TMEP 305.03: Priority Mail Express®

October 2017 Edition of the TMEP

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305.03    Priority Mail Express®

37 C.F.R. §2.198  Filing of correspondence by Priority Mail Express®.

  • (a)(1) Except for documents listed in paragraphs (a)(1)(i) through (vii) of this section, any correspondence received by the Office that was delivered by the Priority Mail Express® Post Office to Addressee service of the United States Postal Service (USPS) will be considered filed with the Office on the date of deposit with the USPS.  The Priority Mail Express® procedure does not apply to:
  • (i) Applications for registration of marks;
  • (ii) Amendments to allege use under section 1(c) of the Act;
  • (iii) Statements of use under section 1(d) of the Act;
  • (iv) Requests for extension of time to file a statement of use under section 1(d) of the Act;
  • (v) Affidavits of continued use under section 8 of the Act;
  • (vi) Renewal requests under section 9 of the Act;
  • (vii) Requests to change or correct addresses; and
  • (viii) Affidavits of use under section 71 of the Act.
  • (2) The date of deposit with USPS is shown by the "date accepted" on the Priority Mail Express® label or other official USPS notation.  If the USPS deposit date cannot be determined, the correspondence will be accorded the date of receipt in the Office as the filing date.
  • (b) Correspondence should be deposited directly with an employee of the USPS to ensure that the person depositing the correspondence receives a legible copy of the Priority Mail Express® mailing label with the "date accepted" clearly marked.  Persons dealing indirectly with the employees of the USPS (such as by deposit in a Priority Mail Express® drop box) do so at the risk of not receiving a copy of the Priority Mail Express® mailing label with the desired "date accepted" clearly marked.  The paper(s) or fee(s) that constitute the correspondence should also include the Priority Mail Express® mailing label number thereon. See paragraphs (c), (d) and (e) of this section.
  • (c) Any person filing correspondence under this section that was received by the Office and delivered by the Priority Mail Express® Post Office to Addressee service of the USPS, who can show that there is a discrepancy between the filing date accorded by the Office to the correspondence and the date of deposit as shown by the "date accepted" on the Priority Mail Express® mailing label or other official USPS notation, may petition the Director to accord the correspondence a filing date as of the "date accepted" on the Priority Mail Express® mailing label or other official USPS notation, provided that:
  • (1) The petition is filed within two months after the person becomes aware that the Office has accorded, or will accord, a filing date other than the USPS deposit date;
  • (2) The number of the Priority Mail Express® mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing; and
  • (3) The petition includes a true copy of the Priority Mail Express® mailing label showing the "date accepted," and of any other official notation by the USPS relied upon to show the date of deposit.
  • (d) Any person filing correspondence under this section that was received by the Office and delivered by the Priority Mail Express® Post Office to Addressee service of the USPS, who can show that the "date accepted" on the Priority Mail Express® mailing label or other official notation entered by the USPS was incorrectly entered or omitted by the USPS, may petition the Director to accord the correspondence a filing date as of the date the correspondence is shown to have been deposited with the USPS, provided that:
  • (1) The petition is filed within two months after the person becomes aware that the Office has accorded, or will accord, a filing date based upon an incorrect entry by the USPS;
  • (2) The number of the Priority Mail Express® mailing label was placed on the paper(s) or fee(s) prior to the original mailing; and
  • (3) The petition includes a showing that establishes, to the satisfaction of the Director, that the correspondence was deposited in the Priority Mail Express® Post Office to Addressee service prior to the last scheduled pickup on the requested filing date.  Any showing pursuant to this paragraph must be corroborated by evidence from the USPS or evidence that came into being within one business day after the deposit of the correspondence in the Priority Mail Express® Post Office to Addressee service of the USPS.
  • (e) If correspondence is properly addressed to the Office pursuant to §2.190 and deposited with sufficient postage in the Priority Mail Express® Post Office to Addressee service of the USPS, but not received by the Office, the party who mailed the correspondence may petition the Director to consider such correspondence filed in the Office on the USPS deposit date, provided that:
  • (1) The petition is filed within two months after the person becomes aware that the Office has no evidence of receipt of the correspondence;
  • (2) The number of the Priority Mail Express® mailing label was placed on the paper(s) or fee(s) prior to the original mailing;
  • (3) The petition includes a copy of the originally deposited paper(s) or fee(s) showing the number of the Priority Mail Express® mailing label thereon, a copy of any returned postcard receipt, a copy of the Priority Mail Express® mailing label showing the "date accepted," a copy of any other official notation by the USPS relied upon to show the date of deposit, and, if the requested filing date is a date other than the "date accepted" on the Priority Mail Express® mailing label or other official notation entered by the USPS, a showing pursuant to paragraph (d)(3) of this section that the correspondence was deposited in the Priority Mail Express® Post Office to Addressee service prior to the last scheduled pickup on the requested filing date; and
  • (4) The petition includes a statement that establishes, to the satisfaction of the Director, the original deposit of the correspondence and that the copies of the correspondence, the copy of the Priority Mail Express® mailing label, the copy of any returned postcard receipt, and any official notation entered by the USPS are true copies of the originally mailed correspondence, original Priority Mail Express® mailing label, returned postcard receipt, and official notation entered by the USPS.
  • (f) The Office may require additional evidence to determine whether the correspondence was deposited as Priority Mail Express® with the USPS on the date in question.

Documents Excluded From 37 C.F.R. §2.198

Trademark Rule 2.198, 37 C.F.R. §2.198, provides a procedure for obtaining a filing date as of the date that correspondence is deposited as Priority Mail Express® with the USPS.  However, this procedure does not apply to the following trademark documents:

  • Applications for registration of marks;
  • Amendments to allege use under §1(c) of the Trademark Act, 15 U.S.C. §1051(c);
  • Statements of use under §1(d) of the Trademark Act, 15 U.S.C. §1051(d);
  • Requests for extension of time to file a statement of use under §1(d) of the Trademark Act, 15 U.S.C. §1051(d);
  • Affidavits of continued use under §8 of the Trademark Act, 15 U.S.C. §1058;
  • Renewal applications under §9 of the Trademark Act, 15 U.S.C. §1059;
  • Requests to change or correct addresses;
  • Combined filings under §§8 and 9 of the Trademark Act, 15 U.S.C. §§1058   and 1059;
  • Affidavits of use under §71 of the Trademark Act, 15 U.S.C. §1141k;
  • Combined affidavits or declarations under §§8 and 15 of the Trademark Act, 15 U.S.C. §§1058   and 1065;
  • Combined affidavits or declarations under §§71 and 15 of the Trademark Act, 15 U.S.C. §§1141k   and 1065;
  • Responses to notices of irregularity under 37 C.F.R. §7.14;
  • Requests for transformation under 37 C.F.R. §7.31; and
  • Requests to note replacement under §7.28.

37 C.F.R. §§2.198(a)(1), 7.4(b)(2).  If the documents listed above are filed by Priority Mail Express®, they will receive a filing date as of the date of receipt in the USPTO and notthe date of deposit with USPS. 37 C.F.R. §2.195(a); see TMEP §303.01.

Lost Documents

If one of the documents listed above is sent by Priority Mail Express® but is lost within the USPTO, and the applicant or registrant presents proof of actual receipt in the form of evidence that a USPTO employee signed for or acknowledged the Priority Mail Express® package (e.g., a Priority Mail Express® mailing label that bears an Office date stamp or label or the signature of a USPTO employee, or evidence from the USPS website showing that the document was actually received in the USPTO), the USPTO will grant the document a filing date as of the date of actual receipt in the USPTO.  The applicant or registrant must submit a true copy of the document(s) and an affidavit or declaration under 37 C.F.R. §2.20 attesting to the contents of the Priority Mail Express® package.  See TMEP §1711 regarding restoration of application filing dates, TMEP §1712.01 regarding reinstatement of abandoned applications, and TMEP §§1712.02–1712.02(b) regarding reinstatement of cancelled or expired registrations.

If a document is sent by Priority Mail Express® but is not received by or is lost within the USPTO, and the applicant does not have proof of actual receipt in the USPTO, the USPTO will not grant a filing date to the document.

Certificate of Mailing Under 37 C.F.R. §2.197 for Documents Sent by Priority Mail Express®

For documents other than applications for registration of marks and the Madrid-related documents listed in 37 C.F.R. §2.197(a)(2) ( see TMEP §305.02(a)), the certificate of mailing procedure of 37 C.F.R. §2.197 may be used for documents sent by Priority Mail Express® as well as documents sent by first-class mail.  Under the certificate of mailing procedure, correspondence is considered to be timely filed even if received after the due date, if the correspondence is deposited with the USPS with sufficient postage as first-class mail before the expiration of the filing period and accompanied by a certificate attesting to the date of deposit.  Correspondence sent by Priority Mail Express® is deemed to meet the requirements of 37 C.F.R. §2.197(a)(1)(i)(A) for postage as first-class mail, because the postage for Priority Mail Express® exceeds the postage required for first-class mail.  However, to use the certificate of mailing procedure for documents mailed by Priority Mail Express®, the filer must place a certificate attesting to the date of deposit and meeting the requirements of 37 C.F.R §2.197(a)(1)(ii) on the document prior to mailing.  See TMEP §§305.02–305.02(h) for further information about the certificate of mailing procedure.

The following wording is suggested for a certificate of mailing when correspondence is sent by Priority Mail Express®:

Sample certificate of mailing for express mail with the following text "I hereby certify that this correspondence is being deposited with the United States Postal Service as Priority Mail Express® 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.

Documents Not Excluded From 37 C.F.R. §2.198

The procedures for filing documents by Priority Mail Express® under 37 C.F.R. §2.198 may be used for documents not expressly excluded by37 C.F.R. §2.198(a), e.g., documents filed with the Board or the Assignment Recordation Branch of the Office.  These documents are entitled to a filing date as of the date of deposit with USPS if the filer meets the requirements of 37 C.F.R. §2.198.  The rule requires: (1) the document must be sent through the Priority Mail Express® Post Office to Addressee service of the USPS; (2) it must be deposited prior to the last scheduled pickup on the relevant date; (3) it must be properly addressed in accordance with the requirements of 37 C.F.R. §2.190; and (4) the number of the Priority Mail Express® mailing label must be placed on the document prior to mailing.

If a document is filed in accordance with the requirements of 37 C.F.R. §2.198, but the document is not given a filing date as of the date of deposit as Priority Mail Express®, the filer may request the USPTO to change the filing date of the document, pursuant to 37 C.F.R. §2.198(c), (d), or (e).  Rule 2.198(c) applies when there is a discrepancy between the filing date assigned by the USPTO and the "date accepted" entered by the USPS on the Priority Mail Express® mailing label; Rule 2.198(d) applies when the "date accepted" is incorrectly entered or omitted by the USPS; and Rule 2.198(e) applies when correspondence deposited with the USPS as Priority Mail Express® is not received by (or is lost within) the USPTO. A petition to change the filing date of a document pursuant to 37 C.F.R. §2.198 must:

  • (1) be filed within two months of the issuance date of the action from which relief is requested, or, if there is no "issuance of an action," within two months of the date that the party who filed the correspondence became aware that there was a problem with the USPTO’s receipt of the correspondence (37 C.F.R. §§2.146(d), 2.198(c)(1), 2.198(d)(1), 2.198(e)(1); TMEP §1705.04);
  • (2) include a showing that the number of the Priority Mail Express® mailing label was placed on the correspondence prior to the original mailing (37 C.F.R. §§2.198(c)(2), 2.198(d)(2), 2.198(e)(2) );
  • (3) if the filer contends that there is a discrepancy between the filing date assigned by the USPTO and the "date accepted" entered by the USPS, include a true copy of the Priority Mail Express® mailing label with the "date accepted" clearly marked (37 C.F.R. §§2.198(c)(3) );
  • (4) if the filer contends that the "date accepted" was entered incorrectly or omitted by the USPS, include: (a) a showing that the correspondence was deposited as Priority Mail Express® prior to the last scheduled pickup on the requested filing date; and (b) evidence from the USPS or evidence that came into being after deposit and within one business day of the deposit of the correspondence as Priority Mail Express® (37 C.F.R. §2.198(d)(3) ); and
  • (5) if the correspondence is lost within or never received by the USPTO, include: (a) a true copy of the originally deposited correspondence showing the number of the Priority Mail Express® mailing label; and (b) a statement, signed by the person who deposited the documents as Priority Mail Express® with the USPS, setting forth the date and time of deposit, and stating that the copies of the correspondence and Priority Mail Express® mailing label accompanying the petition are true copies of those originally sent (37 C.F.R. §§2.198(e)(3), 2.198(e)(4)).

When correspondence to which 37 C.F.R. §2.198(a) applies is placed in a Priority Mail Express® drop box after the box has been cleared for the last time on a given day, it is considered to have been deposited as of the date of receipt indicated on the Priority Mail Express® mailing label by the USPS employee. See Communications with the Patent and Trademark Office, 61 Fed. Reg. 56,439, 56,445 (Nov. 1, 1996).