709.04    Telephone and Email Communications

Examining attorneys should initiate telephone or email communications (i.e., informal communications) whenever possible to expedite prosecution of an application.  Similarly, applicants, qualified U.S. attorneys, and recognized Canadian trademark attorneys or agents designated as other appointed attorneys may telephone or email examining attorneys, if they feel that a telephone call or email will advance prosecution of an application. See TMEP §709.05 regarding guidelines for informal communications. Therefore, all documents filed in connection with the application should include the telephone number of the applicant or the applicant’s qualified U.S. attorney. See TMEP §709.02 regarding persons with whom the examining attorney may discuss an application.

The examining attorney must respond to telephone calls and email messages within a reasonable time, normally within the same working day and not later than the next working day.

Generally, the examining attorney who prepared the action, and not the supervisory or reviewing examining attorney, should be the person contacted by telephone or email.  However, a non-signatory examining attorney must secure proper authorization from the managing attorney, senior attorney, or reviewing examining attorney before approving an amendment.

The action of the USPTO is based exclusively on the written record and all relevant communications, including informal communications, must be made part of the record.  37 C.F.R. §2.191.  Therefore, the examining attorney must use an examiner’s amendment (see TMEP §§707–707.03) or priority action (see TMEP §708), upload all relevant email communications, and enter a Note to the File regarding issues discussed by telephone.   See TMEP §709.03.

Notes to the File must not summarize arguments or legal conclusions.  Rather, the Note to the File must merely list the issues discussed and indicate any agreement that may have been reached.  If no agreement was reached, that should be noted also.

If an examining attorney does not respond to a telephone or email message within two business days, the applicant may telephone the law office manager or supervisor.  Contact information is available on the USPTO website at https://www.uspto.gov/trademark/contact-trademarks/other-trademark-contact-information.