301.02 Limited Exceptions for Paper Submissions
The USPTO will permit paper submissions of forms related to a domestic application or registration, or for filings under the Madrid protocol, and related correspondence only in the limited circumstances discussed below. Otherwise, paper submissions will not be processed and will be destroyed in accordance with the relevant record retention schedule, and any accompanying fee will not be accepted. In these circumstances, the USPTO will issue a notice to that effect to the submitting party, and will return with the notice any check or money order provided with the paper filing.
301.02(a) Treaty-exempt Filers under International Agreements
The United States is a member of both the Trademark Law Treaty (TLT) and the subsequent Singapore Treaty on the Law of Trademarks (STLT), which constitute two separate international instruments that may be ratified or acceded to independently by member countries. Nationals of TLT members that are not also members of STLT at the time of submission of the relevant document to the USPTO are not required to file trademark submissions electronically, receive communications from the USPTO via email, or submit a petition to accept a paper filing. See 37 C.F.R. §§2.21(c), 2.23(c), 7.4(c).
301.02(b) Specimens for Scent, Flavor, or Similar Non-Traditional Marks
A specimen for certain non-traditional marks, such as scent and flavor marks, cannot be submitted electronically. See 37 C.F.R. §2.56(d)(1); TMEP §904.03(m). For example, if the application is for a scent mark, the examining attorney must be able to smell the actual scent to determine registrability.
To submit a specimen for a scent, flavor, or similar non-traditional mark, the applicant must first submit information about the specimen online using the appropriate TEAS form and then mail in the physical specimen to the following address:
Commissioner for Trademarks
James Madison Building – East Wing
Concourse Level – 0B50
Attn: Mailroom Staff
600 Dulany Street
Alexandria,
Virginia
22314The TEAS forms have a checkbox on the "Use Information" page that must be selected to indicate that a specimen for a non-traditional mark will be submitted by mail. In these circumstances, the applicant or registrant is not required to submit a petition requesting acceptance of a specimen filed on paper or waiver of the requirement to file the specimen electronically. See 37 C.F.R. §2.56(d)(1).
This exception does not apply to sound, motion, and color marks, for which electronically filed specimens are sufficient to determine registrability. Applicants are required to submit specimens for these marks electronically. See TMEP §904.03(f), (l).
301.02(c) Petition to Accept a Paper Submission
In certain circumstances, an applicant or registrant may file a petition to the Director under 37 C.F.R. §2.147 to request acceptance of a submission filed on paper. See TMEP §§1709-1709.03 for further information on when such a petition can be filed and the requirements for submitting one.
301.02(d) Postal Service Interruption or Emergency
In the event of a postal-service interruption or emergency related to a natural disaster, the USPTO will continue its prior practice of issuing a notice on the USPTO website that specifies temporary procedures for filing documents with the USPTO. Generally, the USPTO will waive certain requirements of the rules for those in the affected area. The notice can be found on the "USPTO Systems Status and Availability" page of the website. If Internet access is not available, call the Trademark Assistance Center at (571) 272-9250 or email TEAS@uspto.gov for information on the temporary procedures. See TMEP §305.04 about postal service interruptions or emergencies.
301.02(e) Applications Filed under Trademark Action Section 66(a)
Trademark Act Section 66(a) applications are initially filed with the International Bureau of the World Intellectual Property Organization (IB) and subsequently transmitted to the USPTO for examination. However, all subsequent submissions relating to such applications must be filed through TEAS. See 37 C.F.R. §§2.23(a), 7.25.
301.02(f) "Grandfathered" Applications and Post-Registration Maintenance Documents
Under the rules mandating electronic filing, the TEAS RF application filing option was renamed TEAS Standard and the TEAS Regular application filing option was eliminated. Applications filed prior to February 15, 2020 that were submitted on paper or using a TEAS Regular application form, which did not require use of TEAS for other application-related submissions, are "grandfathered" under the prior rules, which permit paper submissions, until the application registers or is abandoned and is not eligible to be revived or reinstated pursuant to 37 C.F.R. §2.64, §2.66, or §2.146. If such an applicant or its attorney chooses to use TEAS to submit a document during the pendency of the application, the application loses its grandfathered status. The TEAS form will require the email address of the applicant and its qualified U.S. attorney, if represented, to be provided, and the USPTO will send all future correspondence to the email address of the applicant or its attorney, as appropriate.
Applicants that filed an application prior to February 15, 2020 using the TEAS RF or TEAS Plus application form were already subject to the requirement to correspond electronically with the USPTO at the time of filing. If a TEAS Plus or TEAS RF applicant submits a response to an Office action or other document on paper, the applicant must submit a petition requesting acceptance of the paper filing under 37 C.F.R. §2.146 or §2.147 with the required petition fee, as appropriate. See TMEP §§301.02(e), 1702, 1709. The applicant will not be charged the additional processing fee under prior 37 C.F.R. §2.22(c) or §2.23(c).
Registrants that filed post-registration maintenance documents on paper prior to February 15, 2020 are grandfathered under the prior rules until the acceptance or final rejection of the filing, unless the registrant or its qualified U.S. attorney, if represented, elects to use TEAS to submit a document during the pendency of the post-registration matter. Any subsequent post-registration filings must be submitted electronically through TEAS.