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.