TMEP 609.01(a): Correspondence in §66(a) Applications

This is the October 2015 Edition of the TMEP

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609.01(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 IB. The IB will send it to the applicant. The USPTO will send 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 any correspondence address provided in a properly signed request to change the correspondence address. See TMEP §1904.02(h) for further information about Office actions in §66(a) applications.

The USPTO will accept a properly signed 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. Forms for changing the name or address of the designated representative are available on the IB website at http://www.wipo.int/madrid/en/forms.

See TMEP §§1906.01–1906.01(i) regarding requests to record changes with the IB, and TMEP §§602.03–602.03(e) regarding foreign attorneys.