TMEP 819.02(a): Receipt of Communications by E-Mail

October 2017 Edition of the TMEP

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819.02(a)    Receipt of Communications by E-Mail

Trademark Rule 2.22(a)(6), 37 C.F.R. §2.22(a)(6), requires that the application as filed include an e-mail address for correspondence and an authorization for the USPTO to send correspondence concerning the application to the applicant by e-mail.  Trademark Rule 2.22(b)(2), 37 C.F.R. §2.22(b)(2), requires that the applicant maintain a valid e-mail correspondence address, and continue to receive correspondence by e-mail throughout the pendency of the application.

The additional fee will be required if the TEAS Plus applicant (or the applicant’s qualified practitioner) files a change of correspondence address, and the correspondence address change does not authorize e-mail correspondence, or if the applicant has a change in e-mail address, but does not notify the USPTO of the new e-mail address, thereby causing correspondence from the USPTO to be undeliverable. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c).  The applicant cannot avoid paying the fee by subsequently agreeing to authorize e-mail correspondence.

When issuing a nonfinal action on a TEAS Plus application, the examining attorney will include a reminder that the applicant must maintain a valid e-mail correspondence address, and continue to accept correspondence from the USPTO via e-mail throughout the examination process in order to avoid the additional fee.  If the applicant files a request to change the correspondence address that does not authorize e-mail correspondence, the requirement for payment of the additional fee will be made final, assuming that the application is otherwise in condition for final refusal.