609.01 Establishing the Correspondence Address
When a trademark application is filed, the USPTO enters into its Trademark database an address (consisting of a name, street address or post office box, city, state and postal code, foreign country (if applicable), and an e-mail address if provided) where correspondence from the USPTO will be sent. This often differs from the applicant’s address.
The USPTO may send official communications concerning an application by e-mail only if the applicant or the applicant’s qualified practitioner authorizes e-mail communications. See TMEP §304.03.
The USPTO uses the following guidelines in entering the correspondence address in a new application:
- If the application is transmitted by a qualified practitioner, includes a power of attorney designating a qualified practitioner, or includes the name and address of a qualified practitioner, the USPTO will send correspondence to the practitioner;
- If an application is not being prosecuted by a qualified practitioner, but the applicant designates in writing a correspondence address other than its own address, the USPTO will send correspondence to that address if appropriate;
- If an application is not being prosecuted by a qualified practitioner and the applicant has not designated a correspondence address, but a domestic representative has been appointed, the USPTO will send correspondence to the domestic representative if appropriate; or
- If the application is not being prosecuted by a qualified practitioner, no domestic representative has been appointed, and the applicant has not designated a different address for correspondence, the USPTO will send correspondence directly to the applicant at its address of record.
37 C.F.R. §§2.18(a)–2.18(a)(5).
The USPTO uses these same guidelines to reestablish the correspondence address when a registrant files an affidavit under §8, §12(c), §15, or §71 of the Trademark Act, a §9 renewal application, or a §7 request. 37 C.F.R. §§2.18(c)–2.18(c)(2). The USPTO will update its Trademark database to indicate the name of the qualified practitioner who filed the affidavit, renewal application, or §7 request. Due to the length of time that may elapse between the filing of these documents (which could be ten years or more), the USPTO will recognize a qualified practitioner who transmits one of these documents even absent a new power of attorney or revocation of the previous power. See TMEP §604.02 regarding the duration of recognition as a representative.
The USPTO will not undertake double correspondence with the applicant or registrant and the applicant’s or registrant’s qualified practitioner, or with more than one qualified practitioner. 37 C.F.R. §2.18(a)(6). However, if the applicant or the applicant’s qualified practitioner authorizes the USPTO to send official communications by e-mail, the applicant or the applicant’s qualified practitioner may designate one primary e-mail address and up to four secondary e-mail addresses for duplicate courtesy copies of the correspondence. See TMEP §403 regarding treatment of outgoing e-mail correspondence that is returned as undeliverable.
If an application or other document is signed by a qualified practitioner, but the submission does not contain a separate address for that practitioner, the USPTO will correspond with the qualified practitioner in care of the correspondence address of record and direct such correspondence to the practitioner’s attention. If an Office action is required, the USPTO will ask the practitioner to either specify his or her address for correspondence or affirmatively state that the USPTO should continue to address correspondence to his or her attention in care of the previously submitted correspondence address. If the practitioner does not respond to the request, the USPTO will continue to send correspondence to the attention of the practitioner at the correspondence address of record.
See TBMP §§117–117.08 for information about correspondence in Board proceedings, TMEP §609.01(a) regarding correspondence in §66(a) applications, TMEP §609.02–609.02(f) for information about changing the correspondence address, and TMEP §609.04 regarding correspondence with parties who are not domiciled in the United States.