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.]
Incorrect manner of service issues by a party domiciled outside the United States is less likely to arise in view of the requirement that foreign domiciled parties to Board proceedings be represented by an attorney who is an active member in good standing of the bar of the highest court of a state in the United States (including the District of Columbia or any Commonwealth or territory of the United States). [ Note 4.] Unless a party is domiciled in the United States or its territories, a party cannot represent itself on its own behalf. See TBMP §114. A foreign-domiciled party that has appointed a reciprocally-recognized foreign attorney or agent, but has not yet appointed U.S. counsel to represent it before the Board, 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 USPS. [ Note 5.]
As a practical matter, parties and U.S. counsel that are located outside the United States and 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). [ Note 6.]
NOTES:
4. 37 C.F.R. § 2.11, 37 C.F.R. § 2.17(b), 37 C.F.R. § 2.17(c), 37 C.F.R. § 11.1, 37 C.F.R. § 11.14(c)(1), and 37 C.F.R. § 11.14(c)(2). See REQUIREMENT OF U.S. LICENSED ATTORNEY FOR FOREIGN TRADEMARK APPLICANTS AND REGISTRANTS, 84 Fed. Reg. 31498, 31501 (July 2, 2019); Cloudworks Consulting Services Inc. v. Ongoing Operations, LLC, 2020 USPQ2d 10019, at *1 (TTAB 2020) ("A reciprocally recognized attorney or agent may only appear as an additionally appointed practitioner. A qualified attorney licensed to practice law in the United States, or in any Commonwealth or territory of the United States, must still be appointed as the party's representative who will file documents with the Board and with whom the Board will correspond.").
5. 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 . . . 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.").
6. 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).