1612.01 Correspondence E-mail and Domicile Address of Registrant
The requirement for an owner’s e-mail and domicile addresses is generally required in all post-registration submissions. 37 C.F.R §§2.18(c), 2.23(b), 2.189, 7.25(a). See TMEP §1612(a)(i) regarding an owner’s e-mail address and §1612(a)(ii) regarding an owner’s domicile address.
1612.01(a) Correspondence E-mail Address
Registrants must provide and keep current a valid e-mail address for correspondence. 37 C.F.R. §§2.18(c), 2.23(b), 7.25(a); TMEP §609.01. The registrant’s e-mail address is required even if the registrant has appointed a qualified U.S. attorney, so that the USPTO can contact the registrant if representation ends.
Trademark registrants who are represented by an appointed qualified U.S. attorney may provide an e-mail address of their choice in the owner e-mail field of the TEAS forms. The e-mail address cannot be identical to the listed primary correspondence e-mail address of their attorney. Such e-mail address will not be visible in the Trademark Status and Document Retrieval (TSDR) system. Only the correspondence e-mail address of the attorney will be visible.
Trademark registrants who are not represented by such an attorney will have a correspondence e-mail address that is identical to the owner address. In either situation, the e-mail address can be a unique e-mail address created specifically for this purpose. The e-mail address of a registrant will be visible in TSDR in the correspondence e-mail address field. To avoid receiving unsolicited communications at a personal or business e-mail address, registrants may wish to create an e-mail address specifically for communication and correspondence related to their trademark filings at the USPTO.
For qualified in-house counsel and attorneys representing themselves in a matter, the TEAS forms will still require two different e-mail addresses: one for the owner e-mail address field and one for the attorney e-mail address field. For technical reasons related to the TEAS forms, these addresses cannot be identical.
Certain treaty filers exempt from e-mail requirement. If the registrant is a national of a country that has acceded to the Trademark Law Treaty, but not to the Singapore Treaty on the Law of Trademarks, the requirement to provide the registrant’s e-mail address does not apply. 37 C.F.R. §2.23(c); see TMEP §301.02(a).
See TMEP §§609-609.02(b) and §609.02(d)-(f) regarding establishing and changing the correspondence address.
1612.01(b) Domicile Address of Mark Owner
Registrants must provide and keep current the address of their domicile and inform the USPTO of any changes to that address. 37 C.F.R. §2.189; TMEP §601.01(c). A registrant’s domicile address will determine whether the registrant is required to be represented before the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state, Commonwealth, or territory (a qualified U.S. attorney). 37 C.F.R. §§2.11, 11.1, 11.14(e); see TMEP §§601, 602, 1612(b). Although determinative of whether a qualified U.S. attorney is required, the requirement for an owner’s domicile address is separate from the requirement for an attorney. 37 C.F.R §2.189; TMEP §1612(a)-(b).
See TMEP §§601.01-601.01(b)(1) regarding determining an owner’s domicile and §601.01(d) regarding hiding the domicile address.