TMEP § 301
Trademark applicants and registrants must file all trademark submissions electronically using the trademark electronic filing system (see TMEP §301.01(a)) and provide an email address for receiving United States Patent and Trademark Office (USPTO) correspondence, with limited exceptions. See 37 C.F.R. §§2.21, 2.23, 7.4, 7.25.
Limited Exceptions for Paper Submissions.
The requirement to file all trademark correspondence electronically does not apply to:
Unless one of the above exceptions applies, applicants or registrants that file a paper submission will receive a notice from the USPTO indicating that the submission will not be processed and will be destroyed in accordance with the relevant record-retention schedule. If a check or money order was included with the paper submission, it will be returned with the USPTO notice.
Trademark Trial and Appeal Board. The Trademark Trial and Appeal Board’s (Board) electronic filing system comprises the Electronic System for Trademark Trials and Appeals (ESTTA), available at https://estta.uspto.gov/, and TTAB Center, available at https://ttabcenter.uspto.gov/. See 37 C.F.R. §2.126(a). Parties to Board proceedings must use the Board's electronic filing system to file requests for extensions of time to oppose, notices of opposition, petitions to cancel, appeals, motions, briefs, notices of change of address, and other documents. See Trademark Trial and Appeal Board Manual of Procedure (TBMP) §110.01.
Assignments. Requests to record assignments, name changes, and other transfer of ownership of marks in applications and registrations may be filed using Assignment Center at https://assignmentcenter.uspto.gov/ or submitted on paper. See 37 C.F.R. §3.25(c); TMEP Chapter 500.
The USPTO's electronic filing system, comprises the Trademark Electronic Application System (TEAS), available at https://www.uspto.gov/trademarks/apply, and Trademark Center, available at https://trademarkcenter.uspto.gov. Applicants and registrants must use the trademark electronic filing system to file all forms related to a domestic application or registration, or for filings under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol), except for initial applications filed under Trademark Act Section 66(a) (see TMEP §301.02(b)). The trademark electronic filing system provides situation-specific forms that require direct data entry in designated fields, and/or the attachment of a .jpg or .pdf image file.
To file documents using the trademark electronic filing system, the user must be logged into their USPTO.gov account with two-step authentication and have completed the one-time mandatory identity verification process. Because the user must complete identity verification in advance of a filing deadline, users should plan ahead to allow adequate time to complete the process. Failure to complete the identity verification process prior to a deadline will prevent use of the trademark electronic filing system and could result in the user having to file a petition to revive an abandoned application or a petition to the Director to accept a late filing, if appropriate. See 37 C.F.R. §§2.66, 2.146. Failure to timely file documents with a statutory deadline (e.g., a statement of use after five granted extensions or a Section 8 declaration of use or excusable nonuse) will result in abandonment of the application or cancellation of the registration. The Director has no authority to waive a statutory deadline, even on petition in an extraordinary situation. See 37 C.F.R. §2.148; TMEP §1708.
If the user is unable to complete the identify verification process prior to the filing deadline, they may file a petition to accept a paper submission following the procedures outlined in TMEP §1709.
For more information regarding the requirement to login to a USPTO.gov account, see https://www.uspto.gov/trademarks/login.
For all submissions filed using the trademark electronic filing system, the USPTO generally receives the submission within seconds after it is filed. Upon successful submission, the trademark electronic filing system almost immediately displays a page that confirms receipt. See TMEP §303.02(a). This page is evidence that the submission was filed should any question arise as to the filing date of the document, and may be printed or copied-and-pasted into an electronic record for storage. Id. The trademark electronic filing system also separately sends an email acknowledgement of receipt that includes the same information. Filing electronically automatically creates an entry of receipt of this filing in the USPTO’s automated system.
See TMEP §303.01 regarding the filing date for electronic submissions.
The trademark electronic filing system is generally available 24 hours a day, seven days a week. However, the system is periodically down for scheduled maintenance and unexpected outages. Users should check the "USPTO Systems Status and Availability" page on the USPTO website for notice regarding such maintenance or outage.
Widespread or lengthy system outage. In the event the trademark electronic filing system is unavailable to the general public due to a widespread or lengthy system outage, the USPTO will continue its practice of issuing a notice on the "USPTO Systems Status and Availability" page, specifying temporary procedures for filing documents with the USPTO. If the USPTO website is inaccessible, the filer should call the Trademark Assistance Center at (571) 272-9250 or 800-786-9199 or email TEAS@uspto.gov for information on the temporary procedures.
If the outage falls on the date of the deadline for the submission, the requirement to file electronically will be waived, and filings submitted in accordance with such temporary procedures will be accepted without a petition or petition fee. See TMEP §1709.01(a) for the requirements for submitting a document during a widespread or lengthy outage of the trademark electronic filing system and the associated fees.
Limited or short-term system outage or user’s system outage. If the trademark electronic filing system is unavailable due to either a limited or short-term USPTO system outage or a user’s system outage on the date of the deadline for submission of a document, a petition to the Director to accept a paper submission may be submitted. 37 C.F.R. §2.147(a). See TMEP §1709.01(b) for the requirements for submitting a document during a limited or short-term USPTO system outage or user’s system outage and the associated fees.
See also TMEP §1709 regarding filing petitions to the Director under 37 C.F.R. §2.147 to accept paper filings in general.
The USPTO will permit paper submissions of forms related to a domestic application or registration, or for filings under the Madrid protocol, and related correspondence only in the limited circumstances discussed below. Otherwise, paper submissions will not be processed and will be destroyed in accordance with the relevant record retention schedule, and any accompanying fee will not be accepted. In these circumstances, the USPTO will issue a notice to that effect to the submitting party, and will return with the notice any check or money order provided with the paper filing.
The United States is a member of both the Trademark Law Treaty (TLT) and the subsequent Singapore Treaty on the Law of Trademarks (STLT), which constitute two separate international instruments that may be ratified or acceded to independently by member countries. Nationals of TLT members that are not also members of STLT at the time of submission of the relevant document to the USPTO are not required to file trademark submissions electronically, receive communications from the USPTO via email, or submit a petition to accept a paper filing. See 37 C.F.R. §§2.21(c), 2.23(c), 7.4(c).
A specimen for certain non-traditional marks, such as scent and flavor marks, cannot be submitted electronically. See 37 C.F.R. §2.56(d)(1); TMEP §904.03(m). For example, if the application is for a scent mark, the examining attorney must be able to smell the actual scent to determine registrability.
To submit a specimen for a scent, flavor, or similar non-traditional mark, the applicant must first submit information about the specimen online using the trademark electronic filing system and then mail in the physical specimen to the following address:
Commissioner for Trademarks
James Madison Building – East Wing
Concourse Level – 0B50
Attn: Mailroom Staff
600 Dulany Street
Alexandria,
VA
22314
The forms in the trademark electronic filing system have a checkbox on the "Use Information" page that must be selected to indicate that a specimen for a non-traditional mark will be submitted by mail. In these circumstances, the applicant or registrant is not required to submit a petition requesting acceptance of a specimen filed on paper or waiver of the requirement to file the specimen electronically. See 37 C.F.R. §2.56(d)(1).
This exception does not apply to sound, motion, and color marks, for which electronically filed specimens are sufficient to determine registrability. Applicants are required to submit specimens for these marks electronically. See TMEP §904.03(f), (l).
In certain circumstances, an applicant or registrant may file a petition to the Director under 37 C.F.R. §2.147 to request acceptance of a submission filed on paper. See TMEP §§1709-1709.03 for further information on when such a petition can be filed and the requirements for submitting one.
In the event of a postal-service interruption or emergency related to a natural disaster, the USPTO will continue its prior practice of issuing a notice on the USPTO website that specifies temporary procedures for filing documents with the USPTO. Generally, the USPTO will waive certain requirements of the rules for those in the affected area. The notice can be found on the "USPTO Systems Status and Availability" page of the website. If Internet access is not available, call the Trademark Assistance Center at (571) 272-9250 or 800-786-9199 or email TEAS@uspto.gov for information on the temporary procedures. See TMEP §305.04 about postal service interruptions or emergencies.
Trademark Act Section 66(a) applications are initially filed with the International Bureau of the World Intellectual Property Organization (IB) and subsequently transmitted to the USPTO for examination. However, all subsequent submissions relating to such applications must be filed through the trademark electronic filing system. See 37 C.F.R. §§2.23(a), 7.25.
Under the rules mandating electronic filing, the TEAS RF application filing option was renamed TEAS Standard and the TEAS Regular application filing option was eliminated. Applications filed prior to February 15, 2020 that were submitted on paper or using a TEAS Regular application form, which did not require electronic filing for other application-related submissions, are "grandfathered" under the prior rules, which permit paper submissions, until the application registers or is abandoned and is not eligible to be revived or reinstated pursuant to 37 C.F.R. §2.64, §2.66, or §2.146. If such an applicant or its attorney chooses to use the trademark electronic filing system to submit a document during the pendency of the application, the application loses its grandfathered status. Forms in the trademark electronic filing system will require the email address of the applicant and its qualified U.S. attorney, if represented, to be provided, and the USPTO will send all future correspondence to the email address of the applicant or its attorney, as appropriate.
Applicants that filed an application prior to February 15, 2020 using the TEAS RF or TEAS Plus application form were already subject to the requirement to correspond electronically with the USPTO at the time of filing. If a TEAS Plus or TEAS RF applicant submits a response to an Office action or other document on paper, the applicant must submit a petition requesting acceptance of the paper filing under 37 C.F.R. §2.146 or §2.147 with the required petition fee, as appropriate. See TMEP §§301.02(e), 1702, 1709. The applicant will not be charged the additional processing fee under prior 37 C.F.R. §2.22(c) or §2.23(c).
Registrants that filed post-registration maintenance documents on paper prior to February 15, 2020 are grandfathered under the prior rules until the acceptance or final rejection of the filing, unless the registrant or its qualified U.S. attorney, if represented, elects to use the trademark electronic filing system to submit a document during the pendency of the post-registration matter. At that point, any subsequent post-registration filings must be submitted through the trademark electronic filing system.