117 Correspondence - With Whom Held
37 C.F.R. § 2.18 Correspondence, with whom held.
- (a) Establishing the correspondent. The Office will send correspondence as follows:
- (1) If an attorney is not recognized as a representative pursuant to § 2.17(b)(1), the Office will send correspondence to the applicant, registrant, or party to the proceeding.
- (2) If an attorney is recognized as a representative pursuant to § 2.17(b)(1), the Office will correspond only with that attorney, except as set forth inparagraphs (a)(2)(i) through (iv) of this section. A request to change the correspondence address does not revoke a power of attorney. The Office will not correspond with another attorney from a different firm and, except for service of a cancellation petition and notices of institution of expungement or reexamination proceedings, will not correspond directly with the applicant, registrant, or a party to a proceeding, unless:
- (i) The applicant or registrant files a revocation of the power of attorney under § 2.19(a) and/or a new power of attorney that meets the requirements of § 2.17(c);
- (ii) The attorney has been suspended or excluded from practicing in trademark matters before the USPTO; or
- (iii) Recognition of the attorney has ended pursuant to § 2.17(g); or
- (iv) The attorney has been falsely, fraudulently, or mistakenly designated under § 2.17(b)(4).
- (b) Ex parte matters. Only one correspondence address may be designated in an ex parte matter.
- (c) Maintaining and changing the correspondence addresses. The applicant, registrant, or party to a proceeding must maintain current and accurate correspondence addresses, as required by § 2.23, for itself and its attorney, if one is designated. If any of these addresses change, a request to change the address, signed in accordance with § 2.193(e)(9), must be promptly filed.
- (d) Post registration filings under sections 7, 8, 9, 12(c), 15, and 71 of the Act. Even if there is no new power of attorney or written request to change the correspondence address, the Office will change the correspondence address upon the examination of an affidavit under section 8, 12(c), 15, or 71 of the Act, renewal application under section 9 of the Act, or request for amendment or correction under section 7 of the Act, if a new address is provided, in accordance with paragraph (a) of this section.
37 C.F.R. § 2.24 Designation and revocation of domestic of representative by foreign applicant.
- (a) An applicant or registrant that is not domiciled in the United States may designate a domestic representative (i.e., a person residing in the United States on whom notices or process in proceedings affecting the mark may be served).
- (b) The designation, or a request to change or revoke a designation, must set forth the name, email address, and postal address of the domestic representative and be signed pursuant to § 2.193(e)(8).
- (c) The mere designation of a domestic representative does not authorize the person designated to represent the applicant or registrant.
37 C.F.R. § 2.119(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 resident 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).
117.01 In General
Whenever the Board takes an action in a proceeding before it, the Board sends a copy of the action to each party or to the party’s attorney. For an unrepresented party, such correspondence will be sent to the party at the party’s address of record in the proceeding, which may be updated by the party by designating in writing another address to which correspondence is to be sent. If an appearance is made on behalf of the party by an attorney (as defined in 37 C.F.R. § 11.1 ), or a written power of attorney is filed, the Board will send correspondence to the attorney who makes the appearance, or to the attorney designated in the power of attorney. [ Note 1.] If there is no attorney of record for a foreign-domiciled party, but a domestic representative has been appointed, correspondence will be sent to the domestic representative until an attorney is appointed. [ Note 2.]
If the Board has an email address for Board correspondence with a party, notice of all Board actions will be sent by email. [ Note 3.] A "hard copy" may not be sent by postal mail. For applications filed prior to February 15, 2020, an email address for Board correspondence will be obtained in the case of an applicant in an ex parte appeal or in an opposition if the applicant had previously supplied an email address in connection with the prosecution of the subject application and had authorized the Office to communicate with applicant by email. For applications filed on or after February 15, 2020, the Board will obtain and use the valid email address required to be provided by all applicants and registrants that are not exempted by treaty or by any appointed attorney for receipt of correspondence from the USPTO. [ Note 4.] In all other cases, the Board will obtain an email address for a party when that party files correspondence with the Board using ESTTA, or files a change of correspondence address specifying an email address.
The Board considers the submission of filings using ESTTA as consent to the Board’s sending notice of Board actions by email. Unlike the case with paper correspondence, a party may designate more than one email address (separated by commas, up to a limit of 800 characters) for receipt of notice of Board actions. Because notice of Board actions will not always be sent by both electronic and postal mail, it is essential that parties filing electronically with the Board adjust their email "spam" filters to always accept messages from the USPTO domain (uspto.gov). The USPTO webpage entitled "Don’t Miss Important E-mails from the USPTO: Add the USPTO to your ‘Safe Senders’ list" at https://www.uspto.gov/trademark/trademark-updates-and-announcements/dont-miss-important-e-mails-uspto includes instructions to ensure that USPTO emails reach the recipient.
If the Board does not have an email address for Board correspondence with a party, a copy of any Board action taken in the case will be sent to that party by postal mail at the party's address of record.
The mailing of correspondence in accordance with standard Office mailing procedures creates a presumption of receipt of correspondence. [ Note 5.]
NOTES:
1. See Societe des Produits Nestle S.A. v. Basso Fedele & Figli, 24 USPQ2d 1079, 1079-1080 (TTAB 1992) (new power of attorney filed); Djeredjian v. Kashi Co., 21 USPQ2d 1613, 1614 n.1 (TTAB 1991) (appearance made by filing motion in the proceeding).
2. See 37 C.F.R. § 2.18(b) (changing the correspondence address). See, e.g., Equine Touch Foundation Inc. v. Equinology Inc., 91 USPQ2d 1943, 1944 n.3 (TTAB 2009) (noting that although counsel filed an answer for respondent, the ESTTA cover sheet generated in filing the answer still listed the correspondence address as respondent rather than counsel and that "[i]f counsel intends to represent respondent throughout the remainder of this proceeding, counsel should file a change of correspondence address to list himself and his address as the address for correspondence from the Board and future service copies from petitioner.").
3. CHANGES TO THE TRADEMARK RULES OF PRACTICE TO MANDATE ELECTRONIC FILING, 84 Fed. Reg. 37081, 37082 (July 31, 2019) ("This rule requires applicants and registrants, and parties to a proceeding before the TTAB, to provide and maintain an email address for correspondence.").
4. CHANGES TO THE TRADEMARK RULES OF PRACTICE TO MANDATE ELECTRONIC FILING, 84 Fed. Reg. 37081, 37082-84 (July 31, 2019); CHANGES TO THE TRADEMARK RULES OF PRACTICE TO MANDATE ELECTRONIC FILING, 84 Fed. Reg. 69330, 69330 (Dec. 18, 2019) (delay of effective date to February 15, 2020).
5. Jack Lenor Larsen Inc. v. Chas. O. Larson Co., 44 USPQ2d 1950, 1953 (TTAB 1997).
117.02 When There is More Than One Attorney or Other Appointed Practitioner
If a party has supplied a list of email addresses for correspondence with the Board, notice of any Board action will be sent as a courtesy to each of the email addresses supplied. The email address for the party, if the party is not represented, or for the party's attorney if the party is represented, is the official correspondence email for purposes of the Board proceeding. See TBMP § 117.01.
With respect to postal mail, the Board ordinarily will not undertake double correspondence, that is, the sending of paper correspondence to two addresses on behalf of a single party. If more than one attorney or other appointed practitioner makes an appearance on behalf of a party, the papers filed by the additional attorney(s) or other practitioner(s) will be accepted, but the Board will send paper correspondence to only one of them, to be determined according to the circumstances in the case. [ Note 1.]
If a power of attorney names more than one individual, and does not specify which of them is to have primary responsibility for the case and receive correspondence, the name(s) of the individual attorney(s) in the signature block of the covering transmittal letter will be used by the Board on the proceeding file, on correspondence for the party, and on the final decision of the Board, to identify counsel for the party, unless the party or one of the named attorneys requests otherwise in writing. If there is no transmittal letter, and no other indication as to which of the named attorneys is to have primary responsibility for the case and receive correspondence, the name of the first listed attorney will be used by the Board on the proceeding file, in the Board’s electronic databases (e.g., TTABVUE), on correspondence for the party, and on the Board’s final decision, unless the party or one of the named attorneys requests otherwise in writing.
If a power of attorney from a party to one attorney ("A") has been filed, and thereafter another attorney or other authorized representative ("B") makes an appearance on behalf of the party and files a written request that correspondence be sent to him or her, B ordinarily will be required to submit authorization, from the party or from A, for the requested change in the correspondence address. However, if B’s request for change of correspondence address bears proof of service of a copy thereof upon both the party and A, and neither files an objection to the request, the correspondence address will be changed, and future correspondence will be sent to B, rather than to A.
For example, if one attorney ("A") makes an appearance on behalf of a party, and his or her address is thus established in the proceeding file as the correspondence address, following which a second attorney ("B") makes an appearance on behalf of the party, and files a written request that correspondence be sent to him or her, the correspondence address in the proceeding file will be changed, and future correspondence will be sent to B, rather than A. No requirement will be made that B submit authorization, from the party or from A, for the change of correspondence address, nor will B be required to serve a copy of the request upon A. If B does not file a written request that correspondence be sent to him or her, correspondence will continue to be sent to A.
If a power of attorney from a party to one attorney ("A") has been filed, and thereafter a power of attorney from the party to another attorney ("B") is filed, the second power of attorney will be construed, even if there is no revocation of the first power, as a written request to change the correspondence address from A to B, unless the party or A directs otherwise. [ Note 2.] Likewise, if an attorney makes an appearance on behalf of a party, and thereafter the party files a written power of attorney to another attorney, the Board will send subsequent correspondence to the appointed attorney.
If a power of attorney from a party to one attorney ("A") has been filed, and thereafter A files an "associate power of attorney" to another attorney ("B"), the correspondence address will remain unchanged, and the Board will continue to send correspondence to A, unless A or the party directs otherwise. [ Note 3.]
If a power of attorney from a party to several attorneys ("A," "B," and "C") in the same firm ("XYZ") has been filed, and thereafter A leaves the firm but does not file a request that all future correspondence be sent to him or her, rather than to B and/or C, the Board will continue to send correspondence to B and/or C. If A, after leaving firm XYZ, does file a request that all future correspondence be sent to him or her, rather than to B and/or C, the correspondence address will be changed as requested. If, however, B and C object, and maintain that it is they, rather than A, who continue to represent the party and are entitled to receive correspondence, proceedings in the case will be suspended until a designation of correspondence address by the party has been submitted.
If oppositions or petitions for cancellation filed by different opposers or petitioners against the same application or registration are consolidated, or if an opposition or petition for cancellation is filed by joint opposers or petitioners, and the different plaintiffs are represented by different attorneys or other authorized representatives, rather than by the same one(s), the plaintiffs must appoint one lead counsel, to whom the Board may send postal correspondence intended for the plaintiffs. [ Note 4.] After the lead counsel has been appointed for postal correspondence, the Board will send a copy of any Board order, decision, or other communication to plaintiff's lead counsel and to the applicant or its attorney. Lead counsel in turn will be responsible for making and distributing postal copies of such Board correspondence to each plaintiff or its attorney. In these cases, the lead counsel is not substituted for the separate counsel of each plaintiff, but rather is responsible for coordinating the conduct of the plaintiffs’ cases. However, by designating more than one email address (separated by commas, up to a limit of 800 characters) for receipt of notice of Board actions, all representatives may receive electronic correspondence from the Board.
In special circumstances, the Board, in its discretion, may send a particular item of postal correspondence to more than one address on behalf of a single party. However, the Board will not send postal correspondence to more than one address on behalf of a single party on a continuing basis.
NOTES:
1. See 37 C.F.R. § 2.18.
2. See TMEP § 604.03.
3. See TMEP § 605.03.
4. Cf. Internet Inc. v. Corp. for National Research Initiatives, 38 USPQ2d 1435, 1436 n.2 (TTAB 1996) (in three proceedings where defendant in one case was one of two plaintiffs in the two other cases, and where each plaintiff retained separate counsel, Board indicated that it would send correspondence to attorneys for the plaintiff which was a party to all three cases unless otherwise advised).
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 appointed practitioner) 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 or if designation of an email address for correspondence is now required by the Office. 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 the registrant requests in writing to change its address. [ 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 addresses are 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. However, 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.").
117.04 Continuation of Correspondence with Representative of Potential Opposer After Opposition is Filed
When an attorney is appointed in a power of attorney accompanying an opposition, or makes an appearance by filing an opposition on behalf of the opposer, the Board will send correspondence to that attorney, notwithstanding the fact that another attorney or attorneys may have obtained one or more extensions of time to oppose on behalf of the opposer. If, however, a power of attorney filed with an opposition names several attorneys, and there is no transmittal letter and no other indication as to which of them is to have primary responsibility for the case and receive correspondence, but one of the named attorneys obtained an extension of time to oppose, correspondence will be sent to that attorney; if none of the named attorneys obtained an extension of time to oppose, correspondence will be sent to the first named attorney. Thereafter, the correspondence address may be changed in appropriate circumstances.
117.05 Correspondence After Revocation or Withdrawal
If the authority of an attorney or other authorized representative to represent a party in a proceeding before the Board is revoked, or the practitioner is granted permission to withdraw upon request therefor to the Board, and the party is not represented by any other practitioner, correspondence will be sent to the party at its address of record unless another practitioner puts in an appearance, or a written appointment of another practitioner is filed, or the party designates in writing another address to which correspondence is to be sent.
117.06 Correspondence With Foreign Party
If a party to a Board proceeding is not domiciled in the United States and is not represented by an attorney who is licensed to practice law in the United States, correspondence will be sent to the party’s domestic representative, if one has been appointed. However, a domestic representative cannot represent a party in Board proceedings. [ Note 1.] If the party has not appointed a domestic representative and a U.S. licensed attorney has not yet been appointed in the proceeding, the Office will send correspondence directly to the party at the address of record for the party, which the party may request in writing to change. [ Note 2.]
Please Note: Effective August 3, 2019, the Office amended 37 C.F.R. § 2.11(a) to require foreign-domiciled applicants, registrants, or parties to a trademark proceeding to be represented by an attorney who is licensed to practice law in the United States. If a foreign-domiciled party appears without an attorney, generally, the Board will suspend the proceedings and inform the party of the time frame within which it must appoint a U.S. licensed attorney. [ Note 3.]
NOTES:
1. See TMEP § 610.
2. See 37 C.F.R. § 2.119(d).
3. See Cloudworks Consulting Services Inc. v. Ongoing Operations, LLC, 2020 USPQ2d 10019, at *1 (TTAB 2020) (Board suspended proceedings pending appointment of United States counsel). See alsoTMEP § 601.
117.07 Change of Address
If a party to a Board proceeding or its attorney or other authorized representative moves or changes its postal address or email address, a separate notice of the change of address or email address should be filed with the Board using ESTTA, and should reference the proceeding number. [ Note 1.] It is the responsibility of a party to a proceeding before the Board to ensure that the Board has the party’s current correspondence address, including an email address. If a party fails to notify the Board of a change of address, with the result that the Board is unable to serve correspondence on the party, default judgment may be entered against the party.
A party or its attorney or other authorized representative should not assume that the inclusion of a new address or email address on a document directed to another matter, or on the envelope in which a paper is filed, is sufficient to notify the Board of a change of address. Paper correspondence sent by mail to the Office is opened in the USPTO Mail Room, and ordinarily the envelopes are discarded there before the mail is sent on to its ultimate destination within the Office. Thus, in the rare instances paper filings are permitted under the rules, the Board normally does not see the return addresses on the mailing envelopes of papers filed in Board proceedings. Moreover, while it is the normal practice of the Board to check the address on newly filed submissions and to change its records to reflect any noted change of address, the Board has no obligation to do so. The responsibility for any failure to receive correspondence due to a change of address of which the Board has not been given separate written notice lies with the party or its attorney or other authorized representative.
The best practice is to promptly file a separate change of address with the Board when the correspondence address, including an email address, for any party to a Board proceeding changes. [ Note 2.]
NOTES:
1. See 37 C.F.R. § 2.126(a).
117.08 Individual Not Entitled to Represent Others
An individual who is not entitled, under 37 C.F.R. § 11.14(a), 37 C.F.R. § 11.14(b), 37 C.F.R. § 11.14(c) or 37 C.F.R. § 11.14(e), to practice before the Office in trademark cases, will not be permitted to represent a party in a proceeding before the Board, and may not file submissions on behalf of the party. [ Note 1.] If it comes to the attention of a Board attorney that such an individual is attempting to represent a party in a Board proceeding, the Board attorney will bring the matter to the attention of the Chief Administrative Trademark Judge, who will coordinate appropriate action with the Office of Enrollment and Discipline. Moreover, no Board correspondence intended for the party will be sent to the individual. Rather, the Board will send such correspondence to the party itself, or to the party’s attorney . [ Note 2.] However, under certain circumstances, where a submission is signed by an individual not authorized to practice before the Office, the Board may allow time to cure the signature defect. [ Note 3.] See also TBMP § 114.06.
NOTES:
1. See TMEP § 602 (Person Authorized to Practice Before USPTO in Trademark Matters).
2. See 37 C.F.R. § 2.18.
3. See, e.g., Birlinn Ltd. v. Stewart, 111 USPQ2d 1905 (TTAB 2014) (Board applies opportunity to cure provision in 2.119(e) to improperly signed papers, which defines the time period for cure as "within the time limit set in the notification of this defect by the Office").