113 Service of Papers
37 C.F.R. § 2.119 Service and signing of papers.
- (a) Except for the notice of opposition or the petition to cancel, every submission filed in the Office in inter partes cases, including notices of appeal to the courts, must be served upon the other party or parties. Proof of such service must be made before the submission 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 submissions filed with the Board and any other papers served on a party not required to be filed with the Board, 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 must be made by email, unless otherwise stipulated, or if the serving party can show by written explanation accompanying the submission or paper, or in a subsequent amended certificate of service, that service by email was attempted but could not be made due to technical problems or extraordinary circumstances, then service may be made in any of the following ways:
- (1) By delivering a copy of the submission 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 some person of suitable age and discretion who resides there;
- (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; or
- (6) Other forms of electronic transmission.
- (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.
- (d) If a party to an inter partes proceeding is not domiciled in the United States and is not represented by an attorney or other authorized representative located in the United States, none of the parties to the proceeding is eligible to use the service option under paragraph (b)(4) of this section. The party not domiciled in the United States may designate by submission filed in the Office the name and address of a person residing in the United States on whom may be served notices or process in the proceeding. If the party has appointed a domestic representative, official communications of the Office will be addressed to the domestic representative unless the proceeding is being prosecuted by an attorney at law or other qualified person duly authorized under § 11.14(c) of this chapter. If the party has not appointed a domestic representative and the proceeding is not being prosecuted by an attorney at law or other qualified person, the Office will send correspondence directly to the party, unless the party designates in writing another address to which correspondence is to be sent. The mere designation of a domestic representative does not authorize the person designated to prosecute the proceeding unless qualified under § 11.14(a) of this chapter, or qualified under § 11.14(b) of this chapter and authorized under § 2.17(f).
- (e) Every submission filed in an inter partes proceeding, and every request for an extension of time to file an opposition, must be signed by the party filing it, or by the party’s attorney or other authorized representative, but an unsigned submission will not be refused consideration if a signed copy is submitted to the Office within the time limit set in the notification of this defect by the Office.
- * * * *
Parties are required to use email as the method of service for submissions to the Board and any other papers not required to be filed with the Board, unless the parties stipulate to an alternative service method, or unless technical problems or extraordinary circumstances prevent email service. [ Note 1.] When email service is not practical, for example, due to the size of the attachment, the Board encourages parties to agree on an effective alternative method of service, such as file hosting services. [ Note 2.]
NOTES:
2. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69959 (October 7, 2016).
113.01 Requirement for Service of Submissions
Except for the notice of opposition or the petition to cancel, every submission 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 submissions 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 submission required by 37 C.F.R. § 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 submission 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 C.F.R. § 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 C.F.R. § 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 forwarding said copy on (insert date of mailing), via email (or insert other appropriate method of delivery) to: (set out name, address, and email address of opposing counsel or party).
__________________
Signature
113.04 Manner of Service
Service of submissions filed with the Board and any paper served on a party not required to be filed with the Board, must be made by email, unless otherwise stipulated, or if the serving party can show by written explanation accompanying the submission or paper, or subsequent amended certificate of service, that service by email was attempted but could not be made due to technical problems or extraordinary circumstances. [ Note 1.] The best practice is to reduce such a stipulation to writing, although the agreement should not be filed with the Board unless necessary to resolve a motion.
In the event service by email cannot be made, service of submissions filed in inter partes cases may be made in any of the ways specified in 37 C.F.R. § 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 some person of suitable age and discretion who resides there; (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) other forms of electronic transmission. [ Note 2.]
When service is made by mail, pursuant to 37 C.F.R. § 2.119(b)(4), the Board considers the mailing date of the submission 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 C.F.R. § 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.
Service may be made by other forms of electronic transmission, such as fax. [ Note 3.]
A party located outside the United States generally cannot serve an adverse party by the manners of service specified in 37 C.F.R. § 2.119(b)(1) - 37 C.F.R. § 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 C.F.R. § 2.119(b)(4) manner of service; 37 C.F.R. § 2.119(b)(4) requires transmission by the United States Postal Service.
As a practical matter, parties located outside the United States which are unable to serve submissions by email must meet the service requirement through 37 C.F.R. § 2.119(b)(5) - 37 C.F.R. § 2.119(b)(6).
NOTES:
113.05 No 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 submission upon that party by another party to the proceeding, and the submission is served 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. The time for taking action is no longer enlarged by 5 days. [ Note 1.] Rather, all fifteen-day response dates to submissions served by an adverse party are now amended to twenty days. [ 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 other means 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 by email or other means stipulated to by the parties, the served party’s time for filing a response to the motion will be 20 days from the date of service of the motion "The extra five days provided for in former § 2.119(c) are already built into the response time period." [ Note 4.] Similarly, there is no extra response period built into the 30 day response period for responding to discovery or for responding to a motion for summary judgment. [ Note 5.]
NOTES:
1. 37 C.F.R. § 2.119(c). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69960 (October 7, 2016) ("All fifteen-day response dates initiated by a service date are amended to twenty days.").
2. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69960 (October 7, 2016) ("All fifteen-day response dates initiated by a service date are amended to twenty days.").
3. Jacques Moret Inc. v. Speedo Holdings B.V., 102 USPQ2d 1212, 1217 n.7 (TTAB 2012).
4. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69960 (October 7, 2016).
5. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69950-51 (October 7, 2016).
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 § 111.02(g).