609 Correspondence, with Whom Held

37 C.F.R. §2.18 Correspondence, with whom held.

(a) Establishing the correspondence address. (1) If a written power of attorney that meets the requirements of §2.17 is filed, the Office will send correspondence to the practitioner designated in the power.
(2) If a practitioner qualified under §11.14 of this chapter transmits a document(s) on behalf of an applicant, registrant, or party to a proceeding who is not already represented by another qualified practitioner from a different firm, the Office will send correspondence to the practitioner transmitting the documents.
(3) If an application, registration or proceeding is not being prosecuted by a practitioner qualified under §11.14 of this chapter and the applicant, registrant, or party to the proceeding designates a correspondence address in writing, the Office will send correspondence to the designated address if appropriate.
(4) If an application, registration or proceeding is not being prosecuted by a practitioner qualified under §11.14 of this chapter and the applicant, registrant, or party to the proceeding has not designated a correspondence address in writing, but a domestic representative has been appointed, the Office will send correspondence to the domestic representative if appropriate.
(5) If the application, registration or proceeding is not being prosecuted by a practitioner qualified under §11.14 of this chapter, the applicant, registrant, or party to the proceeding has not designated a correspondence address, and no domestic representative has been appointed, the Office will send correspondence directly to the applicant, registrant, or party to the proceeding.
(6) The Office will send correspondence to only one address in an ex parte matter.
(7) Once the Office has recognized a practitioner qualified under §11.14 of this chapter as the representative of an applicant or registrant, the Office will communicate and conduct business only with that practitioner, or with another qualified practitioner from the same firm. The Office will not conduct business directly with the applicant or registrant, or with another practitioner from a different firm, unless the applicant or registrant files a revocation of the power of attorney under §2.19(a), and/or a new power of attorney that meets the requirements of §2.17(c). A written request to change the correspondence address does not revoke a power of attorney.
(b) Changing the correspondence address. (1) If a physical or e-mail correspondence address changes, the applicant, registrant, or party to a proceeding must file a written request to change the correspondence address. The request should be promptly filed.
(2) A request to change the correspondence address must be made in writing, signed by the applicant, registrant, or party to a proceeding, someone with legal authority to bind the applicant, registrant, or party (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under §11.14 of this chapter, in accordance with §2.193(e)(9).
(3) If an applicant or registrant files a new power of attorney that meets the requirements of §2.17(c), the Office will change the correspondence address to that of the practitioner named in the power.
(4) If a practitioner qualified under §11.14 of this chapter transmits a document(s) on behalf of an applicant, registrant, or party to a proceeding who is not already represented by another qualified practitioner, the Office will construe this as including a request to change the correspondence address to that of the practitioner, and will send correspondence to the practitioner.
(c) Post registration filings under sections 7, 8, 9, 12(c), 15, and 71. (1) Even if there is no new power of attorney or written request to change the correspondence address, the Office will change the correspondence address upon the examination of an affidavit under section 8, 12(c), 15 or 71 of the Trademark Act, renewal application under section 9 of the Act, or request for amendment or correction under section 7 of the Act. If a practitioner qualified under §11.14 of this chapter transmits the affidavit, renewal application, or section 7 request, the Office will send correspondence to the practitioner. If the owner of the registration is not represented by a qualified practitioner, the Office will send correspondence directly to the owner, or to the domestic representative if appropriate, in accordance with paragraph (a).
(2) Once the Office establishes a correspondence address upon examination of an affidavit, renewal application, or section 7 request, a written request to change the address in accordance with the requirements of paragraph (b)(2) of this section is required to change the address during the pendency of that filing.

See TBMP §§117–117.08 for information about correspondence in Board proceedings.

609.01 Establishing the Correspondence Address

When a trademark application is filed, the USPTO enters into its Trademark database an address (consisting of a name, street address or post office box, city, state and postal code, foreign country (if applicable), and an e-mail address if provided) where correspondence from the USPTO will be sent. This often differs from the applicant’s address.

The USPTO may send official communications concerning an application by e-mail only if the applicant or the applicant’s qualified practitioner authorizes e-mail communications. See TMEP §304.03.

The USPTO uses the following guidelines in entering the correspondence address in a new application:

If the application is transmitted by a qualified practitioner, includes a power of attorney designating a qualified practitioner, or includes the name and address of a qualified practitioner, the USPTO will send correspondence to the practitioner;
If an application is not being prosecuted by a qualified practitioner, but the applicant designates in writing a correspondence address other than its own address, the USPTO will send correspondence to that address if appropriate;
If an application is not being prosecuted by a qualified practitioner and the applicant has not designated a correspondence address, but a domestic representative has been appointed, the USPTO will send correspondence to the domestic representative if appropriate; or
If the application is not being prosecuted by a qualified practitioner, no domestic representative has been appointed, and the applicant has not designated a different address for correspondence, the USPTO will send correspondence directly to the applicant at its address of record.

37 C.F.R. §§2.18(a)–2.18(a)(5).

The USPTO uses these same guidelines to reestablish the correspondence address when a registrant files an affidavit under §8, §12(c), §15, or §71 of the Trademark Act, a §9 renewal application, or a §7 request. 37 C.F.R. §§2.18(c)–2.18(c)(2). The USPTO will update its Trademark database to indicate the name of the qualified practitioner who filed the affidavit, renewal application, or §7 request. Due to the length of time that may elapse between the filing of these documents (which could be ten years or more), the USPTO will recognize a qualified practitioner who transmits one of these documents even absent a new power of attorney or revocation of the previous power. See TMEP §604.02 regarding the duration of recognition as a representative.

The USPTO will not undertake double correspondence with the applicant or registrant and the applicant’s or registrant’s qualified practitioner, or with more than one qualified practitioner. 37 C.F.R. §2.18(a)(6). However, if the applicant or the applicant’s qualified practitioner authorizes the USPTO to send official communications by e-mail, the applicant or the applicant’s qualified practitioner may designate one primary e-mail address and up to four secondary e-mail addresses for duplicate courtesy copies of the correspondence. See TMEP §403 regarding treatment of outgoing e-mail correspondence that is returned as undeliverable.

If an application or other document is signed by a qualified practitioner, but the submission does not contain a separate address for that practitioner, the USPTO will correspond with the qualified practitioner in care of the correspondence address of record and direct such correspondence to the practitioner’s attention. If an Office action is required, the USPTO will ask the practitioner to either specify his or her address for correspondence or affirmatively state that the USPTO should continue to address correspondence to his or her attention in care of the previously submitted correspondence address. If the practitioner does not respond to the request, the USPTO will continue to send correspondence to the attention of the practitioner at the correspondence address of record.

See TBMP §§117–117.08 for information about correspondence in Board proceedings, TMEP §609.01(a) regarding correspondence in §66(a) applications, TMEP §609.02–609.02(f) for information about changing the correspondence address, and TMEP §609.04 regarding correspondence with parties who are not domiciled in the United States.

609.01(a) Correspondence in §66(a) Applications

The USPTO will send the first Office action in an application under §66(a) of the Trademark Act to the IB. The IB will send it to the applicant. The USPTO will send subsequent Office actions directly to the applicant, at the correspondence address set forth in the request for extension of protection to the United States, or to any correspondence address provided in a properly signed request to change the correspondence address. See TMEP §1904.02(h) for further information about Office actions in §66(a) applications.

The USPTO will accept a properly signed notice of change of the correspondence 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. However, this will not change the representative designated in the international registration, to which the IB sends correspondence. 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. Forms for changing the name or address of the designated representative are available on the IB website at http://www.wipo.int/madrid/en/forms.

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

609.02 Changing the Correspondence Address

Once the correspondence address is established, the USPTO will generally send correspondence to that address until a written request to change the address is submitted, signed by the practitioner whom the USPTO has recognized, or, if the applicant or registrant is not represented by a qualified practitioner, 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. §§2.18(b)(2) and 2.193(e)(9)–2.193(e)(9)(ii).

The mere transmittal of a response to an Office action bearing a new address does not effect a change in a correspondence address, except when a new owner takes an action in an application or registration (e.g., files a response to an Office action or statement of use) after recordation of a change of ownership, as discussed in TMEP §609.02(f).

A written request to change the correspondence address does not revoke a power of attorney. 37 C.F.R. §§2.18(a)(7) and 2.19(a)(3). See TMEP §606 regarding revocation.

See also TBMP §§117–117.08 for information about correspondence in Board proceedings.

609.02(a) Request to Change Correspondence Address Presumed

The USPTO will construe the following as a written request to change the correspondence address:

(1) If a qualified practitioner transmits documents on behalf of an applicant or registrant who is not already represented by another qualified practitioner from a different firm, the USPTO will construe this as including a request to change the correspondence address to that of the practitioner (however, the filing of an "associate power of attorney" or similar document does not change the correspondence address); or
(2) If an applicant or registrant files a properly signed power of attorney (see TMEP §605.01) designating a qualified practitioner, the USPTO will change the correspondence address to that of the practitioner named in the power, even if the applicant or registrant does not file a separate request to change the address.

37 C.F.R. §§2.18(b)(3) and (4). In these two situations, the USPTO will change the correspondence address to the address of the new qualified practitioner. In all other situations, a written request to change the correspondence address, signed by the individual applicant or registrant, someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership), or the qualified practitioner of record, is required. 37 C.F.R. §§2.18(b)(2) and 2.193(e)(9)–2.193(e)(9)(ii). See TMEP §609.02(b) regarding the requirements for a written 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 in writing. 37 C.F.R. §2.18(b)(2). Once the USPTO recognizes a qualified practitioner as the representative of an applicant or registrant, only that practitioner or another qualified practitioner from the same United States firm may sign a request to change the address, unless the applicant or registrant files a revocation of the previous power and/or a new power of attorney, or the previously recognized practitioner files a request to withdraw. 37 C.F.R. §§2.193(e)(3), 2.193(e)(9)(i), and 11.18(a).

If the applicant or registrant is not represented by a qualified practitioner, the request 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. §§2.193(e)(9)(ii) and 11.14(e); TMEP §611.02.

A request to change the correspondence address cannot be entered by examiner’s amendment. See 37 C.F.R. §2.18(b)(2).

To expedite processing, notices of change of correspondence address (including changes of e-mail correspondence address) should be filed through TEAS, at http://www.uspto.gov/teas/e-TEAS/index.html. The TEAS form can be used to change the correspondence address on any application or registration that is currently active. When a notice is filed through TEAS, the data from the form is inputted directly into the USPTO's Trademark database.

If two or more qualified practitioners are named in a power, any of the named practitioners can sign and submit a notice of change of correspondence address setting 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 power signed by the applicant or registrant when a named practitioner(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 written request to do so, signed by the applicant or the qualified practitioner of record. 37 C.F.R. §§2.18(a)(7) and (b)(2). The mere transmittal of a response to an Office action bearing a new address for an applicant or an applicant’s qualified practitioner does not effect a change in a correspondence address. See TMEP §609.02(b) for further information about the requirements for a written request to change the correspondence address, and TMEP §609.02(a) for discussion of situations in which a request to change the correspondence address is presumed.

When the request is filed through TEAS, the data from the form is inputted directly into the USPTO's Trademark database. When a request to change the correspondence address is filed on paper, the USPTO manually enters the new correspondence address into its Trademark database and places the request in the application record, but does not send a confirmation or other acknowledgment of the request to change the correspondence address. The applicant may check the TSDR database at http://tsdr.uspto.gov to determine whether the change of address has been entered into the USPTO’s Trademark database.

The USPTO will not process a request to change the correspondence address in an abandoned application, unless submitted in conjunction with a petition to revive or request for reinstatement. When an applicant files a request to change the correspondence address in an abandoned application, the USPTO simply places the request in the record.

609.02(d) Changing the Correspondence Address in Multiple Applications or Registrations

The TEAS change of correspondence address form can be used to change the correspondence address for more than one application or registration. An applicant or registrant may submit up to 300 application serial numbers at one time. For registered marks, the TEAS form requires entry of the original application serial number rather than the registration number. Requests to change the address for more than 300 applications/registrations cannot be submitted in a single TEAS form.

Global address updates (i.e., requests to change an address in every application or registration in which it appears) will not be accepted.

609.02(e) Changing the Correspondence Address After Registration

As noted in TMEP §609.01, the USPTO reestablishes the correspondence address upon the examination of an affidavit under §8, §12(c), §15, or §71 of the Trademark Act, a §9 renewal application, or a §7 request, even if there is no new power of attorney or request to change the correspondence address. The USPTO will update its Trademark database to indicate the name of the qualified practitioner who filed the affidavit, renewal application, or §7 request, and update the correspondence address to that of the qualified practitioner. 37 C.F.R. §§2.17(g)(2) and 2.18(c)–2.18(c)(2). If the registrant is not represented by a qualified practitioner, the USPTO will update its Trademark database to indicate the registrant’s address as shown in the affidavit, renewal application, or §7 request as the correspondence address of record. See TMEP §604.02 regarding the duration of recognition as a representative.

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. 37 C.F.R. §§2.18(b)(2) and (c)(2); TMEP §604.02. See TMEP §609.02(b) regarding the requirements for a written request to change the correspondence address.

Owners of registrations are encouraged to promptly notify the USPTO of any changes of address. 37 C.F.R. §2.18(b)(1). To expedite processing, the USPTO recommends that the notice of change of address be filed through TEAS, at http://www.uspto.gov. The TEAS form can be used to change the correspondence address on any registration that is currently active, but requires submission of the original application serial number rather than the registration number. When the notice is filed through TEAS, the data from the form is inputted directly into the USPTO’s Trademark database.

The USPTO will not process a request to change the correspondence address in a cancelled or expired registration, unless submitted in conjunction with a petition or request for reinstatement of the registration. When a registrant files a request to change the correspondence address in a cancelled or expired registration, the USPTO simply places the request in the record.

See TBMP §§117–117.08 for information about correspondence in Board proceedings and TMEP §604.03 regarding change of attorney.

609.02(f) Correspondence After Recordation of Change of Ownership

For purposes of recognition as a representative, the USPTO considers a power of attorney to end when ownership changes. 37 C.F.R. §2.17(g)(1). TMEP §604.02.

Recordation of an assignment (or other document changing title) with the Assignment Services Branch does not automatically update the correspondence address in the USPTO's Trademark database. See TMEP §503.01(b). To ensure that the Trademark database is updated to reflect the correct correspondence address, new owners should file a separate written request with the Trademark Operation to change the address, preferably through TEAS.

If the new owner does not file a separate written request with the Trademark Operation to change the correspondence address, but instead takes an action in connection with an application or registration by filing a properly signed communication (e.g., a response to an Office action or statement of use) bearing a new correspondence address, the USPTO may update its Trademark database to reflect the address of the new owner or the new owner’s qualified practitioner 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 practitioner, the correspondence address will be changed to reflect the address of the applicant or registrant, as set forth in the written communication.

If a new qualified practitioner appears in person or signs a document on behalf of the new owner, the USPTO will recognize the new practitioner even absent a new power of attorney or revocation of the previous power, pursuant to 37 C.F.R. §2.17(b)(1)(ii). See TMEP §604.02. However, if the previously recognized qualified practitioner 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 practitioner. The previously recognized practitioner 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.

609.03 Applicant Has Duty to Maintain Current and Accurate Correspondence Address

The owner of an application or registration has a duty to maintain a current and accurate correspondence address. If the correspondence address changes, the USPTO must be promptly notified in writing, preferably through TEAS. See 37 C.F.R. §2.18(b)(1). This also applies to e-mail addresses, if the applicant or registrant has authorized the USPTO to send correspondence by e-mail (see TMEP §304.03).

609.04 Correspondence with Parties Not Domiciled in the United States

If an applicant or registrant has not clearly stated a preferred correspondence address, the USPTO will process correspondence as follows:

If an applicant or registrant has appointed a qualified practitioner (see TMEP §§602–602.03(e)), the USPTO will send correspondence to that practitioner.
If the applicant or registrant is not represented by a qualified practitioner, and the applicant or registrant has appointed a domestic representative, the USPTO will send correspondence to the domestic representative if appropriate, unless the applicant or registrant designates in writing another correspondence address. However, the domestic representative is not authorized to prosecute an application or represent a party in a proceeding before the USPTO, unless the domestic representative is a qualified practitioner who has been recognized by the USPTO as the representative of the applicant or registrant. See TMEP §610 regarding domestic representatives.
If the applicant or registrant is not represented by a qualified practitioner (see 37 C.F.R. §11.14), and the applicant or registrant does not designate a domestic representative, the USPTO will send correspondence directly to the applicant or registrant at its foreign address, unless the applicant or registrant designates in writing another correspondence address. See 37 C.F.R. §2.18(a)(5).

See TMEP §609.01(a) regarding correspondence in §66(a) applications.

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