113 Service of Papers
37 CFR § 2.119 Service and signing of papers.
- (a) Every paper filed in the United States Patent and Trademark Office in inter partes cases, including notice of appeal, must be served upon the other parties. Proof of such service must be made before the paper will be considered by the Office. A statement signed by the attorney or other authorized representative, attached to or appearing on the original paper when filed, clearly stating the date and manner in which service was made will be accepted as prima facie proof of service.
- (b) Service of papers must be on the attorney or other authorized representative of the party if there be such or on the party if there is no attorney or other authorized representative, and may be made in any of the following ways:
- (1) By delivering a copy of the paper to the person served;
- (2) By leaving a copy at the usual place of business of the person served, with someone in the person’s employment;
- (3) When the person served has no usual place of business, by leaving a copy at the person’s residence, with a member of the person’s family over 14 years of age and of discretion;
- (4) Transmission by the Priority Mail Express® Post Office to Addressee service of the United States Postal Service or by first-class mail, which may also be certified or registered
- (5) Transmission by overnight courier.
- (6) Electronic transmission when mutually agreed upon by the parties.
Whenever it shall be satisfactorily shown to the Director that none of the above modes of obtaining service or serving the paper is practicable, service may be by notice published in the Official Gazette.
- (c) When service is made by first-class mail, Priority Mail Express®, or overnight courier, the date of mailing or of delivery to the overnight courier will be considered the date of service. Whenever a party is required to take some action within a prescribed period after the service of a paper upon the party by another party and the paper is served by first-class mail, Priority Mail Express®, or overnight courier, 5 days shall be added to the prescribed period.
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113.01 Requirement for Service of Papers
Every document filed in an inter partes proceeding before the Board, including a notice of appeal from a decision of the Board, must be served by the filing party upon every other party to the proceeding. [ Note 1.]
The requirement for service applies not only to documents filed in an inter partes proceeding before the Board, but also to documents filed in an application or registration which is the subject of such a proceeding, if the documents could have an effect on the inter partes proceeding. For example, a request to amend or correct an application or registration which is the subject of an inter partes proceeding; an abandonment of the application; or a voluntary surrender of the registration, must all be served by the defendant upon every other party to the proceeding.
NOTES:
113.02 Requirement for Proof of Service
When a party to an inter partes proceeding before the Board files a document required by 37 CFR § 2.119(a) to be served upon every other party to the proceeding, proof that the required service has been made ordinarily must be submitted before the filing will be considered by the Board. Occasionally, in order to expedite matters, and when the interests of the other party or parties would be served thereby, the Board itself will serve, along with an action of the Board relating thereto, a copy of a document that does not include the required proof of service. For example, if an applicant in an opposition files an abandonment of its involved application without the written consent of the opposer, and the abandonment does not include proof of service upon the opposer, the Board does not send out an action stating that the abandonment will not be considered until proof of service has been submitted. Rather, the Board provides an electronic link to the TTABVUE database for the filed abandonment, along with a copy of an action by the Board entering judgment in opposer’s favor pursuant to 37 CFR § 2.135 (which provides, in part, that after the commencement of an opposition, if the applicant files a written abandonment of its application or mark without the written consent of every adverse party to the proceeding, judgment shall be entered against the applicant). [ Note 1.]
NOTES:
1. See, e.g., Central Manufacturing Inc. v. Third Millennium Tech. Inc., 61 USPQ2d 1210, 1212 n.3 (TTAB 2001) (unserved copy of objection to further extensions of time to oppose filed prior to institution of proceeding forwarded to opposer).
113.03 Elements of Certificate of Service
The Board will accept, as prima facie proof that a party filing a document in a Board inter partes proceeding has served a copy of the document upon every other party to the proceeding, a statement signed by the filing party, or by its attorney or other authorized representative, clearly stating the date and manner in which service was made. The statement should also specify the name of each party or person upon whom service was made, and the address. The statement must appear on, or be securely attached to, the document being filed. If the statement is on a separate sheet attached to the filing, it should clearly identify the submission and proceeding to which it relates. [ Note 1.]
NOTES:
1. See 37 CFR § 2.119(a).
Suggested Format
Shown below is a suggested format for a certificate of service:
I hereby certify that a true and complete copy of the foregoing (insert title of submission) has been served on (insert name of opposing counsel or party) by mailing said copy on (insert date of mailing), via First Class Mail, postage prepaid (or insert other appropriate method of delivery) to: (set out name and address of opposing counsel or party).
__________________
Signature
113.04 Manner of Service
Service of papers filed in inter partes cases may be made in any of the ways specified in 37 CFR § 2.119(b). They are: (1) by hand delivering a copy of the submission to the person being served; (2) by leaving a copy of the submission at the usual place of business of the person being served, with someone in the person’s employment; (3) when the person being served has no usual place of business, by leaving a copy of the submission at the person’s address, with a member of the person’s family over 14 years of age and of discretion; (4) transmission by the Priority Mail Express® Post Office to Addressee" service of the United States Postal Service or by first-class mail, which may also be certified or registered; (5) transmission by overnight courier; and (6) electronic transmission when mutually agreed upon by the parties. In addition, whenever it is satisfactorily shown to the Director that none of the specified modes of service is practicable, service may be made by notice published in the Official Gazette of the USPTO. [ Note 1.]
When service is made by mail, pursuant to 37 CFR § 2.119(b)(4), the Board considers the mailing date of the paper to be the date when the paper is deposited with the United States Postal Service, i.e., the date when custody of the paper passes to the Postal Service. As provided in 37 CFR § 2.119(a), the Board ordinarily accepts, as prima facie proof of the date of mailing, the statement signed by the filing party, or by its attorney or other authorized representative, as to the date and manner of service. However, where the prima facie proof of the certificate of service is rebutted by other evidence, and the paper would be timely served if mailed on the date specified in the certificate of service, but untimely served if not mailed until the date indicated by the rebutting evidence, the Board may request that the person who signed the certificate of service submit an affidavit specifying the date when the paper was actually deposited with the United States Postal Service.
When agreed upon by the parties, service may be made by electronic means, such as email or fax. [ Note 2.] The best practice is to reduce such an agreement to writing, although the agreement should not be filed with the Board unless necessary to resolve a motion.
A party located outside the United States generally cannot serve an adverse party by the manners of service specified in 37 CFR §§ 2.119(b)(1)-(3)37 CFR § 2.119(b)(1) - 37 CFR § 2.119(b)(3). Moreover, a foreign party may not substitute its national postal service, or omit reference to the nation of the postal service employed, as a means of using 37 CFR § 2.119(b)(4) manner of service; 37 CFR § 2.119(b)(4) requires transmission by the United States Postal Service.
As a practical matter, parties located outside the United States must meet the service requirement through 37 CFR § 2.119(b)(5) - 37 CFR § 2.119(b)(6). Parties located outside the United States are strongly encouraged to list an email address with the Board for the duration of the inter partes proceeding, and to seek written agreement from the adverse party to service by electronic transmission.
NOTES:
1. 37 CFR § 2.119(b). See also Musical Directions v. McHugh, 104 USPQ2d 1157, 1160 (TTAB 2012) (absent agreement for service by email or fax, all papers must be served in compliance with 37 CFR § 2.119).
113.05 Additional Time for Taking Action After Service by Mail
Whenever a party to an inter partes proceeding before the Board is required to take some action within a prescribed period of time after the service of a paper upon that party by another party to the proceeding, and the paper is served by first-class mail, Priority Mail Express®, or overnight courier, the time for taking action is enlarged by 5 days. [ Note 1.] The 5-day enlargement is not applicable to agreed use by parties of service by electronic transmission (i.e. email or fax) and parties may not stipulate to circumvent this requirement. [ Note 2.] In addition, Fed. R. Civ. P. 6(d) is not applicable to Board proceedings. As an alternative to email service, parties may stipulate to accept service by mail but also agree to serve a courtesy copy by email. Please Note: a courtesy copy does not substitute for proper service under the applicable Trademark Rules. [ Note 3.]
For example, if one party to a proceeding serves, upon another party to the proceeding, a motion to compel discovery, and service of the motion is made by first-class mail, Priority Mail Express®, or overnight courier, under 37 CFR § 2.119(c), the served party’s time for filing a response to the motion will be 20 days from the date of service of the motion, that is, from the date of mailing or of delivery to the overnight courier. Because the service was made by first-class mail, Priority Mail Express®, or overnight courier, 5 days are added to the 15-day period prescribed in 37 CFR § 2.127(a) for filing a response to a motion. The additional 5 days are added to the response period before applying 37 CFR § 2.196, which addresses the response time when the last day for taking action falls on a Saturday, Sunday, or Federal holiday.
37 CFR § 2.119(c) applies only when a party has to take some action within a prescribed period after the service of a paper upon it by another party, and service of the paper was made in one of three specified ways. It does not apply to an action that must be taken by a party within a time set in a communication from the Board. Thus, for example, when a Board action notifying a defendant of the filing of an opposition or petition to cancel allows the defendant 40 days from the date of the notification in which to file an answer to the complaint, the answer is due on or before the 40th day, not on the 45th day. Similarly, the 5-day enlargement is not applicable to 37 CFR § 2.128 which sets the time for filing the briefs on the case. TBMP § 801.02
NOTES:
2. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42250 (August 1, 2007) ("As for agreed use by parties of email or fax for forwarding of service copies, the Office confirms that § 2.119(c) would not apply to service by electronic transmission (email or fax) under § 2.119(b)(6)."); see McDonald'’s Corp. v. Cambrige Overseas Development Inc., 106 USPQ2d 1339, 1340 (TTAB 2013) (parties who have stipulated to service by email may not take advantage of five additional days for service provided under 37 CFR § 2.119(c) and may not stipulate to circumvent this requirement).
3. Jacques Moret Inc. v. Speedo Holdings B.V., 102 USPQ2d 1212, 1217 n.7 (TTAB 2012).
113.06 A Certificate of Service is Not...
A certificate of service is not the equivalent of a certificate of mailing or transmission for any purpose. TBMP § 110.08.