Additional Courtesy Electronic Mail Addresses Now Permitted for Trademark Correspondence
As part of efforts by the United States Patent and Trademark Office (“USPTO”) to improve the experience of trademark applicants and registrants and to benefit from the advantages of increased electronic processing, effective November 19, 2011, the USPTO began permitting the submission of more than one electronic mail (e-mail) address for receipt of duplicate courtesy copies of trademark-related correspondence sent from the USPTO by e-mail, in addition to the single official correspondence address. Providing the additional addresses is entirely optional, available to those who find it helps them to manage more effectively their communications with the USPTO. For example, these courtesy copies will improve communication for correspondents in trademark cases who would like additional points of contact (such as law firm docketing staff) immediately notified about the USPTO’s actions.
Trademark applicants must provide an address to which correspondence can be mailed in order to receive a filing date (37 CFR § 2.21(a)(2)). Applicants may submit an e-mail address and authorize the USPTO to use that address for Office actions, notices, or other correspondence concerning an application or registration (37 CFR § 2.18; Trademark Manual of Examining Procedure, 8th edition, October 2011 (“TMEP”) § 304.03). Such e-mail correspondence provides convenience for applicants and registrants, as well as efficiencies for the USPTO. Previously, because Trademark Rule 2.18(a)(6) provides that the USPTO will officially correspond with only one address in an ex parte matter, and because of information technology limitations, the USPTO limited e-mail communication with an applicant or registrant to a single e-mail address.
In response to requests from trademark applicants and registrants, the USPTO has made the necessary changes in its electronic systems and now allows the designation of one primary e-mail address for trademark-related correspondence and up to four secondary e-mail addresses for duplicate courtesy copies of the correspondence. Although the USPTO will send e-mail correspondence to all of the addresses listed, the primary address will differ from the secondary addresses in how the USPTO will treat undelivered e-mail. If an e-mail sent to the primary address is returned as undeliverable, the USPTO will send a paper copy to the correspondence address of record (TMEP § 403). The USPTO will not attempt to resend correspondence when a duplicate courtesy e-mail sent to a secondary address is returned as undeliverable.
Please note that for any existing applications/registrations where email communication has already been authorized, additional addresses may now be provided through the TEAS Change of Correspondence Address form, in the field identified as “Secondary Email Address(es).”
