Why Trademark Filers Should Keep Their Correspondence Addresses Updated

The USPTO recently issued updated guidance to trademark filers about letters of protest and requesting duplicate certificates of registration, and slipped in a revision relating to how rights holders will be notified of communications from the USPTO. See Examination Guide 3-18 (Sept. 18, 2018). This guidance has now been codified in the updated Trademark Manual of Examining Procedure (“TMEP”), released October 31, 2018.

All trademark applicants are required to designate a contact person, authorized to receive correspondence from the USPTO on the applicant’s behalf.  Under the new rules, this Correspondent must also designate an email address to be used for official correspondence with the USPTO.

Prior to the release of this Examination Guide, however, if notices the USPTO sent to the email address of record for the Correspondent on the file were returned as “undeliverable”, the USPTO would send a paper copy of that message to the Correspondent’s physical mailing address, and thereby attempt to deliver the message through alternate means:

“If outgoing e-mail to a primary e-mail correspondence address of record is returned as undeliverable, the USPTO will send a paper copy to the correspondence address of record.  See TMEP §§ 304–304.09 regarding e-mail communications.” TMEP § 403 (Oct. 2017).

On May 30, 2018, the USPTO issued a Notice of Proposed Rulemaking, outlining new requirements for trademark filers to make all submissions to the Office electronically, except in certain, very narrowly defined, circumstances. Amid the straightforward requirements, there was also a single sentence on the top of page four of the notice, that confirmed that paper copies will no longer be mailed to filers after an email directed to the Correspondent of record is returned to the Office as undeliverable.  See Changes to the Trademark Rules of Practice to Mandate Electronic Filing (“Trademark Rules”), published at 83 Fed. Reg. 24701 (PTO-T-2017-0004, May 30, 2018).

During the public comment period, the ABA-IPL Section submitted comments to the proposed Trademark Rules which explained the concern:

“The Section would be concerned if the USPTO does ‘not attempt to contact the correspondent by other means’ when an email transmission fails. Email addresses frequently change as companies adopt new domain names and as staff turns over. Further, technical issues due to hardware malfunction, software bugs, or malicious cyber-attacks increase the chances for electronic communication to be disrupted. Therefore, the Section strongly encourages the USPTO to continue its practice of attempting to contact the correspondent by other means if the address of record is undeliverable, including physical correspondence by mail. TMEP §§ 403, 717.01 (Oct. 2017).”

ABA-IPL Section Letter to Hon. Mary Boney Denison at 3 (Aug. 20, 2018).

The September 18, 2018 Guidance from the USPTO (as now embodied in TMEP) confirmed that the USPTO will no longer send out paper copies of correspondence to applicants or registrants by regular mail if delivery to the email address of record (for the Correspondent) fails. See Updated Version of TMEP §§ 403, 717 (Oct. 31, 2018) (compare with the prior versions – §§ 403, 717 (Oct. 2017)). Instead, the USPTO rests the obligation on the trademark filers to keep their contact information updated.

As a result, trademark filers should be diligent in keeping their correspondent’s address updated and frequently check TSDR for any necessary updates that need to be made to their records so that no reminder emails – or other emails requiring a response – are missed.