117.03 Continuation of Correspondence With Representative in Application or Registration When Inter Partes Proceeding Commences
In the case of a party whose application is the subject of a Board proceeding, any appearance or power of attorney (or designation of other authorized representative) of record in the application file at the time of the commencement of the Board proceeding is considered to be effective for purposes of the proceeding, and correspondence will be sent initially to that address, [ Note 1.] including applicant’s email address, if electronic communication with the Office has been authorized. Thereafter, the correspondence address may be changed in appropriate circumstances.
However, in the case of a party whose registration is the subject of a proceeding before the Board, any representation which may be of record in the registration file at the time of the commencement of the Board proceeding is not considered to be effective for purposes of the Board proceeding. Rather, correspondence is sent to the registrant itself or its domestic representative unless and until an attorney makes an appearance in the Board proceeding in the registrant’s behalf, or a written power of attorney is filed in the proceeding by the registrant, or written authorization of some other person entitled to be recognized is filed in the proceeding by the registrant, or the registrant designates in writing another address to which correspondence is to be sent. [ Note 2.]
Changes of attorney addresses or powers of attorney in registration files are accepted by the Office when submitted with post-registration filings, such as those under Trademark Act § 7, Trademark Act § 8, Trademark Act § 9 or Trademark Act § 15, 15 U.S.C. § 1057, 15 U.S.C. § 1058, 15 U.S.C. § 1059 or 15 U.S.C. § 1065, as well as in a cancellation or concurrent use proceeding before the Board. The attorney representing the registrant is responsible for insuring that registrant’s correspondence address is updated. The Office accepts separate written address changes for registrants and domestic representatives, but global changes of address (when one paper is filed listing all involved registrations) will not be effective in changing the address in each file. A single TEAS form for recording a change of address, found at www.uspto.gov/teas/e-TEAS/index.html, can be used to notice a change of address for more than one application or registration. The TEAS form can be used to change the correspondence address only on applications or registrations that are currently active. [ Note 3.]
NOTES:
1. 37 C.F.R. § 2.105(c). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69954 (October 7, 2016). ("For opposition proceedings, the terminology ‘email or correspondence address of record’ in the rule refers to ‘correspondence address’ as it is used throughout the Rules of Practice in Trademark Cases (e.g., §§ 2.18, 2.21, 2.22, 2.23) and the addition of ‘email’ merely highlights that an email correspondence address may be used when authorized.").
2. 37 C.F.R. § 2.113(c), 37 C.F.R. § 2.18. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69954 (October 7, 2016). ("The Office plans to effect service using the ‘Current Owner Information’ field or, if one has been appointed, the ‘Domestic Representative Information’ field in the USPTO’s TSDR database.").