609    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 the applicant, registrant, or party to a proceeding is not represented by an attorney qualified to practice before the Office under § 11.14(a) of this chapter, 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. A request to change the correspondence address does not revoke a power of attorney. Except for service of a cancellation petition, the Office will not correspond directly with the applicant, registrant, or a party to a proceeding, or with another attorney from a different firm, 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).
  • (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. 2.23  Requirement to correspond electronically with the Office and duty to monitor status.

  • (a) Unless stated otherwise in this chapter, all trademark correspondence must be submitted through TEAS.
  • (b) Applicants, registrants, and parties to a proceeding must provide and maintain a valid email address for correspondence.
  • (c) If the applicant or 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 requirements of paragraphs (a) and (b) of this section do not apply.

. . . .

See TBMP §§117–117.08 for information about correspondence in Board proceedings.

609.01    Establishing the Correspondence Address

The correspondent in an application or registration is the appointed qualified U.S. attorney, if any. If a qualified U.S. attorney is not appointed, the correspondent is the applicant or registrant. See 37 C.F.R. §2.18(a).

All applicants, registrants, and their appointed attorneys are required to provide and maintain a valid email address for receipt of correspondence from the USPTO, unless an exception applies. See 37 C.F.R. §§2.21(a)(1), 2.23(b)-(c), 2.32(a)(2), and 7.4(b).

The USPTO will send formal correspondence to applicants, registrants, or their appointed attorney via the provided email address, unless the applicant or registrant is exempt from the requirement to provide an email address. 37 C.F.R. §2.23(b)-(c).

    • If the applicant or registrant is represented by a qualified U.S. attorney, the USPTO will correspond only with that attorney. 37 C.F.R. §2.18(a)(2). For applications filed under Trademark Act Section 1 and/or Section 44, the attorney’s name, postal address, email address, and bar information must be provided with the initial application. 37 C.F.R. §§2.21(a)(2), 2.32(a)(4). The applicant or registrant must maintain a current and accurate correspondence address for his or her attorney. 37 C.F.R. §§2.18(c), 2.23(b).
    • If the applicant or registrant is not represented by a qualified U.S. attorney, the USPTO will correspond directly with the applicant or registrant. 37 C.F.R. §2.18(a)(1). For applications filed under Trademark Act Section 1 and/or Section 44, the applicant’s name, mailing address, domicile address, and email address must be provided in the initial application. 37 C.F.R. §§2.21(a)(1), 2.22(a)(1), 2.23(b), 2.32(a)(2). Further, applicants and registrants must maintain current and accurate correspondence addresses for themselves. 37 C.F.R. §§2.18(c), 2.23(b), 2.189.

See TMEP §609.01(a) regarding correspondence in §66(a) applications.

The correspondence address in the TEAS forms is not editable, but rather is automatically populated with the information contained in the Attorney Information section, if the applicant or registrant is represented by a qualified U.S. attorney, or with the owner information, if the applicant or registrant is not represented.

In accordance with these guidelines, the USPTO will update the Trademark database to indicate a new email address for correspondence if one is provided in an affidavit under Trademark Act §8, §12(c), §15, or §71, a §9 renewal application, or a §7 request. 37 C.F.R. §2.18(d).  Due to the length of time that may elapse between the filing of these documents (which could be ten years or more), the USPTO will recognize as correspondent a qualified U.S. attorney who files via TEAS one of these documents, even absent a new power of attorney or revocation of the previous power, where the attorney correspondence address is properly provided in the "Attorney Information" section and the attorney signs the filing. See id.  See TMEP §604.03 regarding the duration of recognition as a representative.

Generally, the USPTO will not undertake double correspondence with the applicant or registrant and the applicant’s or registrant’s qualified U.S. attorney, or with more than one qualified attorney. 37 C.F.R. §2.18(b). However, the applicant or registrant or the applicant’s or registrant's qualified attorney may designate one primary email address and up to four secondary email addresses for duplicate courtesy copies of the correspondence. See TMEP §403 regarding treatment of outgoing correspondence that is returned as undeliverable.

Permitted paper filing. The USPTO will follow the same procedures listed above to establish the correspondence address for a permitted paper filing. See TMEP §301.01 regarding the limited exceptions when paper submissions may be submitted.

See TBMP §§117–117.08 for information about correspondence in Board proceedings and TMEP §§609.02–609.02(f) for information about changing the correspondence address.

609.01(a)    Correspondence in Section 66(a) Applications and Registrations

The USPTO will send the first Office action in an application under Trademark Act §66(a) to the International Bureau (IB).  The IB will then send it to the applicant’s designated representative, or if no representative is designated, directly to the applicant.

If the applicant’s domicile address is located outside the United States or its territories, the first Office action will include a requirement for the applicant to appoint an attorney authorized to practice before the USPTO under 37 C.F.R. §11.14(a)  and to provide the attorney’s name, postal and email addresses, and bar information, as the USPTO presumes that all applicants filing under §66(a) are not represented in the initial application, regardless of whether there is a designated representative in that application. See 37 C.F.R. §§2.11(a), 37 C.F.R. §2.17(b)(3), 7.25(a); TMEP §§602.03(c), 1904.01(i).

Additionally, the first Office action will include a requirement for the applicant’s email address; which is not currently included in the application form that the IB transmits to the USPTO. See 37 C.F.R. §2.32(a)(2). Although the applicant’s email address is not required for a §66(a) application to receive a filing date, the applicant is required to provide a valid email address for receiving USPTO correspondence as one of the requirements for a complete application. 37 C.F.R. §§2.23(b), 2.32(a)(2); see 37 C.F.R. §2.21(a)(1)  (the rule setting forth the requirements for receiving a filing date applies only to applications based on Trademark Act Section 1 or Section 44). See TMEP §601 regarding the requirement for representation dependent on domicile, §601.01(a) regarding applicants with a non-U.S. domicile, and §803.05(b) regarding applicant’s email address as a required element of an application.

If, however, a §66(a) application is otherwise in condition for approval for publication upon first action, the examining attorney may approve the application for publication and should not require the applicant to appoint an attorney authorized to practice before the USPTO or to provide an email address. See TMEP §§803.05(b)1904.02(h).

After the first Office action, if the applicant has appointed a qualified U.S. attorney, such attorney will be the correspondent in the application and will receive all USPTO communications. 37 C.F.R. §2.18(a)(2). An applicant must provide the attorney’s name, postal address, email address, and bar information. 37 C.F.R. §2.32(a)(4). The applicant must also maintain current and accurate correspondence addresses for itself and its attorney. 37 C.F.R. §2.18(c).

If after the first action the applicant has not appointed a qualified U.S. attorney, the USPTO will send subsequent correspondence to the applicant, who is also required to maintain a valid address for correspondence. 37 C.F.R. §§2.18(a)(1), (c)  and 2.23(b)-(c). The requirement to appoint an attorney authorized to practice before the USPTO under 37 C.F.R. §11.14(a)  and to provide the attorney’s name, postal address, email address, and bar information will be maintained or made final, as appropriate.

See TMEP §609.01 regarding establishing the correspondence address generally and §1904.02(h) regarding Office actions in §66(a) applications.

The USPTO will accept a properly signed request to change the applicant’s or registrant’s email address in a §66(a) application or a registered extension of protection of an international registration to the United States, and will send correspondence to the new address, if appropriate. See TMEP §609.02 regarding changing the correspondence address. A request to change the applicant’s or registrant’s mailing address must be filed with the IB, not the USPTO. An applicant or registrant can update its domicile address with the USPTO by completing the TEAS Change of Address or Representation form. See TMEP §§803.05(a), 1612.01(b).

To change the representative designated in the international registration (to which the IB sends correspondence), a request to record a change of the name or address of the representative designated in the international registration must be filed with the IB; it cannot be filed through the USPTO.  Forms for changing the name or address of the designated representative are available on the IB website at https://www.wipo.int/madrid/en/forms.

See TMEP §§1906.01–1906.01(i) regarding requests to record changes with the IB, and §§602.03–602.03(c) regarding foreign attorneys.

609.02    Changing the Correspondence Address  

Once the correspondence address is established, the USPTO will send correspondence to that address, if appropriate, until a written request to change the address is submitted, properly signed and transmitted by a qualified U.S. attorney whom the USPTO has recognized, or, if the applicant or registrant is not required to be nor is represented by a qualified U.S. attorney, properly signed and transmitted by the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership).  37 C.F.R. §§2.11(a), 2.18(a), 2.193(e)(9).

If the applicant or registrant is represented by a qualified U.S. attorney, or is domiciled outside of the United States or its territories and is required to be represented by a qualified U.S. attorney, neither the applicant nor the registrant may request to change the owner address that prepopulates the correspondence address. See 37 C.F.R. §2.18(a)(2); TMEP §609.01. See TMEP §601 regarding the requirement for representation dependent on domicile.

The USPTO will not undertake double correspondence with the applicant or registrant and the applicant’s or registrant’s qualified U.S. attorney, or with more than one qualified attorney. 37 C.F.R. §2.18(b). However, the applicant or registrant, or its qualified U.S. attorney if one is recognized, may designate one primary email address and up to four secondary email addresses for duplicate courtesy copies of the correspondence. See TMEP §403 regarding treatment of outgoing email correspondence that is returned as undeliverable.

See also TBMP §§117–117.08 for information about correspondence in Board proceedings.

609.02(a)    When the Correspondence Address May be Changed Without Using the TEAS Change of Address or Representation Form

Generally, a request to change the address for correspondence must be in writing and filed using the TEAS Change Address or Representation (CAR) form. See TMEP §609.02(b). However, the USPTO will also construe the following as a written request to change the address for correspondence:

  • (1) TEAS filings. If a qualified U.S. attorney appears by being identified in the "Attorney Information" section in a TEAS form as the representative on behalf of an applicant or registrant who is not already represented by another qualified U.S. attorney from a different firm, the USPTO will construe this as including a request to change the correspondence address to that of the attorney (however, the filing of an "associate power of attorney" or similar document does not change the correspondence address); or

    If a response to an Office action bearing a new address for the owner, or for the attorney of record if one is appointed, is submitted via TEAS, the USPTO will change the correspondence address to reflect this new address.

  • (2) Permitted paper filings. If an applicant or registrant files a properly signed power of attorney (see TMEP §605.01) designating a qualified U.S. attorney, the USPTO will change the correspondence address to that of the attorney named in the power, even if the applicant or registrant does not file a separate request to change the address. See TMEP §301.01 regarding the limited exceptions when paper submissions may be submitted.

37 C.F.R §§2.18(a)(2), 2.19(a)(2).  

In these situations, the USPTO will change the correspondence address without the need to file the TEAS CAR form. In all other situations, a properly signed written request to change the correspondence address is required.  37 C.F.R. §2.18(c), 2.193(e)(9).  See TMEP §609.02(b) regarding the requirements for a request to change the correspondence address.

See also TBMP §§117–117.08 for information about correspondence in Board proceedings.

609.02(b)    Requirements for Request to Change Correspondence Address

A request to change the correspondence address must be made in writing and be properly signed. See 37 C.F.R. §§2.18(c), 37 C.F.R. §2.193(e)(9). Generally, the request must be filed using the TEAS Change Address or Representation (CAR) form. 37 C.F.R. §2.23(a); TMEP §301. See TMEP §609.02(a) for situations where the correspondence address may be changed without using the TEAS CAR form. The TEAS CAR form may generally be used to change the correspondence address for any application or registration that is currently active. The CAR form will not be available when an inter partes proceeding has been initiated against the subject application or registration, or when an ex parte appeal from a decision of an examining attorney has been instituted and jurisdiction has not been restored to the examining attorney. In such cases, a request to change the correspondence address must be filed via the Electronic System for Trademark Trials and Appeals.

A request to change the correspondence address cannot be entered by examiner’s amendment. See 37 C.F.R. §2.18(c).  

Once the USPTO recognizes a qualified U.S. attorney as the representative of an applicant or registrant, only that attorney or another qualified attorney from the same U.S. firm may sign a request to change the correspondence address, unless the applicant or registrant files a revocation of the previous power and/or a new power of attorney, or the previously recognized attorney files a request to withdraw. 37 C.F.R. §§2.18(a)(2), (c), 2.193(e)(3), (e)(9)(i).

If the applicant or registrant is not required to be represented and/or is not represented by a qualified U.S. attorney, the request to change the correspondence address must be signed by the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership).  In the case of joint applicants or registrants, all must sign.  See 37 C.F.R §§2.18(a)(1), (c), 2.193(e)(9)(ii), TMEP §611.02. See TMEP §609.01 regarding establishing the correspondence address and §609.02 regarding changing the correspondence address.

If two or more qualified U.S. attorneys are properly appointed, any of the named attorneys can sign and submit a request to change the correspondence address to set forth a new address, even if the new address is at a new firm.  See 37 C.F.R. §2.193(e)(9)(i). It is not necessary to submit a new appointment signed by the applicant or registrant when a named attorney(s) changes firms.

See TBMP §§117–117.08 for information about correspondence in Board proceedings.

609.02(c)    Processing Requests to Change the Correspondence Address Before Registration

Once the correspondence address is established for a particular application, the USPTO will generally not change it unless there is a properly signed written request to do so, submitted via the TEAS Change Address or Representation form. See TMEP §609.02(b) for information about the requirements for a request to change the correspondence address, and §609.02(a) for discussion of situations in which a request to change the correspondence address is presumed.

609.02(d)    Changing the Correspondence Address in Multiple Applications or Registrations

The TEAS Change Address or Representation form can be used to change the primary email address for correspondence in more than one application or registration by changing the attorney email address, if represented, or the owner email address, if unrepresented.  An applicant, registrant, or qualified U.S. attorney may submit up to 300 application serial numbers or registration numbers at one time. Requests to change the address for more than 300 applications/registrations should not be submitted in a single TEAS form.

609.02(e)    Changing the Correspondence Address After Registration

The USPTO reestablishes the correspondence address upon the examination of an affidavit under Trademark Act §8, §12(c), §15, or §71, a §9 renewal application, or a §7 request, even if there is no new power of attorney and/or separate request to change the correspondence address. 37 C.F.R. §2.18(d); TMEP §609.01. The USPTO will update the Trademark database to indicate the name and address of the qualified U.S. attorney identified in the affidavit, renewal application, or §7 request, and update the correspondence address to that of the qualified attorney.  37 C.F.R. §§2.17(g)(2), 2.18(d).  See TMEP §604.03 regarding the duration of recognition as a representative.

If the registrant is not represented by a qualified U.S. attorney, the USPTO will update the Trademark database to indicate the registrant’s address as shown in the affidavit, renewal application, or §7 request as the correspondence address of record.

Once the USPTO establishes a correspondence address upon examination of an affidavit, renewal application, or §7 request, a written request to change the address is required to effect a change of address during the pendency of that filing. See TMEP §§609.02(a) and (b) regarding changing the correspondence address.

Owners of registrations must maintain current and accurate correspondence addresses for themselves and their attorneys, if an attorney is designated. 37 C.F.R. §§2.18(c), 2.23(b). If any of these addresses change, a request to change the address must be promptly filed. 37 C.F.R. §2.18(c).

To confirm that a request to change the correspondence address was received and entered into the Trademark database, the registrant may check TSDR online at https://tsdr.uspto.gov.

See TBMP §§117–117.08 for information about correspondence in Board proceedings and TMEP §604.04 regarding change of attorney.

609.02(f)    Correspondence After Recordation of Change of Ownership

The USPTO considers the recognition of a qualified U.S. attorney to end when ownership changes.  37 C.F.R. §2.17(g)(1); TMEP §604.03. Additionally, the USPTO will only communicate with the applicant or registrant, if unrepresented, or the applicant’s/registrant’s attorney, if represented, at the correspondence address listed in the Trademark database. See 37 C.F.R. §2.18(a)(1) -(2).

Recordation with the Assignment Services Branch of an assignment (or other document changing title) that includes a new owner and/or attorney address does not automatically update the correspondence address in the USPTO's Trademark database. TMEP §503.01(b).  To ensure that the Trademark database is updated to reflect the correct correspondence address, new owners must file a separate request through TEAS using the Change Address or Representation (CAR) form, or on paper if permitted (see TMEP §301.01), to change the correspondence address. Id. 

If the new owner does not file a separate request through TEAS using the CAR form, but instead files a properly signed TEAS communication (e.g., a response to an Office action or statement of use) bearing a new owner’s or attorney’s correspondence address in the proper TEAS fields, the USPTO will update the Trademark database to reflect the address of the new owner or the new owner’s qualified U.S. attorney, if applicable, even if the new owner does not specifically request a change of the correspondence address. In this situation, the USPTO will reestablish the correspondence address, using the guidelines set forth in TMEP §609.01.  If the new owner is not represented by a qualified U.S. attorney, the correspondence address will be changed to reflect the address of the applicant or registrant, as set forth in the written communication. However, based on the new correspondence address, the new owner may be required to appoint a qualified U.S. attorney to represent it at the USPTO. See TMEP §601 regarding the requirement for representation by a qualified U.S. attorney, as determined by the domicile of the mark owner.

If a new qualified U.S. attorney signs a document or is identified as a representative in a document submitted to the USPTO on behalf of the new owner, the USPTO will recognize the new attorney even absent a new power of attorney and/or revocation of the previous power. 37 C.F.R. §2.17(b)(1)(ii) -(iii); see TMEP §604.03.  However, if the previously recognized qualified U.S. attorney appears on behalf of the new owner (which might occur when the new owner is a related company), the USPTO will continue to conduct business and correspond with that attorney.  The previously recognized attorney does not have to file a new power of attorney signed by the new owner.

See also TBMP §§117–117.08 regarding correspondence in Board proceedings and TMEP §§505–505.02 regarding requests to update ownership information after recordation of a change of ownership.

609.03    Applicant and Registrant Have Duty to Maintain Current and Accurate Correspondence Address

37 C.F.R. 2.18(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.

37 C.F.R. 2.23(b) 

Applicants, registrants, and parties to a proceeding must provide and maintain a valid email address for correspondence.

The owner of an application or registration has a duty to maintain a current and accurate correspondence address. 37 C.F.R §§2.18(c), 2.23(b). If the correspondence address changes, the USPTO must be promptly notified. See 37 C.F.R §2.18(c).