111 Priority Mail Express® and Certificate of Mailing Procedures
The procedures described below apply to submissions in paper form.
The Priority Mail Express® procedure discussed below at TBMP § 111.01 applies only to paper submissions that meet an exception to the requirement that submissions be filed electronically using ESTTA. For information regarding the electronic filing of submissions through ESTTA, see TBMP § 110.
The certificate of mailing procedure discussed below at TBMP § 111.02 applies only to paper submissions that meet an exception to the requirement that submissions be filed electronically through ESTTA. For information regarding the electronic filing of submissions via the Internet using ESTTA, see TBMP § 110
111.01 Priority Mail Express® - In General
37 C.F.R. §2.198 Filing of correspondence by Priority Mail Express®.
- (a)(1) Except for documents listed in paragraphs (a)(1)(i) through (viii) of this section, any correspondence received by the Office that was delivered by the Priority Mail Express® Post Office to Addressee service of the United States Postal Service (USPS) will be considered filed with the Office on the date of deposit with the USPS. The Priority Mail Express® procedure does not apply to:
- (i) Applications for registration of marks;
- (ii) Amendments to allege use under section 1(c) of the Act;
- (iii) Statements of use under section 1(d) of the Act;
- (iv) Requests for extension of time to file a statement of use under section 1(d) of the Act.
- (v) Affidavits of continued use under section 8 of the Act;
- (vi) Renewal requests under section 9 of the Act;
- (vii) Requests to change or correct addresses; and
- (viii) Affidavits of use under section 71 of the Act.
- (2) The date of deposit with USPS is shown by the "date accepted" on the Priority Mail Express® label or other official USPS notation. If the USPS deposit date cannot be determined, the correspondence will be accorded the date of receipt in the Office as the filing date.
- (b) Correspondence should be deposited directly with an employee of the USPS to ensure that the person depositing the correspondence receives a legible copy of the Priority Mail Express® mailing label with the "date accepted" clearly marked. Persons dealing indirectly with the employees of the USPS (such as by deposit in a Priority Mail Express® drop box) do so at the risk of not receiving a copy of the Priority Mail Express® mailing label with the desired "date accepted" clearly marked. The paper(s) or fee(s) that constitute the correspondence should also include the Priority Mail Express® mailing label number thereon. See paragraphs (c), (d) and (e) of this section.
- (c) Any person filing correspondence under this section that was received by the Office and delivered by the Priority Mail Express® Post Office to Addressee service of the USPS, who can show that there is a discrepancy between the filing date accorded by the Office to the correspondence and the date of deposit as shown by the "date accepted" on the Priority Mail Express® mailing label or other official USPS notation, may petition the Director to accord the correspondence a filing date as of the "date accepted" on the Priority Mail Express® mailing label or other official USPS notation, provided that:
- (1) The petition is filed within two months after the person becomes aware that the Office has accorded, or will accord, a filing date other than the USPS deposit date;
- (2) The number of the Priority Mail Express® mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing; and
- (3) The petition includes a true copy of the Priority Mail Express® mailing label showing the "date accepted," and of any other official notation by the USPS relied upon to show the date of deposit.
- (d) Any person filing correspondence under this section that was received by the Office and delivered by the Priority Mail Express® Post Office to Addressee service of the USPS, who can show that the "date accepted" on the Priority Mail Express® mailing label or other official notation entered by the USPS was incorrectly entered or omitted by the USPS, may petition the Director to accord the correspondence a filing date as of the date the correspondence is shown to have been deposited with the USPS, provided that:
- (1) The petition is filed within two months after the person becomes aware that the Office has accorded, or will accord, a filing date based upon an incorrect entry by the USPS;
- (2) The number of the Priority Mail Express® mailing label was placed on the paper(s) or fee(s) prior to the original mailing; and
- (3) The petition includes a showing that establishes, to the satisfaction of the Director, that the correspondence was deposited in the Priority Mail Express® Post Office to Addressee service prior to the last scheduled pickup on the requested filing date. Any showing pursuant to this paragraph must be corroborated by evidence from the USPS or evidence that came into being within one business day after the deposit of the correspondence in the Priority Mail Express® Post Office to Addressee service of the USPS.
- (e) If correspondence is properly addressed to the Office pursuant to § 2.190 and deposited with sufficient postage in the Priority Mail Express® Post Office to Addressee service of the USPS, but not received by the Office, the party who mailed the correspondence may petition the Director to consider such correspondence filed in the Office on the USPS deposit date, provided that:
- (1) The petition is filed within two months after the person becomes aware that the Office has no evidence of receipt of the correspondence;
- (2) The number of the Priority Mail Express® mailing label was placed on the paper(s) or fee(s) prior to the original mailing;
- (3) The petition includes a copy of the originally deposited paper(s) or fee(s) showing the number of the Priority Mail Express® mailing label thereon, a copy of any returned postcard receipt, a copy of the Priority Mail Express® mailing label showing the "date accepted," a copy of any other official notation by the USPS relied upon to show the date of deposit, and, if the requested filing date is a date other than the "date accepted" on the Priority Mail Express® mailing label or other official notation entered by the USPS, a showing pursuant to paragraph (d)(3) of this section that the correspondence was deposited in the Priority Mail Express® Post Office to Addressee service prior to the last scheduled pickup on the requested filing date; and
- (4) The petition includes a statement that establishes, to the satisfaction of the Director, the original deposit of the correspondence and that the copies of the correspondence, the copy of the Priority Mail Express® mailing label, the copy of any returned postcard receipt, and any official notation entered by the USPS are true copies of the originally mailed correspondence, original Priority Mail Express® mailing label, returned postcard receipt, and official notation entered by the USPS.
- (f) The Office may require additional evidence to determine whether the correspondence was deposited as Priority Mail Express® with the USPS on the date in question.
Certain papers or fees to be filed in the Office, including any paper or fee that meets an exception of the requirement to file through ESTTA, can be filed utilizing the Priority Mail Express® service of the United States Postal Service, and be considered as having been filed in the Office on the date of deposit with the USPS. [ Note 1.]
In effect, the Priority Mail Express® procedure permits all types of permitted correspondence intended for the Board to be sent by the Priority Mail Express® Post Office to Addressee service even on the due date for the correspondence and still be considered timely, notwithstanding the fact that the mailed correspondence may not be received by the Board until after the due date. This filing procedure applies only to the Priority Mail Express® service of the United States Postal Service, not any third-party carrier that offers overnight delivery. [ Note 2.]
Please Note: Priority Mail Express® now substitutes for "Express Mail."
NOTES:
1. See 37 C.F.R. § 2.198(a)(1). See also TMEP § 305.03 for Priority Mail Express® procedures for the Trademark Operation.
2. See, e.g., In re Pacesetter Group, Inc., 45 USPQ2d 1703, 1704 (Comm’r 1994) (correspondence sent by Federal Express not entitled to benefit of Express Mail procedure).
111.01(a) Requirements for Priority Mail Express®
As 37 C.F.R. § 2.198(c) provides, prior to the original mailing, the Priority Mail Express® mailing label number should be placed on correspondence filed thereunder. The number of the mailing label should be placed on each separate submission and each fee transmitted, either directly on the document or on a separate paper firmly and securely attached to the document.
A party meeting an exception of the requirement to file submissions in Board proceedings through ESTTA who elects to send mail to the Board by the Priority Mail Express® service of the U.S. Postal Service should be careful to use the "Priority Mail Express® Post Office to Addressee" service, rather than the Priority Mail Express® "Hold for Pickup" service which delivers the mail Post Office to Post Office.
111.01(b) Questionable Date of Mailing
If the "date-in" appearing on the Priority Mail Express® label is illegible, the filing date will be the actual receipt date by the USPTO. If there is a discrepancy between the filing date assigned by the Office and the date of deposit, the person who filed the correspondence may petition the Director to accord the "date-in" date by providing the evidence set forth in 37 C.F.R. § 2.198(c), 37 C.F.R. § 2.198(d), and 37 C.F.R. § 2.198(e). [ Note 1.]
NOTES:
1. See TMEP § 305.03 for further information on petitions to change the filing date.
111.02 Certificate of Mailing – In General
37 C.F.R. §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.
- (i) The correspondence is mailed or transmitted prior to expiration of the set period of time by being:
- (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.
- (1) Correspondence will be considered as being timely filed if:
- (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.
A party meeting an exception of the requirement to file submissions in Board proceedings through ESTTA who elects to file correspondence by mail may utilize the certificate of mailing procedure.
Except in certain instances, specified in 37 C.F.R. § 2.197(a), as amplified by 37 C.F.R. § 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, and (2) includes a certificate of mailing which meets the requirements specified in 37 C.F.R. § 2.197(a). [ Note 1.]
In effect, the certificate of mailing procedure permits certain types of correspondence, as specified in 37 C.F.R. § 2.197(a) and 37 C.F.R. § 2.195(c), to be sent to the Office by first-class mail, 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. [ 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 facsimile transmission procedure is no longer available in Board proceedings. [ Note 4.] See TBMP § 107 (How and Where to File Papers and Fees).
NOTES:
1. 37 C.F.R. § 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 C.F.R. § 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).
111.02(a) Requirements for Certificate
37 C.F.R. §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/. Documents that relate to proceedings before the Trademark Trial and Appeal Board shall be filed directly with the Board electronically through ESTTA, at http://estta.uspto.gov/.
- (c) Trademark Assignments. Requests to record documents in the Assignment Recordation Branch may be filed through the Office’s web site, at http://www.uspto.gov. Paper documents and cover sheets to be recorded in the Assignment Recordation Branch should be addressed to: Mail Stop Assignment Recordation Branch, 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 procedure are as follows:
(1) Prior to the expiration of the set period, the correspondence must be 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
and;
(2) Each piece of correspondence must include a certificate which states the date of deposit, 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 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 Branch, 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 should be clearly labeled as such and should include a reference to the proceeding number to which it pertains, the date of mailing, and the signature of the person attesting that the document is being mailed on a certain date. When possible, the certificate should appear on the paper being mailed, rather than on a separate sheet of paper.
NOTES:
111.02(b) Suggested Format
Shown below is a suggested format for a certificate of mailing, under 37 C.F.R. § 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
111.02(c) Location of Certificate
If the simple certificate of mailing format shown in TBMP § 111.02(b) 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 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 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.
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 on a separate sheet pertains, the certificate will not be accepted.
111.02(d) 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.
111.02(e) No Receipt of Correspondence Bearing Certificate
In the event that correspondence intended for the USPTO is timely filed with an appropriate certificate of mailing, pursuant to 37 C.F.R. § 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 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 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. The statement must be verified if it is made by a person other than a practitioner, as that term is defined in 37 C.F.R. § 11.1. See also TBMP § 107 (How and Where to File Papers and Fees). [ Note 1.] Documents may not be filed with the Board by facsimile transmission, and any document so filed will not be accepted. [ Note 2.]
For lost or misplaced correspondence intended for the Board, the evidence required by 37 C.F.R. § 2.197(b) should be submitted to the Board for consideration. If the requirements of 37 C.F.R. § 2.197(b) cannot be met, the only alternative is a petition to the Director.
NOTES:
111.02(f) 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, only to the limited extent paper filings are permitted (see TBMP §106.03), 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. Any paper filing must be accompanied by a written statement showing that ESTTA was unavailable due to technical problems, or that extraordinary circumstances are present, and, where required, a Petition to the Director with the requisite petition fee. Petitions to file on paper are subject to 37 C.F.R. § 2.146 including the requirement for verified facts.
The certificate of transmission procedure is not applicable to any correspondence intended for the Board. [ Note 2.] Neither a certificate of mailing nor a certificate of transmission is necessary or appropriate for documents filed using 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 C.F.R. § 2.102(a)(1) ("A request to extend the opposition period for an application based on Section 66(a) of the Act must be filed through ESTTA and may not under any circumstances be filed in paper form."); 37 C.F.R. § 2.101(b)(3) ("An opposition to an application based on Section 66(a) of the Act must be filed through ESTTA and may not under any circumstances be filed in paper form."). In addition, the certificate of mailing procedure may not be used in connection with the filing of trademark applications, 37 C.F.R. § 2.197(a)(2)(i), and certain other Madrid-related correspondence, 37 C.F.R. § 2.197(a)(2)(ii). See TMEP § 305.02(a).
111.02(g) A Certificate of Mailing is Not ...
As is evident from the requirements for a certificate of mailing, specified in 37 C.F.R. § 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 C.F.R. § 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 is not the equivalent of a certificate of service. A certificate of mailing indicates when correspondence was sent to the Office pursuant to the provisions of 37 C.F.R. § 2.197(a). The mailing date recited in a certificate of mailing 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 C.F.R. § 2.195 and 37 C.F.R. § 2.197.