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, if an attorney is not currently recognized, 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), if an attorney is not currently recognized, 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 representative designated in the international registration, or if no such representative is designated, the IB will send the first Office action directly to the applicant. 15 U.S.C §1141h(c); Regulations Under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Regs.) Rules 3(5) and 17(4).

Appointing an attorney authorized to practice before the USPTO to represent the applicant does not change the designated representative before the IB. Protocol Relating to The Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) Article 9bis(ii); Madrid Regs. Rule 3(2). To change the representative designated in the international registration, 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. Madrid Protocol Article 9bis(ii); Madrid Regs. Rule 3(2). Forms for changing the name or address of the designated representative are available on the IB website at https://madrid.wipo.int.

If the applicant’s domicile address is located outside the United States or its territories, and an attorney authorized to practice before the USPTO under 37 C.F.R §11.14(a)  has not been appointed, the first Office action will include a requirement for the applicant to appoint such an attorney 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 before the IB 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).

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