306    Facsimile Transmission (Fax)

37 C.F.R. §2.195  (Extract) Receipt of trademark correspondence.

  • (a) * * *

    Trademark correspondence received in the Office is given a filing date as of the date of receipt except as follows:

    * * *

  • (3) Correspondence transmitted by facsimile will be given a filing date as of the date on which the complete transmission is received in the Office unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia, in which case the filing date will be the next succeeding day that is not a Saturday, Sunday, or Federal holiday within the District of Columbia.

    * * * * *

  • (c) Facsimile transmission.  Except in the cases enumerated in paragraph (d) of this section, correspondence, including authorizations to charge a deposit account, may be transmitted by facsimile.  The receipt date accorded to the correspondence will be the date on which the complete transmission is received in the Office, unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia.  See §2.196.  To facilitate proper processing, each transmission session should be limited to correspondence to be filed in a single application, registration or proceeding before the Office.  The application serial number, registration number, or proceeding number should be entered as a part of the sender’s identification on a facsimile cover sheet.
  • (d) Facsimile transmissions are not permitted and if submitted, will not be accorded a date of receipt, in the following situations:
  • (1) Applications for registration of marks;
  • (2) Drawings submitted under §2.51, §2.52, §2.72, or §2.173;
  • (3) Correspondence to be filed with the Trademark Trial and Appeal Board, except notices of ex parte appeal;
  • (4) Requests for cancellation or amendment of a registration under section 7(e) of the Trademark Act; and certificates of registration surrendered for cancellation or amendment under section 7(e) of the Trademark Act; and
  • (5) Madrid-related correspondence submitted under §7.11, §7.21, §7.14, §7.23, §7.24, or §7.31.

    * * * * *

The USPTO permits the filing of certain correspondence by fax.  See TMEP §306.03 regarding the date of receipt of correspondence that is filed by fax.

A certificate of transmission may be used to establish timely filing in the event that the correspondence is transmitted within the response period but is received in the Office after expiration of the response period, or is not received by or lost within the Office.  See TMEP §§306.05 et seq. regarding the requirements for the certificate of transmission procedure.

306.01   Documents that May Not Be Filed by Facsimile Transmission

All trademark documents except the documents listed below may be filed by fax, and are eligible for the benefits of the certificate of transmission provided for in 37 C.F.R. §2.195.

The following types of trademark correspondence may not be filed by facsimile transmission and, if submitted by fax, will not be given a filing date:

  • (1) Trademark applications;
  • (2) Drawings submitted under 37 C.F.R. §§2.51, 2.52, 2.72, or 2.173;
  • (3) Requests for cancellation or amendment of a registration under 15 U.S.C. §1057(e);
  • (4) Certificates of registration;
  • (5) Correspondence to be filed with the Board, except a notice of ex parte appeal;
  • (6) Madrid-related correspondence submitted under 37 C.F.R. §7.11, §7.14, §7.21,§7.23, §7.24, or §7.31; and
  • (7) Documents that are required by statute to be certified (e.g., certified copies of court orders).

37 C.F.R. §§2.195(d) and 7.4(d).  Applications for registration of marks may be filed through TEAS.

When any trademark document specifically excluded from the fax transmission procedure is received in the USPTO by fax, the document will not be accepted.  Vibe Records, Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280 (TTAB 2008) (faxed notice of opposition unacceptable and can be given no effect).  As a courtesy, the USPTO will attempt to notify senders whenever correspondence that falls within one of these prohibitions is sent to the USPTO by fax.

306.02   Fax Machines Designated to Accept Relevant Trademark Documents

The fax machines that are designated to accept trademark documents are attended between the business hours of 8:30 a.m. and 5:00 p.m., Eastern Time, Monday through Friday, excluding Federal holidays within the District of Columbia.

Submissions by fax should be transmitted to the location for which they are intended.  A USPTO Contacts List, which includes fax numbers, is available on the USPTO website at http://www.uspto.gov, and appears periodically in the Official Gazette.  In addition, questions about fax numbers may be directed to the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199.

The USPTO does not formally acknowledge receipt of documents transmitted by fax, but USPTO fax machines will usually confirm to the sending unit that the transmission is complete.

Each fax machine location in the USPTO maintains a log comprising a collection of daily activity sheets recording all fax transmissions received.  These logs can be used as evidence of receipt in the USPTO, and may be used to reinstate applications and registrations.  The individual activity report that pertains to a particular transmission received in the USPTO is kept with the correspondence.

306.03   Effect of Filing by Fax

The filing date of correspondence received in the USPTO by fax, regardless of whether it contains a certificate of transmission, is the date that the complete transmission is received by a USPTO fax machine, unless the transmission is completed on a Saturday, Sunday, or Federal holiday within the District of Columbia.  Correspondence for which transmission is completed on a Saturday, Sunday, or Federal holiday within the District of Columbia is given a filing date as of the next succeeding day that is not a Saturday, Sunday, or Federal holiday within the District of Columbia.  37 C.F.R. §2.195(a)(3).

For example, a 20-minute fax transmission to the USPTO from California starting on a Friday at 8:45 p.m. Pacific Time would be completed at 9:05 p.m. Pacific Time.  The complete transmission would be received in the USPTO at approximately 12:05 a.m. Eastern Time on Saturday.  The filing date accorded to the correspondence is the date of the following business day, which in this case would be Monday (assuming that Monday is not a Federal holiday within the District of Columbia).

The phrase "complete transmission" means that the transmission was received in its entirety.  For example, if page one of a ten-page fax transmission is received in the USPTO at 11:55 p.m. on a Tuesday and page ten of that transmission is received at 12:05 a.m. Wednesday, the filing date accorded to that correspondence will be the date of that Wednesday (assuming that Wednesday is not a Federal holiday within the District of Columbia).

If the sender wants the correspondence to be considered timely filed as of the date that the transmission began, the correspondence must include a certificate of transmission under 37 C.F.R. §2.197(a).  See TMEP §306.05(c) regarding the effect of a certificate of transmission.

306.04   Procedure for Filing by Fax

Each transmission session should be limited to correspondence to be filed in a single application or other proceeding before the Office.  The application serial number or registration number should be entered as a part of the sender’s identification on a facsimile cover sheet.  37 C.F.R. §2.195(c).  Applicants should wait until an application serial number is assigned before filing any document related to a new application by fax.  See 37 C.F.R. §2.194(a).

It is recommended that each transmission include a cover sheet that, in addition to stating the application serial number or registration number, specifies the mark, the number of pages being transmitted, and the name, address, fax number, and telephone number of the transmitting party.

Each facsimile-transmitted document must be legible.  The preferred size of the document being submitted is 8½ inches by 11 inches, letter size or A4 paper.  Because equipment used by the Office cannot print a document larger than 8½ inches by 11 inches, correspondence should not be transmitted on larger paper.

When correspondence is filed by facsimile transmission, it is recommended that the sending facsimile machine generate a report confirming transmission for each transmission session.  This report should be retained by the applicant, along with the original correspondence, as evidence of content and date of transmission.

Unless specifically requested to do so by the Office, parties should not mail follow up copies of documents transmitted by fax.  37 C.F.R. §2.193(g)(2).  This can delay processing.

306.05   Certificate of Transmission Procedure

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 a reasonable basis to expect that the correspondence would be mailed or transmitted on or before the date indicated.
  • (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.
  • (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 that 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.

Trademark Rule 2.197, 37 C.F.R. §2.197, provides a certificate of transmission procedure to avoid lateness when correspondence is faxed within the response period but is received in the USPTO after expiration of the response period, or not received, or lost within the USPTO.  The certificate of transmission procedure can be used for any correspondence that can be filed by fax.  See TMEP §306.01 regarding documents that can be filed by fax.

Under the certificate of transmission procedure, certain correspondence will be considered to be timely filed even if received after the end of the filing period, if the correspondence is transmitted by fax to the USPTO before the expiration of the filing period and accompanied by a certificate attesting to the date of transmission.  The person signing the certificate certifies the expectation that the transmission would be initiated before midnight, local time, on the date specified.

Filers must retain a copy of the correspondence, including the signed and dated certificate.  See In re Sasson Licensing Corp., 35 USPQ2d 1510 (Comm’r Pats. 1995).

See TMEP §306.05(d) regarding the procedure for establishing the timely filing of correspondence that was faxed to the USPTO with a certificate of transmission under 37 C.F.R. §2.197, but was lost or misplaced.

See TMEP §304.05 regarding certificates of transmission by e-mail.

306.05(a)   Location and Form of Certificate of Transmission

The certificate of transmission should be clearly labeled as such and should include a reference to the registration number or application serial number, the date of transmission, and the signature of the person attesting that the document is being transmitted on a certain date.

When possible, the certificate should appear on the document being transmitted, rather than on a separate sheet of paper.  See notices at 58 Fed. Reg. 54494 (Oct. 22, 1993) and 1157 TMOG 87, 92-93 (Dec. 28, 1993).

If the certificate of facsimile transmission is presented on a separate paper, it must identify the document, and the application or registration to which it relates.

306.05(b)   Wording of Certificate of Transmission

The following wording is suggested for the certificate of transmission:

Sample certificate of transmission with the wording "I hereby certify that this correspondence is being facsimile transmitted to the United States Patent and Trademark Office on the date shown below." and lines for the typed or printed name of the signatory, the signature, and the date.

306.05(c)   Effect of Certificate of Transmission

As noted in TMEP §306.03, the filing date given to correspondence received by fax transmission is the date that the complete transmission is received by a USPTO fax machine, unless the transmission is completed on a Saturday, Sunday, or Federal holiday within the District of Columbia, in which case the filing date is the next succeeding day that is not a Saturday, Sunday, or Federal holiday within the District of Columbia.  

The date of transmission on the certificate is used only to determine whether the correspondence was transmitted to the USPTO within the filing period.  Therefore, if the complete transmission is actually received in the USPTO within the filing period, the certificate of transmission is ignored.  If the transmission is completed after the expiration of the filing period, the USPTO looks at the correspondence to see if a certificate of transmission was included.  If no certificate is found, the correspondence is untimely.

If the correspondence includes a signed certificate of transmission, and the date of transmission on the certificate is within the filing period, the correspondence is considered to be timely.

For example, if a West Coast applicant transmitted correspondence by fax on the last day of the response period, beginning before 9:00 p.m. Pacific Time (midnight Eastern Time) but completed after 9:00 p.m. Pacific Time, the USPTO would give the correspondence a filing date as of the next business day, because that is the date on which the USPTO received the complete transmission.  However, if the practitioner affixed a certificate of transmission to the faxed correspondence indicating that the correspondence was being transmitted on the last day of the response period, then the correspondence would be considered timely filed, even though the transmission completed after 9:00 p.m. Pacific Time (midnight Eastern Time) was received in the USPTO the day after the deadline for response.

If the filing period ends on a Saturday, Sunday or Federal holiday within the District of Columbia, the correspondence will be considered to be timely if the date of transmission on the certificate is the next succeeding day that is not a Saturday, Sunday or Federal holiday within the District of Columbia (see 37 C.F.R. §2.196 and TMEP §308).

Whenever it is necessary to change the effective filing date of an application (e.g., when an application filed under §1(b) of the Trademark Act is amended to request registration on the Supplemental rather than the Principal Register after submission of an allegation of use) and the correspondence included a certificate of transmission under 37 C.F.R. §2.197, the date of actual receipt (as stamped or labeled on the relevant correspondence) rather than the date on the certificate is used as the new effective filing date.  See TMEP §§206 et seq. as to changes in the effective filing date of an application.

306.05(d)   Correspondence Transmitted by Fax Pursuant to 37 C.F.R. §2.197 but Not Received by Office

Rule 2.197(b) sets forth procedures for requesting that correspondence be considered timely when the correspondence is filed with a certificate of transmission, but is not received by or is lost within the USPTO.  Such correspondence will be considered timely based on the date of transmission set forth on the certificate of transmission, if the party who transmitted the correspondence:

  • (1) informs the USPTO in writing of the previous fax transmission of the correspondence within two months after becoming aware that the USPTO has no evidence of receipt of the correspondence;
  • (2) supplies an additional copy of the previously transmitted correspondence, including a copy of the signed and dated certificate of transmission (see In re Sasson Licensing Corp., 35 USPQ2d 1510 (Comm’r Pats. 1995)); and
  • (3) includes a statement attesting to the previous timely transmission on the basis of the signer’s personal knowledge.  A copy of the sending unit’s report confirming transmission may be used to support this statement.  The statement does not have to be verified.

The party who transmitted the correspondence must notify the USPTO of the transmission of the correspondence within two months after becoming aware that the USPTO has no evidence of receipt of the correspondence.  37 C.F.R. §§2.146(d) and 2.197(b)(1).  Where no written action is generated that can be used as a starting point for measuring timeliness, the two-month deadline runs from the date that the party who filed the correspondence became aware that there was a problem with the filing date.  See TMEP §1705.04.

The required evidence should be directed to the area in the USPTO where the misplaced or lost document was intended to be filed, e.g., the law office, ITU/Divisional Unit, or Post Registration Section.

If all the above criteria cannot be met, the only remedy available is a petition to revive under 37 C.F.R. §2.66 (if appropriate), or a petition under 37 C.F.R. §2.146, which must include a petition fee, and a statement that attests on a personal knowledge basis to the previous timely transmission, along with any additional evidence.  See 37 C.F.R. §§2.66 and 2.146; TMEP §§1702 through 1708 regarding petitions under 37 C.F.R. §2.146, and TMEP §§1714 et seq. regarding petitions to revive.

The above procedure does not apply to submissions that are excluded from the certificate of mailing or transmission procedures under 37 C.F.R. §2.195(d) or §2.197(a)(2).  See TMEP §306.01.

The USPTO may require evidence relating to the transmission of correspondence under 37 C.F.R. §2.197(a), to establish an actual date of transmission.  37 C.F.R. §2.197(c).  See, e.g., In re Klein, 6 USPQ2d 1547 (Comm’r Pats. 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), cert. denied, 490 U.S. 1091 (1989).

306.06   Requirements for Certificate of Transmission Strictly Enforced  

The requirements of 37 C.F.R. §2.197 are strictly enforced, and petitions to consider a document timely filed as of the date on the certificate are denied when a party fails to comply with these requirements.  A party’s inadvertent failure to comply with the requirements of a rule is not considered an extraordinary situation that would warrant waiver of the rule under 37 C.F.R. §2.146(a)(5) or §2.148.  See TMEP §305.02(h) and cases cited therein.