304    Electronic Mail

304.01    Communications Acceptable Via Electronic Mail

Applicants and registrants may use e-mail only to conduct informal communications regarding a particular application or registration as an alternative to telephone communications. See TMEP §§ 709.04, 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, 708.01);
  • Objection to an examiner’s amendment ( see TMEP §§707, 707.02);
  • Notification of termination of a cancellation proceeding that is the basis for suspension ( see TMEP §716.02(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: As part of an informal communication, if an applicant’s or registrant’s e-mail contains one or more attachments, the USPTO will only open and view the attachments if they are in .jpg or .pdf format and are legible. The USPTO will not 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, proposed amendments, or responses to Post Registration Office actions.  These documents may be filed electronically using TEAS. Responses to Office actions sent via e-mail will not be accorded a date of receipt. 37 C.F.R. §2.62(c).

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 or Post Registration specialist 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 Official Correspondence from the USPTO by Electronic Mail

The USPTO will send official correspondence 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 correspondence 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 certain correspondence by e mail, regular mail, fax, or other appropriate means.

It is the responsibility of the applicant, registrant, or qualified practitioner to notify the USPTO of any changes of e-mail address.   TMEP §609.03.

The Office considers any authorization for e-mail communications to end upon the date of registration of a mark. Note, however, that a courtesy e-mail reminder of USPTO maintenance filing deadlines will be sent to all e-mail addresses of record within the Correspondence and Current Owner(s) Information fields, as indicated in Office records. See TMEP §§1604.02 and 1613.02.