306.05    Certificate of Transmission 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.

Trademark Rule 2.197, 37 C.F.R. §2.197, provides a certificate of transmission procedure to avoid lateness when correspondence is faxed within the response period but is received in the USPTO after expiration of the response period, or not received, or lost within the USPTO.  The certificate of transmission procedure may be used for any correspondence that may be filed by fax.  See TMEP §306.01 regarding documents that may not be filed by fax.

Under the certificate of transmission procedure, certain correspondence will be considered to be timely filed even if received after the end of the filing period, if the correspondence is transmitted by fax to the USPTO before the expiration of the filing period and accompanied by a certificate attesting to the date of transmission.  The person signing the certificate certifies the expectation that the transmission would be initiated before midnight, local time, on the date specified.

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 §306.05(d) regarding the procedure for establishing the timely filing of correspondence that was faxed to the USPTO with a certificate of transmission under 37 C.F.R. §2.197, but was lost or misplaced.

306.05(a)    Location and Form of Certificate of Transmission

The certificate of transmission should be clearly labeled as such and should include a reference to the registration number or application serial number, the date of transmission, and the signature of the person attesting that the document is being transmitted on a certain date.

When possible, the certificate should appear on the document being transmitted, rather than on a separate sheet of paper.   See 58 Fed. Reg. 54494 (Oct. 22, 1993).

If the certificate of fax transmission is presented on a separate paper, it must identify the document and the application or registration to which it relates.

306.05(b)    Wording of Certificate of Transmission

The following wording is suggested for the certificate of transmission:

Sample certificate of transmission with the wording "I hereby certify that this correspondence is being facsimile transmitted to the United States Patent and Trademark Office on the date shown below." and lines for the typed or printed name of the signatory, the signature, and the date.

306.05(c)    Effect of Certificate of Transmission

As noted in TMEP §306.03, the filing date given to correspondence received by fax transmission is the date that the complete transmission is received by a USPTO fax machine, unless the transmission is completed on a Saturday, Sunday, or Federal holiday within the District of Columbia, in which case the filing date is the next succeeding day that is not a Saturday, Sunday, or Federal holiday within the District of Columbia.  

The date of transmission on the certificate is used only to determine whether the correspondence was transmitted to the USPTO within the filing period.  Therefore, if the complete transmission is actually received in the USPTO within the filing period, the certificate of transmission is ignored.  If the transmission is completed after the expiration of the filing period, the USPTO looks at the correspondence to see if a certificate of transmission was included.  If no certificate is found, the correspondence is untimely.

If the correspondence includes a signed certificate of transmission, and the date of transmission on the certificate is within the filing period, the correspondence is considered to be timely.

For example, if a West Coast applicant transmitted correspondence by fax on the last day of the response period, beginning before 9:00 p.m. Pacific Time (midnight Eastern Time) but completed after 9:00 p.m. Pacific Time, the USPTO would give the correspondence a filing date as of the next business day, because that is the date on which the USPTO received the complete transmission.  However, if the practitioner affixed a certificate of transmission to the faxed correspondence indicating that the correspondence was being transmitted on the last day of the response period, then the correspondence would be considered timely filed, even though the transmission completed after 9:00 p.m. Pacific Time (midnight Eastern Time) was received in the USPTO the day after the deadline for response.

If the filing period ends on a Saturday, Sunday or Federal holiday within the District of Columbia, the correspondence will be considered to be timely if the date of transmission on the certificate 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 rather than the Principal Register after submission of an allegation of use) and the correspondence included a certificate of transmission under 37 C.F.R. §2.197, the date of actual receipt (as stamped or labeled on the relevant correspondence) rather than the date on the certificate is used as the new effective filing date.  See TMEP §§206–206.04 as to changes in the effective filing date of an application.

306.05(d)    Correspondence Transmitted by Fax Pursuant to 37 C.F.R. §2.197 but Not Received by Office

Rule 2.197(b) sets forth procedures for requesting that correspondence be considered timely when the correspondence is filed with a certificate of transmission, but is not received by or is lost within the USPTO.  Such 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 fax transmission 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 transmitted correspondence, including a copy of the signed and dated certificate of transmission ( 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 transmission.  A copy of the sending unit’s report confirming transmission may be used to support this statement.  The statement does not have to be verified.

The party who transmitted the correspondence must notify the USPTO of the transmission of the correspondence within two months after becoming aware that the USPTO has no evidence of receipt of the correspondence.  37 C.F.R. §2.197(b)(1).  Where no written action is generated that can be used as a starting point for measuring timeliness, the two-month deadline runs from the date that the party who filed the correspondence became aware that there was a problem with the filing date.   See TMEP §1705.04.

The required evidence should be directed 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 allthe above criteria 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 transmission, along with any additional evidence.  See 37 C.F.R. §§2.66, 2.146; TMEP §§1702–1708 regarding petitions under 37 C.F.R. §2.146, TMEP §§1714–1714.01(g) regarding petitions to revive, and TMEP §1712 regarding reinstatement of applications and registrations.

The above procedure does notapply to submissions that are excluded from the certificate of mailing or transmission procedures under 37 C.F.R. §2.195(d)  or §2.197(a)(2).   See TMEP §306.01.

The USPTO may require evidence relating to the mailing or transmission of correspondence under 37 C.F.R. §2.197(a), to establish an actual date of transmission.  37 C.F.R. §2.197(c).