Application Filing Receipt Sent Directly to Applicant. The application filing receipt is not routed to the International Bureau (IB). The USPTO will send the application filing receipt to the applicant. The USPTO will not recognize the representative designated in the international registration as the applicant's attorney, and therefore will not correspond directly with that representative without clarification that they are a U.S-licensed attorney under 37 C.F.R §2.17 and §11.14. See TMEP §602.03(c).

Correspondence That Must Be Notified to IB. Correspondence that must be notified to the IB is routed by the IB to the representative designated in the international registration, or if no such representative is designated, directly to the applicant. Regulations Under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Regs.) Rules 3(5) and 17(4). For example, the USPTO will send the first Office action in an application under Trademark Act §66(a) to the IB. See TMEP §1904.02(h). The IB will then send it to the representative designated in the international registration, or if no such representative is designated, the IB will send the first Office action directly to the applicant. 15 U.S.C §1141h(c); Madrid Regs. Rules 3(5) and 17(4).

Appointing an attorney authorized to practice before the USPTO to represent the applicant does not change the designated representative before the IB. Protocol Relating to The Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) Article 9bis(ii); Madrid Regs. Rule 3(2). To change the representative designated in the international registration, a request to record a change of the name or address of the representative designated in the international registration must be filed with the IB; it cannot be filed through the USPTO. Madrid Protocol Article 9bis(ii); Madrid Regs. Rule 3(2). Forms for changing the name or address of the designated representative are available on the IB website at https://madrid.wipo.int.

If the applicant’s domicile address is outside the United States or its territories, and an attorney authorized to practice before the USPTO under 37 C.F.R. §11.14(a) has not been appointed, the first Office action will require the applicant to appoint such an attorney and to provide the attorney’s name, postal and email addresses, and bar information. See 37 C.F.R §§2.11(a), 2.17(b)(3), 7.25(a); TMEP §§602.03(c), 1904.01(i). The USPTO presumes that the representative designated in the international registration is not a U.S.-licensed attorney and therefore considers the applicant unrepresented in the initial application.

Additionally, the first Office action will include a requirement for the applicant’s email address, which is not included in the application form that the IB transmits to the USPTO. See 37 C.F.R §2.32(a)(2). Although the applicant’s email address is not required for a §66(a) application to receive a filing date, the applicant is required to provide a valid email address for receiving USPTO correspondence as one of the requirements for a complete application. 37 C.F.R §§2.23(b), 2.32(a)(2); see 37 C.F.R §2.21(a)(1) (the rule setting forth the requirements for receiving a filing date applies only to applications based on Trademark Act Section 1 or Section 44). See TMEP §601 regarding the requirement for representation dependent on domicile, §601.01(a) regarding applicants with a non-U.S. domicile, and 803.05(b) regarding applicant’s email address as a required element of an application.

If, however, a §66(a) application is otherwise in condition for approval for publication upon first action, the examining attorney may approve the application for publication and should not require the applicant to appoint an attorney authorized to practice before the USPTO or to provide an email address. See TMEP §§803.05(b), 1904.02(h). After the first Office action, if the applicant has appointed a qualified U.S. attorney, such attorney will be the correspondent in the application and will receive all USPTO communications. 37 C.F.R §2.18(a)(2). The applicant must maintain current and accurate correspondence addresses for itself and its attorney. 37 C.F.R §2.18(c). If after the first action the applicant has not appointed a qualified U.S. attorney, the USPTO will send subsequent correspondence to the applicant, who is also required to maintain a valid address for correspondence. 37 C.F.R §§2.18(a)(1), (c), 2.23(b)-(c). The requirement to appoint an attorney authorized to practice before the USPTO under 37 C.F.R §11.14(a) and to provide the attorney’s name, postal address, email address, and bar information will be maintained or made final, as appropriate. See TMEP §609.01 regarding establishing the correspondence address generally, §609.01(a) regarding correspondence in §66(a) applications and §1904.02(h) regarding Office actions in §66(a) applications.

Change of Address. The USPTO will accept a properly signed request to change the applicant’s or registrant’s email address in a §66(a) application or a registered extension of protection of an international registration to the United States, and will send correspondence to the new email address, if appropriate. See TMEP §609.02 regarding changing the correspondence address. A request to change the applicant’s or registrant’s mailing address must be filed with the IB, not the USPTO. An applicant or registrant can update its domicile address using the "Domicile Address" field with the USPTO by completing the appropriate form in the trademark electronic filing system. See TMEP §§803.05(a), 1612.01(b). See TMEP §§1906.01–1906.01(i) regarding requests to record changes with the IB, and §§602.03–602.03(c) regarding foreign attorneys.

The applicant must maintain current and accurate correspondence addresses for itself and its attorney. 37 C.F.R. §2.18(c).