603.01 Establishing the Correspondence Address
When a trademark application is filed, the USPTO enters into its automated records an address (consisting of a name, street address or post office box, city, state and postal code) where correspondence from the USPTO will be sent. This often differs from the applicant's address. Correspondence will be sent to any address within the United States that the applicant selects. The USPTO will send correspondence to Canada if the applicant selects a Canadian attorney or agent who is duly qualified under 37 C.F.R. 10.14(c) to practice before the USPTO (see TMEP §602). See TMEP §603.05 regarding correspondence with applicants who are not domiciled in the United States, and TMEP §603.01(a) regarding correspondence in §66(a) applications.
The USPTO may send communications concerning an application by e-mail if e-mail communication is authorized by the applicant or the applicant's attorney. See TMEP §304.03.
When the application includes a power of attorney that designates an attorney(s) and an address, or a form that has the appearance of a power of attorney that designates the name and address of an attorney, the USPTO will correspond with the designated attorney. In addition, the USPTO will presume that the applicant wishes correspondence to be sent to an attorney's address rather than directly to the applicant when:
(1) The name and address of an attorney appears in the original application papers;
(2) The original application is accompanied by a transmittal letter on letterhead that identifies an attorney;
(3) The application is filed through TEAS (see TMEP §301) , and the attorney information section is completed; or
(4) The original application is written on paper that identifies the name and address of an attorney.
The above procedures are also used to establish the correspondence address when a registrant files a §8 or §71 affidavit, §9 renewal application, or request for amendment or correction of a registration under 15 U.S.C. 1057. The USPTO will update TRAM to indicate the name of the attorney who filed the affidavit, renewal application, or amendment.
See TMEP §603.02(a) for information about changing the correspondence address in a pending application, and TMEP §603.02(c) for information about changing the correspondence address after registration.
603.01(a) Correspondence in §66(a) Applications
The USPTO will send the first Office action in an application under §66(a) of the Trademark Act to the International Bureau of the World Intellectual Property Organization ("IB"). The IB will send it to the applicant. The USPTO will send second and subsequent Office actions directly to the applicant, at the correspondence address set forth in the request for extension of protection to the United States, or to the correspondence address provided in a subsequent communication filed in the USPTO. See TMEP §1904.02(e) for further information about Office actions in §66(a) applications.
The USPTO will accept a notice of change of the correspondence address in a §66(a) application or a registered extension of protection of an international registration to the United States, and will send correspondence to the new address. However, this will not change the representative designated in the international registration, to which the IB sends correspondence. A request to record a change of the name or address of the representative designated in the international registration must be filed with the IB; it cannot be filed through the USPTO. There are forms on the IB website at http://www.wipo.int/madrid/en/. See Madrid Protocol Common Reg. 36(i).See TMEP §§1906 et seq. regarding requests to record changes with the IB.