the Board will be able to view and consider it appropriately. [ Note 3.] Original paper documents are retained for a period of time, usually less than one year, because, the Board works from the scanned images, rather than the originals.

In addition, electronically submitted pleadings, motions, briefs, and the like must be formatted for at least 11-point type and be double-spaced. [ Note 4.] Exhibits to pleadings, motions, and briefs need not be reformatted to meet these requirements, but must be legible.

NOTES:

 1.   PDF stands for Portable Document Format, a platform-independent, open standard for document exchange. TIFF stands for Tagged Image File Format. TXT is used here to denote a plain-text file format (with .txt extension), with little or no formatting or graphics capability. TIFF and TXT files will be converted to PDF format when they are received by ESTTA. Most word processing programs can directly convert files into one of these formats. Alternatively, papers can usually be scanned in PDF or TIFF format.

 2.   All paper submissions are scanned by the Board upon receipt. Even when making large filings, ESTTA is preferred over paper filing. Please Note: whether filed in paper form or filed electronically, the quality of papers scanned into TTABVUE appears the same way as when they are submitted. See, e.g., In re Sela Products., LLC, 107 USPQ2d 1580, 1585 n.5 (TTAB 2013). However, paper submissions in color appear in gray-scale in the database when scanned after receipt by the Office while color submissions that are uploaded into ESTTA by the filer appear in color in TTABVUE.

 3,   Weider Publications, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1350-51 (TTAB 2014) (duty of party making submissions to ensure they were entered into the trial record), appeal dismissed per stipulation, No. 2014-1461 (Fed. Cir. Oct. 10, 2014); Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014) ("the Board primarily uses TTABVUE in reviewing evidence"); Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc. dba Watermark Cruises, 107 USPQ2d 1750, 1758 n.16 (TTAB 2013) ("the onus is on the party making the submissions to ensure that, at a minimum, all materials are clearly readable by the adverse party and the Board"), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.).

 4.   37 CFR § 2.126(b).

110.09(c)(3)    Size Limitations

ESTTA is suitable (and is recommended) even for large filings such as trial testimony and notices of reliance. There is no specific limit to the amount of evidence one may submit in support of a Board proceeding. However, filers should use reason and avoid the submission of irrelevant or merely cumulative evidence. The unnecessary submission of large records is a significant burden upon the Board. [Note 1.] See TBMP § 702.05 for more information about submission of large records in general.

Filers should, however, be aware of certain system limitations. Filers may attach one or more files to any ESTTA form that permits or requires an attachment. The size limit for each file attached is 6 MB, and the aggregate of all attached files for a single ESTTA transmission may not exceed 53 MB. However, because very large flies degrade the performance of the Board’s electronic file system, filers should limit each ESTTA submission to no more than an aggregate (all attached files combined) so as not to exceed the limitations. If a single submission, e.g., a single testimonial transcript or notice of reliance, will exceed the limitations, it should be broken into two or more submissions, filed consecutively.

1. Corporacion Habanos SA v. Guantanamera Cigars Co., 102 USPQ2d 1085, 1091 (TTAB 2012) (excessive record on a single issue); General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1591 (TTAB 2011) (excessively large record).

110.09(d)    Service of ESTTA Filings

All papers filed in a Board inter partes proceeding must be served upon the other parties to the proceeding, and proof of service must be provided before the paper will be considered. [ Note 1.] Many of the ESTTA forms assist the filer by including a certificate of service as part of the ESTTA submission. In all other forms, the filer must include a certificate of service as an attachment (or as part of an attachment) to the ESTTA filing.

In addition to the requirement for a certificate of service, ESTTA papers, like all other Board filings, must actually be served upon the other parties to the proceeding in the manner designated. [ Note 2.] See TBMP § 113 (Service of Papers). ESTTA does not automatically serve papers upon opposing parties or provide notice of their filing. [ Note 3.]

For a further discussion regarding the filing of a notice of opposition or a petition for cancellation via ESTTA and service requirement, see TBMP § 306.01 (notice of opposition); and TBMP § 307.01-TBMP § 307 .02 (petition for cancellation).

NOTES:

 1.   37 CFR § 2.119(a).

 2.   Springfield Inc. v. XD, 86 USPQ2d 1063, 1064 (TTAB 2008) ("The proof of service requirement assumes actual service on applicant, or its attorney or domestic representative of record, if any."). See also 37 CFR § 2.119(b)  (acceptable means of service).

 3.   Equine Touch Foundation Inc. v. Equinology Inc., 91 USPQ2d 1943, 1944 n.5 (TTAB 2009) ("[a]ny plaintiff who files a complaint through ESTTA is viewed by the Board as having included proof of service with its pleading. Actual forwarding of the service copy, however, is the responsibility of the filer, as ESTTA does not effect service for the filer."); Schott AG v. Scott, 88 USPQ2d 1862, 1863 n.3 (TTAB 2008). See, e.g., Chocoladefabriken Lindt & Sprungli AG v. Flores, 91 USPQ 2d 1698, 1699 n.2 (TTAB 2009) (opposer filed notice of opposition via ESTTA and served copy thereof on applicant by first-class mail).

110.09(e)    Questions About ESTTA Filing

Filers may call the Board with questions about filing at (571) 272-8500 or (800) 786-9199 (toll free) from 8:30 a.m. until 5:00 p.m. (Eastern Time). Alternatively, filers may send non-urgent email inquiries to ESTTA@uspto.gov, and include a description of the problem, the ESTTA tracking number and Board proceeding number (if any), and a telephone number for contact. The Board will respond to email inquiries within two business days. The email address is for technical ESTTA questions only. Papers will not be accepted for filing by email. See TBMP § 107 ("The Board does not accept any filings by email.").

ESTTA users are encouraged to contact the Board when ESTTA is not working as expected. Whether or not one is able to overcome a problem, others are likely to have similar difficulties. Absent notification by users, the Board may be unaware of the problem, delaying any necessary repair.