T.M.E.P. § 305.02
Last updated in November 2005.
305.02 Certificate of Mailing Procedure
37 C.F.R. 2.197. Certificate of mailing or transmission.
(a) Except in the cases enumerated in paragraph (a)(2) of this section, correspondence required to be filed in the Office within a set period of time will be considered as being timely filed if the procedure described in this section is followed. The actual date of receipt will be used for all other purposes. (1) Correspondence will be considered as being timely filed if: (i) The correspondence is mailed or transmitted prior to expiration of the set period of time by being: (A) Addressed as set out in §2.190 and deposited with the U.S. Postal Service with sufficient postage as first class mail; or (B) Transmitted by facsimile to the Office in accordance with §2.195(c); and (ii) The correspondence includes a certificate for each piece of correspondence stating the date of deposit or transmission. The person signing the certificate should have a reasonable basis to expect that the correspondence would be mailed or transmitted on or before the date indicated. (2) The procedure described in paragraph (a)(1) of this section does not apply to: (i) Applications for the registration of marks under 15 U.S.C. 1051 or 1126; and (ii) Madrid-related correspondence filed under §7.11, §7.21, §7.14, §7.23, §7.24 or §7.31. (b) In the event that correspondence is considered timely filed by being mailed or transmitted in accordance with paragraph (a) of this section, but not received in the Office, and an application is abandoned, a registration is cancelled or expired, or a proceeding is dismissed, terminated, or decided with prejudice, the correspondence will be considered timely if the party who forwarded such correspondence: (1) Informs the Office of the previous mailing or transmission of the correspondence within two months after becoming aware that the Office has no evidence of receipt of the correspondence; (2) Supplies an additional copy of the previously mailed or transmitted correspondence and certificate; and (3) Includes a statement that attests on a personal knowledge basis or to the satisfaction of the Director to the previous timely mailing or transmission. If the correspondence was sent by facsimile transmission, a copy of the sending unit's report confirming transmission may be used to support this statement. (c) The Office may require additional evidence to determine whether the correspondence was timely filed.
In 37 C.F.R. 2.197. there is a "certificate of mailing or transmission" procedure to avoid lateness due to mail delay. This procedure may be used for all trademark correspondence except applications for registration of marks. 37 C.F.R. 2.197(a)(2). Under the certificate of mailing or transmission procedure, correspondence is considered to be timely even if received after the due date, if the correspondence was (1) deposited with the United States Postal Service as first class mail or transmitted to the USPTO by facsimile transmission before the expiration of the filing period, and (2) accompanied by a certificate attesting to the date of deposit or transmission.
Filers must retain a copy of the correspondence, including the signed and dated certificate. In re Sasson Licensing Corporation, 35 USPQ2d 1510 (Comm'r Pats. 1995).
See TMEP §§305.02 et seq. regarding the certificate of mailing procedure, and TMEP §§306.05 et seq. regarding the certificate of transmission procedure.
305.02(a) When Certificate of Mailing Procedure May Not Be Used
The certificate of mailing procedure may be used for all trademark filings except:
- An application to register a mark;
- International applications under 37 C.F.R. 7.11 ;
- Subsequent designations under 37 C.F.R. 7.21 ;
- Responses to notices of irregularity under 37 C.F.R. 7.14 ;
- Requests to record changes of ownership of international registrations under 37 C.F.R. 7.23 ;
- Requests to record restrictions of the holder's right of disposal of an international registration, or the release of such restrictions, under 37 C.F.R. 7.24 ; and
- Requests for transformation under 37 C.F.R. 7.31 .
305.02(b) Mailing Requirements
The correspondence must be deposited in the United States mail, properly addressed (see TMEP §305.01 for mailing addresses), and the envelope must have sufficient postage as first-class mail. Since first-class mail services of the USPS are not available in foreign countries, the certificate of mailing procedure may not be used for sending mail to the USPTO from a foreign country.
305.02(c) Location and Form of Certificate
The certificate of mailing must: (1) state the date of deposit in the mail, which must be a date within the set filing period (this includes the last day of the period, or the succeeding day that is not a Saturday, Sunday or Federal holiday within the District of Columbia when the last day of the period falls on a Saturday, Sunday or Federal holiday within the District of Columbia); and (2) be signed by a person who has a reasonable basis to expect the correspondence to be deposited in the mail on the date indicated. The signature of the certificate must be separate from any signature for the correspondence being deposited.
The best location for the certificate of mailing is at the beginning of the correspondence to which it pertains, typed in its entirety.
The certificate of mailing should be separated from contents of the correspondence that are on the same page. Several blank lines between the contents and the certificate will suffice.
If the certificate of mailing does not fit on the correspondence to which it pertains, the certificate may be placed on a separate sheet of paper that is attached securely to the correspondence. The separate sheet must exhibit or bear a complete identification of the nature of the paper or fee as well as an identification of the application, registration and/or proceeding to which the paper pertains (including serial number or registration number). The separate sheet may be a cover letter or transmittal letter, with the certificate placed at the bottom of the letter and signed separately from the letter. If there is any doubt concerning the correspondence to which a certificate of mailing on a separate sheet relates, the USPTO will not accept the certificate.
There must be a certificate of mailing for each piece of correspondence. When correspondence for more than one application or registration is mailed in a single envelope, each item of correspondence must have its own certificate of mailing. Similarly, when more than one type of correspondence is submitted in connection with the same application, each item of correspondence must have its own certificate of mailing.
It is suggested that the certificate be signed by the applicant or the party involved in the proceeding, or by the attorney for such person. If someone else signs, it should be a responsible person in a position to know that the mail will be deposited on the date specified.
The USPTO accepts the date of deposit stated in the certificate of mailing on the basis of the statement of personal knowledge. The USPTO does not normally inspect the postmark on the envelope.
305.02(d) Wording of Certificate of Mailing
The following wording is suggested for the certificate of
CERTIFICATE OF MAILING
I hereby certify that this correspondence is being deposited with the United States Postal Service as first class mail in an envelope addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, Virginia 22313-1451 on the date shown below:
(Typed or Printed Name of Person Signing Certificate)
305.02(e) Effect of Certificate of Mailing
The date of actual receipt is the filing date of paper correspondence. 37 C.F.R. 2.195(a). The USPTO does not retain the envelopes in which material is received or record the date of the postmark.
The date of deposit indicated on the certificate of mailing is used only to determine whether the correspondence was deposited with the USPS within the filing period. Therefore, if the correspondence is actually received in the USPTO within the filing period, the certificate of mailing is ignored. If, however, the USPTO receives the correspondence after the filing period has expired, the USPTO looks to see whether a certificate of mailing was included. If no certificate is found, the correspondence is untimely.
When a paper received after the expiration of the filing period includes a signed certificate of mailing, and the date of deposit on the certificate is within the filing period, the USPTO considers the correspondence to be timely filed.
If the filing period ends on a Saturday, Sunday or Federal holiday within the District of Columbia, the correspondence is considered timely if the date of deposit on the certificate of mailing is the next succeeding day that is not a Saturday, Sunday or Federal holiday within the District of Columbia (see 37 C.F.R. 2.196 and TMEP §308 ).
Whenever it is necessary to change the effective filing date of an application (for example, when an application filed under §1(b) of the Trademark Act is amended to request registration on the Supplemental Register after submission of an allegation of use), the date of actual receipt rather than the date on the certificate is the new effective filing date. See TMEP §§206 et seq. as to changes in the effective filing date of an application.
305.02(f) Correspondence Mailed Pursuant to 37 C.F.R. 2.197 But Not Received by Office
If correspondence filed with a certificate of mailing is not received by (or is lost within) the USPTO, the USPTO will consider the correspondence to be timely based on the date of deposit stated in the certificate of mailing if the party who filed the correspondence:
(1) informs the USPTO in writing of the previous mailing of the correspondence within two months after becoming aware that the USPTO has no evidence of receipt of the correspondence; (2) supplies an additional copy of the previously mailed correspondence, including a copy of the signed and dated certificate of mailing (see In re Sasson Licensing Corporation, 35 USPQ2d 1510 (Comm'r Pats. 1995)); and (3) includes a statement attesting to the previous timely mailing on the basis of the signer's personal knowledge. This statement does not have to be verified.
Under 37 C.F.R. §§2.146(d) and 2.197(b)(1), a party must notify the USPTO of the mailing of the correspondence within two months after becoming aware that the USPTO has no evidence of receipt of the correspondence. Where no written action is generated that can be used as a starting point for measuring the petition's timeliness, the two-month deadline runs from the date that the party who filed the correspondence became aware that there was a problem with the filing date of the correspondence. See TMEP §1705.04 .
The required evidence should be sent to the area in the USPTO where the misplaced or lost document was intended to be filed, e.g. the law office, ITU Unit, or Post Registration Section.
If all three criteria listed above cannot be met, the only remedy available is a petition to revive under 37 C.F.R. 2.66 (if appropriate) or a petition under 37 C.F.R. 2.146. which must include a petition fee of $100, and a statement that attests on a personal knowledge basis to the previous timely mailing, along with any additional evidence. See 37 C.F.R. §§2.66 and 2.146; TMEP §§1702 through 1708 regarding petitions under 37 C.F.R. 2.146 and TMEP §§1714 et seq. regarding petitions to revive.
The above procedure does not apply to the filing of an application for registration of a mark, or to the Madrid-related documents listed in 37 C.F.R. 2.197(a)(2) and TMEP §305.02(a) .
Under 37 C.F.R. 2.197(c). the USPTO may require additional evidence relating to the mailing or transmission of correspondence. See, e.g. In re Klein, 6 USPQ2d 1547 (Comm'r Pats. 1987), aff'd sub nom. Klein v. Peterson, 696 F. Supp. 695, 8 USPQ2d 1434 (D.D.C. 1988), aff'd, 866 F.2d 412, 9 USPQ2d 1558 (Fed. Cir. 1989), cert. denied, 490 U.S. 1091 (1989).
305.02(g) Correspondence Deposited as First Class Mail Pursuant to 37 C.F.R. 2.197 and Returned by the U.S. Postal Service
The USPS requires that all domestic first class mail that weighs sixteen ounces or more be presented to a retail clerk at a USPS office. All such mail that is not presented to a retail clerk at a USPS office (e.g. is placed in a mailbox) will be returned by the USPS. The USPS has posted notice of this requirement on mailboxes. The "Express Mail" service of the USPS is not affected.
Correspondence must be deposited with the USPS as first class mail in compliance with any and all applicable requirements of the USPS to be considered "[d]eposited with the U.S. Postal Service," within the meaning of 37 C.F.R. 2.197(a)(1)(i)(A). Therefore, correspondence returned by the USPS as not mailed in compliance with USPS requirements concerning mail weighing sixteen ounces or more is not entitled to any benefit under 37 C.F.R. 2.197. See notice at 1192 TMOG 43 (Nov. 12, 1996).
305.02(h) Certificate of Mailing Requirements Strictly Enforced
The requirements of 37 C.F.R. 2.197 are strictly enforced, and the USPTO denies petitions to consider a document timely filed as of the date on the certificate if a party fails to comply with these requirements.
A party's inadvertent failure to comply with the requirements of a rule is not considered an extraordinary situation that would warrant waiver of a rule under 37 C.F.R. 2.146(a)(5) or §2.148. See Honigsbaum v. Lehman, 903 F. Supp. 8, 37 USPQ2d 1799 (D.D.C. 1995), aff'd mem. 95 F.3d 1166 (Fed. Cir. 1996) (Commissioner did not abuse his discretion in refusing to waive requirements of 37 C.F.R. 1.10(c) and grant filing date to patent application, when applicant failed to produce "Express Mail" customer receipt or any other evidence that application was actually deposited with USPS as "Express Mail"); In re Sasson Licensing Corporation, 35 USPQ2d 1510 (Comm'r Pats. 1995) (failure to retain executed hard copy of certificate of mailing under 37 C.F.R. 1.8 not extraordinary situation that would justify waiver of rule); Gustafson v. Strange, 227 USPQ 174 (Comm'r Pats. 1985) (counsel's unawareness of 37 C.F.R. 1.8 not extraordinary situation warranting waiver of a rule); In re Chicago Historical Antique Automobile Museum, Inc. 197 USPQ 289 (Comm'r Pats. 1978) (lateness due to mail delay not deemed to be extraordinary situation, because certificate of mailing procedure under 37 C.F.R. 1.8 was available to petitioner).