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37 C.F.R. §2.193. Trademark correspondence and signature requirements.
(a) Since each file must be complete in itself, a separate copy of every document to be filed in a trademark application, trademark registration file, or proceeding before the Trademark Trial and Appeal Board must be furnished for each file to which the document pertains, even though the contents of the documents filed in two or more files may be identical. Parties should not file duplicate copies of correspondence, unless the Office requires the filing of duplicate copies. The Office may dispose of duplicate copies of correspondence.
(b) Since different matters may be considered by different branches or sections of the Office, each distinct subject, inquiry or order must be contained in a separate document to avoid confusion and delay in answering correspondence dealing with different subjects.
(c)(1) Each piece of correspondence that requires a person’s signature, must:
(i) Be an original, that is, have an original signature personally signed in permanent ink by that person; or
(ii) Be a copy, such as a photocopy or facsimile transmission (§2.195(c)), of an original. In the event that a copy of the original is filed, the original should be retained as evidence of authenticity. If a question of authenticity arises, the Office may require submission of the original; or
(iii) Where an electronically transmitted trademark filing is permitted or required, the person who signs the filing must either:
(A) Place a symbol comprised of numbers and/or letters between two forward slash marks in the signature block on the electronic submission; or
(B) Sign the verified statement using some other form of electronic signature specified by the Director.
(2) The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any document by a party, whether a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this chapter. Violations of § 11.18(b)(2) of this chapter by a party, whether a practitioner or non-practitioner, may result in the imposition of sanctions under § 11.18(c) of this chapter. Any practitioner violating § 11.18(b) may also be subject to disciplinary action. See §§ 11.18(d) and 10.23(c)(15).
(d) When a document that is required by statute to be certified must be filed, a copy, including a photocopy or facsimile transmission, of the certification is not acceptable.
The USPTO recommends filing through TEAS whenever possible. See TMEP §301. Trademark documents may also be sent through the United States Postal Service (“USPS”), delivered by a courier service, or hand carried to the USPTO. Except for documents listed in TMEP §306.01, correspondence may be transmitted by facsimile (“fax”). (Note that an application for registration of a mark may not be filed by fax, but can be filed through TEAS. 37 C.F.R. §§2.195(d)(1) and 2.197(a)(2)). Certain documents can be sent through e-mail (see TMEP §304).
See TMEP §§304 et seq. regarding e-mail, TMEP §§305 et seq. regarding mailing documents to the USPTO, TMEP §§306 et seq. regarding fax transmission, and TMEP §307 regarding hand delivery.
When a party files a copy of a document related to an application or registration, the USPTO will normally not require the party to submit the original document. Copies (e.g., photocopies or fax transmissions) are acceptable unless a document is required by statute to be certified (e.g., a certified copy of a final court order pursuant to 15 U.S.C. §1119). However, the party who filed the copy should retain the original in case questions arise as to the authenticity of the signature on the photocopy or faxed correspondence. See 37 C.F.R. §2.193(c)(1)(ii).
Original certificates of registration are not required for requests for amendment or correction of a registration under §7 of the Trademark Act, and owners are strongly discouraged from submitting them. See TMEP §§1609.01(b) and 1609.10.
Extract from 37 C.F.R. §2.193(a).
* * * Parties should not file
duplicate copies of correspondence, unless the Office requires the filing of
duplicate copies. The Office may dispose of duplicate copies of
correspondence.
As a general rule, only one copy of each document should be filed, unless more than one copy is specifically required by statute or rule, or a USPTO employee specifically requests more than one copy.
When filing a document electronically or by fax, a party should not send a follow-up copy unless the USPTO specifically requests a follow-up copy. 37 C.F.R. §2.193(a). Submission of duplicate documents can delay processing.
Documents filed through TEAS or ESTTA are automatically transmitted to the appropriate location and entered into the record of the appropriate application or Trademark Trial and Appeal Board (“Board”) proceeding.
For paper documents, to ensure the timely entry into the official record, every piece of correspondence filed in the USPTO pertaining to a trademark application should be identified at the beginning by a heading or caption and by the serial number of the application to which the document pertains. 37 C.F.R. §2.194(b)(1). Cover letters and transmittal letters should identify the material that they accompany.
To expedite processing, all incoming documents pertaining to an application should include the following identifying data:
(1) Serial number;
(2) Filing date;
(3) Mark;
(4) A title indicating the nature of the document;
(5) Law office (identified in the most recent Office action);
(6) Name of examining attorney identified on the most recent Office action;
(7) Issuance date of the Office action to which the document is in response, if applicable;
(8) The name, address (including ZIP code), and telephone number of the applicant or the applicant’s attorney; and
(9) The applicant’s or attorney’s e-mail address.
To facilitate the matching of responses to Office actions with the correct records, examining attorneys’ Office actions issued on paper include peel-off response labels that reference the application serial number, the mark and the assigned law office. If filing a response on paper, the applicant is encouraged to affix this label to the upper right-hand corner of the response.
Documents filed through TEAS or ESTTA are automatically transmitted to the appropriate location and entered into the record of the appropriate registration or Board proceeding.
For paper filings, correspondence relating to a registered trademark should identify the registration by specifying the mark, the registrant’s name, and the registration number. 37 C.F.R. §2.194(b)(2).
Paper correspondence filed under 15 U.S.C. §§1057, 1058, 1059, and 1141k should be directed to the Post Registration Section of the Office.
Paper petitions to cancel a registered mark should be directed to the Board.
Court orders relating to registered trademarks should be sent to the Office of the Solicitor. See TMEP §1610.