304    Email

304.01    Informal Communication Acceptable via Email

Applicants and registrants may use email only to conduct informal communications with the USPTO regarding a particular application or registration as an alternative to telephone communications. See TMEP §§709.04, 709.05.  

For example, an applicant may submit via e-mail:

  • Questions regarding an outstanding Office action that do not constitute a response;
  • Authorization to issue an examiner’s amendment or priority action (see TMEP §§707.01, 708.02);
  • Objection to an examiner’s amendment (see TMEP §§707, 707.02);
  • Notification of termination of a cancellation proceeding that is the basis for suspension (see TMEP §716.02(a));
  • Request to arrange a convenient time to speak by telephone.

See TMEP §709.02 regarding the persons with whom an examining attorney may discuss the application in an interview, §707.01 regarding who can authorize examiner’s amendments, and §708.02 regarding who can authorize priority actions. See TMEP §304.02 regarding communications that are not acceptable via email.

Attachments: As part of an informal communication, if an applicant’s or registrant’s e-mail contains one or more attachments, the USPTO will only open and view the attachments if they are in .jpg or .pdf format and are legible. The USPTO will not open attachments in any other format.

The examining attorney must ensure that all relevant informal email communications from applicants are entered into the electronic record.  See TMEP §709.04 and §709.05 for further information.

304.02    Formal Communications Not Acceptable via Email

Email may not be used to file applications for registration of marks, responses to Office actions or requests for an extension of time to respond, pre- or post-publication amendments to an application, changes of correspondence address, appointments or revocations of attorneys, designations or revocations of domestic representatives, attorney withdrawal requests, petitions, documents required by statute to show use of a mark in commerce or to request an extension of time to show such use, and post-registration maintenance documents, proposed amendments, or responses to Post Registration Office actions.  These documents must be filed electronically using TEAS, unless an exception to the requirement to file through TEAS applies. See 37 C.F.R. §2.23(a). See TMEP §301.01 regarding mandatory electronic filing and §301.02 regarding the limited exceptions for filing on paper.

Further, email may not be used to request an advisory opinion as to the likelihood of overcoming a refusal or requirement. The examining attorney or Post Registration specialist should advise the applicant to file a formal response for consideration of arguments regarding any refusal or requirement.

See TMEP §304.01 regarding informal communications that are acceptable via email, §709.04 regarding telephone and e-mail communications in examination, and §709.05 regarding informal communications in examination.

The Trademark Trial and Appeal Board does not accept email communications.

304.03    Official Email Correspondence from the USPTO

The USPTO will send official correspondence concerning an application or registration by email from the "uspto.gov" domain to the applicant, registrant, or qualified U.S. attorney under 37 C.F.R. §11.14, unless the applicant or registrant is a national of a country exempt from the requirements to file electronically and has chosen to not use TEAS to file submissions. See 37 C.F.R. §2.23(b)-(c). Accordingly, the applicant, registrant, or qualified U.S. attorney must provide and maintain a valid email address for correspondence. 37 C.F.R. §§2.18(c), 2.23(b); TMEP §609.03. See TMEP §§301.02(a)-(b) regarding exceptions to the requirement to provide an email address, §609.01 regarding establishing the correspondence email address, and §609.01(a) regarding email correspondence in §66(a) applications. Even if there is an appointed attorney, a separate email address for the applicant, registrant, or party is required under 37 C.F.R. §2.32(a)(2)  so that the USPTO can contact them if representation ends.

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 U.S. attorney. 37 C.F.R. §2.18(b). One primary email address may be designated for correspondence, but the USPTO permits up to four secondary email addresses to be designated to receive courtesy copies of the correspondence. If an email transmission fails for any reason, the USPTO will not attempt to contact the correspondent by any other means. See TMEP §403 regarding treatment of USPTO email correspondence returned as undeliverable.

A courtesy email reminder of USPTO registration maintenance filing deadlines will be sent to all email addresses of record within the Correspondence and Current Owner(s) Information fields, as indicated in USPTO records. See TMEP §§1604.02, 1613.02.