116    Termination of Representation

116.01    Revocation of Authority

37 C.F.R. § 2.19  Revocation of power of attorney; withdrawal.

  • (a) Revocation.
    • (1) Authority to represent an applicant, registrant or party to a proceeding before the Office may be revoked at any stage in the proceedings of a trademark case, upon written notification signed by the applicant, registrant, or party to the proceeding, or by someone with legal authority to bind the applicant, registrant, or party (e.g., a corporate officer or general partner of a partnership). In the case of joint applicants or joint registrants, all must sign.
    • (2) When a power of attorney is revoked, the Office will communicate directly with the applicant, registrant, or party to the proceeding, or with the new attorney or domestic representative if appropriate.
    • (3) A request to change the correspondence address does not revoke a power of attorney.
    • (4) A new power of attorney that meets the requirements of § 2.17(c) will be treated as a revocation of the previous power.

Authority to represent a party in a proceeding before the Board may be revoked at any stage of the proceeding, by filing a written revocation with the Board. Thereafter, the Board will not recognize that person as a representative in the case, or give any consideration to any submissions which he or she may file therein, unless a new written authorization of that person, signed by the party, is filed in the proceeding.

116.02    Withdrawal as Representative--In General

37 C.F.R. § 2.19(b)  Withdrawal of attorney. If the requirements of § 11.116 of this chapter are met, a practitioner authorized to represent an applicant, registrant, or party to a proceeding in a trademark case may withdraw upon application to and approval by the Director or, when applicable, upon motion granted by the Trademark Trial and Appeal Board. The practitioner should file the request to withdraw soon after the practitioner notifies the client of his/her intent to withdraw. The request must include the following:

    • (1) The application serial number, registration number, or proceeding number;
    • (2) A statement of the reason(s) for the request to withdraw; and
    • (3) Either
      • (i) A statement that the practitioner has given notice to the client that the practitioner is withdrawing from employment and will be filing the necessary documents with the Office; that the client was given notice of the withdrawal at least two months before the expiration of the response period, if applicable; that the practitioner has delivered to the client all documents and property in the practitioner’s file concerning the application, registration or proceeding to which the client is entitled; and that the practitioner has notified the client of any responses that may be due, and of the deadline for response; or
      • (ii) If more than one qualified practitioner is of record, a statement that representation by co-counsel is ongoing.

37 C.F.R. § 11.116   Declining or terminating representation.

  • (a) Except as stated in paragraph (c) of this section, a practitioner shall not represent a client, or where representation has commenced, shall withdraw from the representation of a client if:
    • (1) The representation will result in violation of the USPTO Rules of Professional Conduct or other law;
    • (2) The practitioner’s physical or mental condition materially impairs the practitioner’s ability to represent the client; or
    • (3) The practitioner is discharged.
  • (b) Except as stated in paragraph (c) of this section, a practitioner may withdraw from representing a client if:
    • (1) Withdrawal can be accomplished without material adverse effect on the interests of the client;
    • (2) The client persists in a course of action involving the practitioner’s services that the practitioner reasonably believes is criminal or fraudulent;
    • (3) The client has used the practitioner’s services to perpetrate a crime or fraud;
    • (4) A client insists upon taking action that the practitioner considers repugnant or with which the practitioner has a fundamental disagreement;
    • (5) The client fails substantially to fulfill an obligation to the practitioner regarding the practitioner’s services and has been given reasonable warning that the practitioner will withdraw unless the obligation is fulfilled;
    • (6) The representation will result in an unreasonable financial burden on the practitioner or has been rendered unreasonably difficult by the client; or
    • (7) Other good cause for withdrawal exists.
  • (c) A practitioner must comply with applicable law requiring notice to or permission of a tribunal when terminating a representation. When ordered to do so by a tribunal, a practitioner shall continue representation notwithstanding good cause for terminating the representation.
  • (d) Upon termination of representation, a practitioner shall take steps to the extent reasonably practicable to protect a client’s interests, such as giving reasonable notice to the client, allowing time for employment of other counsel, surrendering papers and property to which the client is entitled and refunding any advance payment of fee or expense that has not been earned or incurred. The practitioner may retain papers relating to the client to the extent permitted by other law.

Under certain circumstances, a practitioner may withdraw from employment as the attorney or other authorized representative of a party to a proceeding before the Board. A practitioner who wishes to withdraw must file a written request with the Board for permission to do so. The practitioner may not be able to withdraw until he or she has complied with the conditions specified in 37 C.F.R. § 11.116(c) - 37 C.F.R. § 11.116(d).

116.03    When Withdrawal is Mandatory

Withdrawal from employment as the attorney or other representative of a party to a Board proceeding is mandatory under the circumstances specified in 37 C.F.R. § 11.116(a).

116.04    When Withdrawal is Permissive

Withdrawal from employment as the attorney or other authorized representative of a party to a Board proceeding is permissive under the circumstances specified in 37 C.F.R. § 11.116(b).

116.05    Request to Withdraw

A practitioner who wishes to withdraw from employment as the attorney or other authorized representative of a party to a proceeding before the Board must file a written request with the Board for permission to do so. The request to withdraw must be based upon one of the grounds for mandatory or permissive withdrawal listed in 37 C.F.R. § 11.116(a)  and 37 C.F.R. § 11.116(b). Moreover, the practitioner must comply with the requirements of 37 C.F.R. § 11.116(c)  and 37 C.F.R. § 11.116(d). [ Note 1.]

The propriety of a request for permission to withdraw as counsel in an application that is the subject of a potential opposition is determined by the Board, and not the Trademark Operation. See TBMP § 212.01.

For further information concerning the requirements for a request to withdraw as representative, and the action taken by the Board when such a request is granted, see TBMP § 513.01.

Please Note: Effective May 3, 2013, the United States Patent and Trademark Office adopted new USPTO RULES OF PROFESSIONAL CONDUCT which are based on the American Bar Association’s MODEL RULES OF PROFESSIONAL CONDUCT. Cases decided prior to May 3, 2013 refer to the USPTO RULES CODE OF PROFESSIONAL CONDUCT that was in effect at that time. These earlier cases continue to be instructive.

NOTES:

 1.   See 37 C.F.R. § 2.19(b)  and 37 C.F.R. § 11.116; In re Slack, 54 USPQ2d 1504, 1505 (Comm’r 2000) (standards and procedure for withdrawal); In re Legendary Inc., 26 USPQ2d 1478, 1479 (Comm’r 1992) (same). See also SFW Licensing Corp. v. Di Pardo Packing Ltd., 60 USPQ2d 1372, 1374 (TTAB 2001) (request to withdraw may not be used as a subterfuge for an extension of time; request to withdraw and motion to extend filed on last day of testimony period denied).