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

If an attorney is not currently recognized, 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.