305.02    Certificate of Mailing Procedure

37 C.F.R. §2.197  Certificate of mailing or transmission.

  • (a) Except in the cases enumerated in paragraph (a)(2) of this section, correspondence required to be filed in the Office within a set period of time will be considered as being timely filed if the procedure described in this section is followed.  The actual date of receipt will be used for all other purposes.
  • (1) Correspondence will be considered as being timely filed if:
  • (i) The correspondence is mailed or transmitted prior to expiration of the set period of time by being:
  • (A) Addressed as set out in §2.190 and deposited with the U.S. Postal Service with sufficient postage as first class mail; or
  • (B) Transmitted by facsimile to the Office in accordance with §2.195(c); and
  • (ii) The correspondence includes a certificate for each piece of correspondence stating the date of deposit or transmission.  The person signing the certificate should have a reasonable basis to expect that the correspondence would be mailed or transmitted on or before the date indicated.
  • (2) The procedure described in paragraph (a)(1) of this section does not apply to:
  • (i) Applications for the registration of marks under 15 U.S.C. 1051 or 1126; and
  • (ii) Madrid-related correspondence filed under §7.11, §7.21, §7.14, §7.23, §7.24 or §7.31.
  • (b) In the event that correspondence is considered timely filed by being mailed or transmitted in accordance with paragraph (a) of this section, but not received in the Office, and an application is abandoned, a registration is cancelled or expired, or a proceeding is dismissed, terminated, or decided with prejudice, the correspondence will be considered timely if the party who forwarded such correspondence:
  • (1) Informs the Office of the previous mailing or transmission of the correspondence within two months after becoming aware that the Office has no evidence of receipt of the correspondence;
  • (2) Supplies an additional copy of the previously mailed or transmitted correspondence and certificate; and
  • (3) Includes a statement that attests on a personal knowledge basis or to the satisfaction of the Director to the previous timely mailing or transmission.  If the correspondence was sent by facsimile transmission, a copy of the sending unit’s report confirming transmission may be used to support this statement.
  • (c) The Office may require additional evidence to determine whether the correspondence was timely filed.

In 37 C.F.R. §2.197, there is a "certificate of mailing or transmission" procedure to avoid lateness due to mail delay for certain trademark correspondence.  See TMEP §305.02(a) regarding trademark correspondence excluded from the certificate of mailing or transmission procedure. Under the certificate of mailing or transmission procedure, correspondence is considered to be timely even if received after the due date, if the correspondence was:  (1) deposited with the United States Postal Service as first-class mail or transmitted to the USPTO by facsimile transmission before the expiration of the filing period; and (2) accompanied by a certificate attesting to the date of deposit or transmission. 37 C.F.R. §2.197(a).

Filers must retain a copy of the correspondence, including the signed and dated certificate.  See In re Sasson Licensing Corp., 35 USPQ2d 1510, 1512 (Comm’r Pats. 1995).

See TMEP §§305.02(a)–305.02(h) regarding the certificate of mailing procedure, and TMEP §§306.05–306.05(d) regarding the certificate of facsimile transmission procedure.

305.02(a)    When Certificate of Mailing Procedure May Not Be Used

The certificate of mailing procedure may be used for all trademark correspondence except:

  • Applications for registration of marks;
  • International applications under 37 C.F.R. §7.11;
  • Subsequent designations under 37 C.F.R. §7.21;
  • Responses to notices of irregularity under 37 C.F.R. §7.14;
  • Requests to record changes of ownership under 37 C.F.R. §7.23;
  • Requests to record restrictions of the holder’s right of disposal, or the release of such restrictions, under 37 C.F.R. §7.24; and
  • Requests for transformation under 37 C.F.R. §7.31.

37 C.F.R. §§2.197(a)(2), 7.4(e).

305.02(b)    Mailing Requirements

The correspondence must be properly addressed (see TMEP §305.01 for mailing addresses), and must be deposited with the U.S. Postal Service (USPS) with sufficient postage as first-class mail. Since first-class mail services of the USPS are not available in foreign countries, the certificate of mailing procedure may not be used for sending mail to the USPTO from a foreign country.

305.02(c)    Location and Form of Certificate

The certificate of mailing:  (1) must state the date of deposit in the mail, which must be a date within the set filing period (this includes the last day of the period, or the succeeding day that is not a Saturday, Sunday, or Federal holiday within the District of Columbia when the last day of the period falls on a Saturday, Sunday, or Federal holiday within the District of Columbia); and (2) should be signed by a person who has a reasonable basis to expect the correspondence to be deposited in the mail on the date indicated.  37 C.F.R. §2.197(a)(1). The signature of the certificate must be separate from any signature for the correspondence being deposited.

The best location for the certificate of mailing is at the beginning of the correspondence to which it pertains, typed in its entirety. The certificate of mailing should be separated from contents of the correspondence that are on the same page.  Several blank lines between the contents and the certificate will suffice.

If the certificate of mailing does not fit on the correspondence to which it pertains, the certificate may be placed on a separate sheet of paper that is attached securely to the correspondence.  The separate sheet must exhibit or bear a complete identification of the nature of the document or fee as well as an identification of the application, registration, and/or proceeding to which the document pertains (including serial number or registration number).  The separate sheet may be a cover letter or transmittal letter, with the certificate placed at the bottom of the letter and signed separately from the letter.  If there is any doubt concerning the correspondence to which a certificate of mailing on a separate sheet relates, the USPTO will not accept the certificate.

There must be a certificate of mailing for each piece of correspondence.  When correspondence for more than one application or registration is mailed in a single envelope, each item of correspondence must have its own certificate of mailing.  Similarly, when more than one type of correspondence is submitted in connection with the same application, each item of correspondence must have its own certificate of mailing.

It is suggested that the certificate be signed by the applicant or the party involved in the proceeding, or by the attorney for such person.  If someone else signs, it should be a responsible person in a position to know that the mail will be deposited on the date specified.

The USPTO accepts the date of deposit stated in the certificate of mailing on the basis of the statement of personal knowledge.  The USPTO does not normally inspect the postmark on the envelope.

305.02(d)    Wording of Certificate of Mailing

The following wording is suggested for the certificate of mailing.

Sample certificate of mailing with the text "I hereby certify that this correspondence is being deposited with the United States Postal Service as first class mail in an envelope addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, Virginia 22313-1451 on the date shown below:" and lines for the typed or printed name of the signatory, the signature, and the date.

305.02(e)    Effect of Certificate of Mailing

The filing date assigned to paper correspondence is the date of actual receipt in the USPTO.  37 C.F.R. §2.195(a).  The USPTO does not retain the envelopes in which material is received or record the date of the postmark.

The date of deposit indicated on the certificate of mailing is used only to determine whether the correspondence was deposited with the USPS within the filing period.  See 37 C.F.R. §2.197(a). Therefore, if the correspondence is actually received in the USPTO within the filing period, the certificate of mailing is ignored.  If, however, the USPTO receives the correspondence after the filing period has expired, the USPTO looks to see whether a certificate of mailing was included.  If no certificate is found, the correspondence is untimely.

When a document received after the expiration of the filing period includes a signed certificate of mailing, and the date of deposit on the certificate is within the filing period, the USPTO considers the correspondence to be timely filed.

If the filing period ends on a Saturday, Sunday, or Federal holiday within the District of Columbia, the correspondence is considered timely if the date of deposit on the certificate of mailing is the next succeeding day that is not a Saturday, Sunday or Federal holiday within the District of Columbia (see 37 C.F.R. §2.196; TMEP §308).

Whenever it is necessary to change the effective filing date of an application (e.g., when an application filed under §1(b) of the Trademark Act is amended to request registration on the Supplemental Register after submission of an allegation of use), the date of actual receipt rather than the date on the certificate is the new effective filing date.  See TMEP §§206–206.04 regarding changes in the effective filing date of an application.

305.02(f)    Correspondence Mailed Pursuant to 37 C.F.R. §2.197 but Not Received by Office

If correspondence filed with a certificate of mailing is not received by (or is lost within) the USPTO, the USPTO will consider the correspondence to be timely based on the date of deposit stated in the certificate of mailing if the party who filed the correspondence:

  • (1) informs the USPTO in writing of the previous mailing of the correspondence within two months after becoming aware that the USPTO has no evidence of receipt of the correspondence;
  • (2) supplies an additional copy of the previously mailed correspondence, including a copy of the signed and dated certificate of mailing (see In re Sasson Licensing Corp., 35 USPQ2d 1510, 1512 (Comm’r Pats. 1995)); and
  • (3) includes a statement attesting, based on personal knowledge or to the satisfaction of the Director, to the previous timely mailing. This statement does not have to be verified.

37 C.F.R. §2.197(b).

The two-month time period for notifying the USPTO begins to run from the date that the party who filed the correspondence became aware that the USPTO has no evidence of receipt of the correspondence, unless the USPTO has issued a written action, such as a notice of abandonment or cancellation. In such situations, the issue date of the USPTO written action will serve as the starting point for measuring timeliness. See 37 C.F.R. §§2.146(d), 2.197(b)(1); TMEP §1705.04.

The required evidence should be sent to the area in the USPTO where the misplaced or lost document was intended to be filed, e.g., the law office, ITU/Divisional Unit, or Post Registration Section.

If all three criteria listed above cannot be met, the only remedy available is a petition to revive under 37 C.F.R. §2.66 (if appropriate) or a petition under 37 C.F.R. §2.146, which must include a petition fee, and a statement that attests on a personal knowledge basis to the previous timely mailing, along with any additional evidence.  See TMEP §§1702–1708 regarding petitions under 37 C.F.R. §2.146, and TMEP §§1714–1714.01(g) regarding petitions to revive.

The above procedure does not apply to the filing of an application for registration of a mark, or to the Madrid-related documents listed in 37 C.F.R. §2.197(a)(2) and TMEP §305.02(a).

The USPTO may require additional evidence relating to the mailing or transmission of correspondence.  37 C.F.R. §2.197(c).  

305.02(g)    Correspondence Deposited as First-Class Mail Pursuant to 37 C.F.R. §2.197 and Returned by the U.S. Postal Service

Correspondence must be deposited with the USPS as first-class mail in compliance with any and all applicable requirements of the USPS to be considered "[d]eposited with the U.S. Postal Service," within the meaning of 37 C.F.R. §2.197(a)(1)(i)(A).  Therefore, correspondence returned by the USPS as not mailed in compliance with USPS requirements, including concerning mail weighing more than the USPS maximum permissible weight, is not entitled to any benefit under 37 C.F.R. §2.197.  

305.02(h)    Certificate of Mailing Requirements Strictly Enforced

The requirements of 37 C.F.R. §2.197 are strictly enforced, and the USPTO denies petitions to consider a document timely filed as of the date on the certificate if a party fails to comply with these requirements.

A party’s inadvertent failure to comply with the requirements of a rule is not considered an extraordinary situation that would warrant waiver of a rule under 37 C.F.R. §2.146(a)(5) or 37 C.F.R. §2.148.  See Honigsbaum v. Lehman, 903 F. Supp. 8, 37 USPQ2d 1799 (D.D.C. 1995) (finding Commissioner did not abuse discretion in refusing to waive requirements of 37 C.F.R. §1.10(c) and grant filing date to patent application, where applicant failed to produce "Express Mail" customer receipt or any other evidence that application was actually deposited with USPS as "Express Mail"), aff’d mem., 95 F.3d 1166 (Fed. Cir. 1996); In re Sasson Licensing Corp., 35 USPQ2d 1510, 1512 (Comm’r Pats. 1995) (noting that failure to retain an executed hard copy of documents filed with the USPTO is not an extraordinary circumstance that would justify waiver of 37 C.F.R. §1.8); Gustafson v. Strange, 227 USPQ 174 (Comm’r Pats. 1985) (finding counsel’s unawareness of the provisions of 37 C.F.R. §1.8 is not an extraordinary situation warranting waiver of the rule); In re Chicago Historical Antique Auto. Museum, Inc., 197 USPQ 289 (Comm’r Pats. 1978) (finding lateness caused by mailing documents on the last day of the filing period is not an extraordinary situation justifying waiver of the rules, because certificate of mailing procedure under 37 C.F.R. §1.8 was available to petitioner).