304 Electronic Mail
304.01 Communications Acceptable Via Electronic Mail
Applicants and registrants may use e-mail to conduct informal communications regarding a particular application or registration as an alternative to telephone communications. See TMEP §§709.04 and 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 and 708.01);
- Objection to an examiner’s amendment (see TMEP §§707 and 707.02);
- Notification of termination of a cancellation proceeding that is the basis for suspension (see TMEP §716.02(a)).
- A request to arrange a convenient time to speak by telephone.
See TMEP §304.02 regarding communications that are not acceptable via e-mail.
Attachments. The USPTO will accept legible attachments to e-mail in .jpg or .pdf format. The USPTO will not accept or open attachments in any other format.
The examining attorney must ensure that all relevant informal e-mail communications from applicants are entered into the electronic record. See TMEP §§709.04 and 709.05 for further information.
304.02 Communications Not Acceptable Via Electronic Mail
E-mail may not be used to file applications for registration of marks, responses to Office actions, pre- or post-publication amendments to an application, changes of correspondence address, appointments or revocations of attorneys, 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 or proposed amendments. These documents may be filed electronically using TEAS.
Further, e-mail may not be used to request an advisory opinion as to the likelihood of overcoming a refusal or requirement. The examining attorney should advise the applicant to file a formal response for consideration of arguments regarding any refusal or requirement.
See TMEP §304.01 regarding communications that are acceptable via e-mail, §709.04 regarding telephone and e-mail communications, and §709.05 regarding informal communications.
The Board does not accept e-mail communications.
304.03 Authorization of Electronic Mail Communications from the USPTO
The USPTO will send communications concerning an application or registration by e-mail only if e-mail communication is authorized by the applicant, registrant, or a practitioner qualified under 37 C.F.R.§11.14 who has been authorized by the applicant or registrant to act on its behalf .
The applicant, registrant, or qualified practitioner may authorize the USPTO to communicate by e-mail by so indicating in the initial application or in any official written communication. The authorization must include the e-mail address to which e-mail is to be sent. If the applicant, registrant, or the applicant’s qualified practitioner authorizes the USPTO to send official communications by e-mail, one primary e-mail address may be designated, as well as up to four secondary e-mail addresses for duplicate courtesy copies of the correspondence. See TMEP §403 regarding treatment of undeliverable e-mail correspondence.
It is the responsibility of the applicant, registrant, or qualified practitioner to notify the USPTO of any changes of e-mail address. See TMEP §609.03.
The Office considers any authorization for e-mail communications to end upon the date of registration of a mark.
See TMEP §304.06 regarding outgoing e-mail.
304.04 Date of Receipt of Electronic Mail
The date of receipt of an incoming e-mail communication is the date the communication is received in the USPTO. 37 C.F.R. §2.195(a)(1).
See TMEP §304.05 regarding certificates of transmission by e-mail.
304.05 Certificate of Transmission by Electronic Mail
Under 37 C.F.R. §2.197, e-mail correspondence will be considered to be timely filed, even if received after the due date, if the correspondence is: (1) transmitted to the USPTO by e-mail on or before the due date; and (2) accompanied by a certificate attesting to the date of transmission. See TMEP §§306.05 et seq. regarding the certificate of transmission procedure under 37 C.F.R. §2.197.
If e-mail correspondence is timely filed with a certificate of transmission, but is not received by or is lost within the USPTO, the correspondence will be considered timely based on the date of transmission set forth on the certificate of transmission, if the party who transmitted the correspondence: (1) informs the USPTO in writing of the previous e-mail transmission of the correspondence within two months after becoming aware that the USPTO has no evidence of its receipt; (2) provides a copy of the previously transmitted correspondence, including the certificate of transmission; and (3) submits a statement attesting to the personal knowledge of transmission of the correspondence. 37 C.F.R. §2.197(b). The statement attesting to the personal knowledge of transmission does not have to be verified. See TMEP §306.05(d) for additional information about correspondence that is transmitted with a certificate of transmission but not received by or lost within the USPTO.
The following wording is suggested for the certificate of transmission:
See TMEP §304.07 regarding signature of electronic mail.
Responses to examining attorneys’ Office actions cannot be filed by e-mail. See TMEP §304.02. Therefore, the certificate of transmission by e-mail procedure cannot be used for such responses.
304.06 Outgoing Electronic Mail
The USPTO will not send formal e-mail notices or correspondence to an applicant, registrant, or practitioner qualified under 37 C.F.R. §11.14 unless the applicant, registrant, or qualified practitioner authorizes the USPTO to do so. TMEP §304.03.
When authorized to communicate by e-mail, the USPTO may send notices regarding Office actions and other official correspondence to the e-mail address designated by the applicant, registrant, or qualified practitioner. If the applicant, registrant, or qualified practitioner authorizes the USPTO to send official communications by e-mail, one primary e-mail address may be designated, as well as up to four secondary e-mail addresses for duplicate courtesy copies of the correspondence. See TMEP §403 regarding treatment of undeliverable e-mail correspondence.
The USPTO is not required to send Office actions and other official correspondence by e-mail whenever the applicant or registrant authorizes e-mail correspondence. The USPTO may send correspondence by e-mail, regular mail, fax, or other appropriate means.
See TMEP §304.08 regarding addresses for e-mail correspondence directed to the USPTO.
304.07 Signature of Electronic Mail
An applicant, registrant or attorney may sign an e-mail communication by entering a "symbol" that he or she has adopted as a signature between two slashes. See 37 C.F.R. §2.193(c) and TMEP §611.01(c).
In addition, the USPTO will accept an e-mail communication containing the "/s/" ("/(signature)/") notation in lieu of a signature.
A scanned image of a document signed in ink is also acceptable, as long as the image is attached in .jpg or .pdf format.
Under 37 C.F.R. §11.18(b), the use of an electronic signature under 37 C.F.R. §2.193(c) or an "/s/" notation, will be understood to constitute a certification that:
- (1) The correspondence has been read by the applicant, registrant, or attorney;
- (2) The filing of the correspondence is authorized;
- (3) To the best of the signatory’s knowledge, information, and belief, there is good ground to support the correspondence; and
- (4) The correspondence is not presented for purposes of delay.
The signatory must personally sign the communication. 37 C.F.R. §2.193(c)(1). See TMEP §§611.02, 611.01(b), and 611.01(c).
304.08 E-Mail Addresses for Correspondence with the Office
Where an applicant or registrant is permitted to send communications to the USPTO by e-mail (see TMEP §304.01), the applicant or registrant should send e-mail to the address set forth on the correspondence sent by the USPTO. Applicants and registrants should not send e-mail to more than one address in the USPTO, and should not send courtesy copies of an e-mail message (e.g., "Cc" or "Bcc") to additional e-mail addresses within the USPTO.
Responses to examining attorneys’ Office actions cannot be filed by e-mail. See TMEP §304.02.
304.09 "Confirmation" Copies of E-Mail Communications Should Not Be Sent to the Office
Applicants, registrants, and attorneys should not send "confirmation" copies of e-mail communications to the USPTO by fax, regular mail, or any other means, because this can delay processing.