114    Representation of a Party

37 C.F.R. § 11.14   Individuals who may practice before the Office in trademark and other non-patent matters.

  • (a) Attorneys. Any individual who is an attorney as defined in § 11.1 may represent others before the Office in trademark and other non-patent matters. An attorney is not required to apply for registration or recognition to practice before the Office in trademark and other non-patent matters. Registration as a patent practitioner does not itself entitle an individual to practice before the Office in trademark matters.
  • (b) Non-lawyers. Individuals who are not attorneys are not recognized to practice before the Office in trademark and other non-patent matters, except that individuals not attorneys who were recognized to practice before the Office in trademark matters under this chapter prior to January 1, 1957, will be recognized as agents to continue practice before the Office in trademark matters. Except as provided in the preceding sentence, registration as a patent agent does not itself entitle an individual to practice before the Office in trademark matters.
  • (c) Foreigners. Any foreign attorney or agent not a resident of the United States who shall file a written application for reciprocal recognition under paragraph (f) of this section and prove to the satisfaction of the OED Director that he or she is registered or in good standing before the patent or trademark office of the country in which he or she resides and practices and is possessed of good moral character and reputation, may be recognized for the limited purpose of representing parties located in such country before the Office in the presentation and prosecution of trademark matters, provided: the patent or trademark office of such country allows substantially reciprocal privileges to those permitted to practice in trademark matters before the Office. Recognition under this paragraph shall continue only during the period that the conditions specified in this paragraph obtain.
  • (d) Recognition of any individual under this section shall not be construed as sanctioning or authorizing the performance of any act regarded in the jurisdiction where performed as the unauthorized practice of law.
  • (e) No individual other than those specified in paragraphs (a), (b), and (c) of this section will be permitted to practice before the Office in trademark matters on behalf of a client. Any individual may appear in a trademark or other non-patent matter in his or her own behalf. Any individual may appear in a trademark matter for:
    • (1) A firm of which he or she is a member,
    • (2) A partnership of which he or she is a partner, or
    • (3) A corporation or association of which he or she is an officer and which he or she is authorized to represent, if such firm, partnership, corporation, or association is a party to a trademark proceeding pending before the Office.
  • (f) Application for reciprocal recognition. An individual seeking reciprocal recognition under paragraph (c) of this section, in addition to providing evidence satisfying the provisions of paragraph (c) of this section, shall apply in writing to the OED Director for reciprocal recognition, and shall pay the application fee required by § 1.21(a)(1)(i) of this subchapter.

114.01    Party May Represent Itself

A party may represent itself in an ex parte or inter partes proceeding before the Board, or the party may be represented by an attorney or other authorized representative. [ Note 1.]

If a partnership which is a party to a Board proceeding elects to represent itself, the partnership may act through an individual who is a partner. If a party electing to represent itself is a corporation or an association, the party may act through any individual who is (1) an officer of the party and who is (2) in fact authorized to represent it. [ Note 2.]

However, because the governing practices and procedures in proceedings before the Board are quite technical and highly specialized, it is strongly recommended that an attorney familiar with trademark law represent a party.

NOTES:

 1.   See 37 C.F.R. § 11.14(e).

 2.   37 C.F.R. § 11.14(e).

114.02    Selection of Attorney

The Board cannot aid a party in the selection of an attorney, nor does the Office maintain a register or list of trademark attorneys. [ Note 1.]

NOTES:

 1.   37 C.F.R. § 2.11.

114.03    Representation by Attorney

The term "attorney" is defined in 37 C.F.R. § 11.1  as "an individual who is a member in good standing of the highest court of any State, including an individual who is in good standing of the highest court of one State and not under an order of any court or Federal agency suspending, enjoining, restraining, disbarring or otherwise restricting the attorney from practice before the bar of another State or Federal agency." An attorney is eligible to represent others before the Office in trademark matters, including proceedings before the Board, and in other non-patent matters. [ Note 1.] Such an attorney is not required to apply to the Office for registration or recognition to practice before the Office in trademark and other non-patent matters. Please Note: Practice before the Board constitutes practice before the Office, subjecting any such attorney to the USPTO RULES OF PROFESSIONAL CONDUCT. [ Note 2.] Attorneys practicing before the Board are encouraged to familiarize themselves with the provisions of Part 11 of 37 C.F.R..

An attorney, as defined in 37 C.F.R. § 11.1, will be accepted as a representative of a party in a proceeding before the Board if the attorney (1) signs a document that is filed with the Office on behalf of the party and satisfactorily identifies himself or herself as an attorney, [ Note 3.] (2) appears in person, or (3) files a written power of attorney signed by the party the attorney represents. [ Note 4.]

When representation has been established by the filing of a document a new notice of appearance is sufficient to change the attorney of record. However, if representation has been established by the filing of a power of attorney, and thereafter another attorney or other authorized representative appears on behalf of the party, a new power of attorney is required to change the attorney of record. See TBMP § 116 (Termination of Representation), TBMP § 513 (Motion to Withdraw as Representative).

When an attorney, as defined in 37 C.F.R. § 11.1, acting in a representative capacity signs a document or appears in person in a proceeding before the Board, his or her personal signature or appearance constitutes, inter alia, a representation to the Office that, under the provisions of 37 C.F.R. § 11.14  (which specifies the types of individuals who may practice before the Office in trademark and other non-patent matters) and the laws of the jurisdiction where the attorney is licensed to practice that he or she is authorized to represent the particular party in whose behalf he or she acts. If there is some question as to whether an individual who makes such an appearance is authorized to act in a representative capacity, further proof of his or her authority may be required. [ Note 5.]

If a formal power of attorney is filed in a proceeding before the Board, it should state the name and address of the individual or individuals to whom the power is granted, identify the party granting the power, indicate the power being granted (e.g., "to represent Opposer in this proceeding, with full power of substitution and revocation, and to transact all business in the United States Patent and Trademark Office in connection therewith"), and be signed by the party granting the power. The Office requires that a power of attorney specify the names of one or more individuals to whom the power is granted. A power that specifies both the names of one or more individuals and the name of a firm will be regarded as a power to the individual(s). [ Note 6.] A power that specifies only the name of a firm will be regarded not as a power to the firm but rather simply as a designation of an address to which correspondence is to be sent. [ Note 7.] See TBMP § 117 (Correspondence – With Whom Held).

NOTES:

 1.   See 37 C.F.R. § 11.1, 37 C.F.R. § 11.14(a); Weiffenbach v. Klempay, 29 USPQ2d 2027, 2030 (Dep’t of Comm. 1993) (only individuals who are not attorneys and were recognized to practice before the Office in trademark cases prior to January 1, 1957, and attorneys may represent clients before the Office in trademark cases).

 2.   See 37 C.F.R. § 11.5(b)  and 37 C.F.R. § 11.19(a).

 3.   See Jacques Moret Inc. v. Speedo Holdings B.V., 102 USPQ2d 1212, 1216 (TTAB 2012) (law firm that filed motion to dismiss recognized as counsel of record for respondent); Djeredjian v. Kashi Co., 21 USPQ2d 1613, 1613 n.1 (TTAB 1991) (appearance made by filing motion on behalf of respondent).

 4.   37 C.F.R. § 2.17(c).

 5.   37 C.F.R. § 2.17(a).

 6.   HKG Industries Inc. v. Perma-Pipe Inc., 49 USPQ2d 1156, 1158 (TTAB 1998) (other named attorneys appointed by petitioner were authorized to represent petitioner and assume responsibility for the case).

 7.   TMEP § 605.01 (Requirements for Power of Attorney).

114.04    Representation by Non-lawyer (i.e., "Other Authorized Representative" )

The only non-lawyers permitted to represent others in trademark cases before the Office, including proceedings before the Board, are those who were recognized to practice before the Office in trademark cases prior to January 1, 1957. [ Note 1.] Before such a representative may take any action of any kind in a proceeding before the Board, however, the representative must file in the proceeding a written authorization from the party that he or she represents, or from another person entitled to prosecute the case (e.g., the party’s appointed attorney of record). [ Note 2.]

NOTES:

 1.   37 C.F.R. § 11.14 (b); Weiffenbach v. Klempay, 29 USPQ2d 2027, 2031 (Dep’t of Comm. 1993) (patent agent, admitted to practice before the Office in patent cases after January 1, 1957, was excluded from practice before the Office); Weiffenbach v. Frank, 18 USPQ2d 1397, 1400 (consent order) (Comm’r 1991) (patent agent who engaged in unauthorized representation in trademark matters reprimanded and barred from such practice). But see 37 C.F.R. § 11.18(c)  and 37 C.F.R. § 11.14(e).

 2.   37 C.F.R. § 2.17(f).

114.05    Representation by Foreign Attorney or Agent

37 C.F.R. §11.14(c)  Foreigners. Any foreign attorney or agent not a resident of the United States who shall file a written application for reciprocal recognition under paragraph (f) of this section and prove to the satisfaction of the OED Director that he or she is registered or in good standing before the patent or trademark office of the country in which he or she resides and practices and is possessed of good moral character and reputation, may be recognized for the limited purpose of representing parties located in such country before the Office in the presentation and prosecution of trademark matters, provided: the patent or trademark office of such country allows substantially reciprocal privileges to those permitted to practice in trademark matters before the Office. Recognition under this paragraph shall continue only during the period that the conditions specified in this paragraph obtain.

37 C.F.R. § 11.14(f)  Application for Reciprocal Recognition. An individual seeking reciprocal recognition under paragraph (c) of this section, in addition to providing evidence satisfying the provisions of paragraph (c) of this section, shall apply in writing to the OED Director for reciprocal recognition, and shall pay the application fee required by § 1.21(a)(1)(i) of this subchapter.

Under certain conditions, specified in 37 C.F.R. § 11.14(c), a foreign attorney or agent who is not a resident of the United States may be recognized for the limited purpose of representing, in trademark cases before the Office, parties located in the country in which the attorney or agent resides or practices. An individual seeking recognition to practice under 37 C.F.R. § 11.14(c)  must apply in writing to the Director of the Office of Enrollment and Discipline, and pay the appropriate fee. [ Note 1.] For information on how to meet the specified conditions, contact the USPTO’s Office of Enrollment and Discipline by telephone at (571) 272-4097 or by mail at Mail Stop OED, U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450. When a foreign attorney is recognized to practice before the Office, the parties are reminded that the certificate of mailing procedure is not available for use on mail that originates in a foreign country.

Currently, only Canada provides substantial reciprocal privileges to attorneys in the United States to practice before its trademark office. Therefore, the USPTO’s Office of Enrollment and Discipline recognizes Canada as qualifying for the limited exception provided in 37 C.F.R. § 11.14(c), permitting the Canadian attorney to represent a Canadian party before the Office. The Office of Enrollment and Discipline maintains a list of attorneys who are registered or in good standing with the Canadian Intellectual Property Office. [ Note 2.]

However, the certificate of mailing procedure is not available for use on mail that originates in Canada, as it is not deposited in the United States mail as required by the certification.

NOTES:

 1.   37 C.F.R. § 11.14(f).

 2.   See TMEP § 602.03 (Foreign Attorneys and Agents).

114.06    Individual Not Entitled to Represent Others

An individual who is not entitled, under 37 C.F.R. § 11.14(a), 37 C.F.R. § 11.14(b), 37 C.F.R. § 11.11(c), or 37 C.F.R. § 11.14(e)  to practice before the Office in trademark cases, will not be permitted to represent a party in a proceeding before the Board. See TBMP § 114.03-TBMP § 114.05 regarding entitlement to practice before the USPTO in trademark matters.

If it comes to the attention of the Board that an individual who is not entitled, under 37 C.F.R. § 11.11(a), 37 C.F.R. § 11.14(b), 37 C.F.R. § 11.14(c)  or 37 C.F.R. § 11.14(d), to practice before the Office in trademark cases, is attempting to represent a client in a Board proceeding, the Board will notify the individual that he or she is not entitled to do so. If the individual signs and files a submission on behalf of a client to a Board proceeding, the submission will not be considered unless a new copy thereof, signed by the party or by an authorized representative who is entitled to practice before the Office in trademark cases, is filed. If an individual not authorized to practice before the Office signs an extension of time to oppose and/or a notice of opposition or a petition for cancellation and it comes to the Board’s attention, the Board will notify the individual that he or she is not entitled to do so and allow the party time in which to cure the defect. [ Note 1.]

However, no Board correspondence intended for the party will be sent to that individual. Rather, the Board will send such correspondence to the party itself, or to the party’s attorney or other authorized representative entitled to practice before the Office in trademark cases. [ Note 2.] See TBMP § 117 (Correspondence – With Whom Held).

NOTES:

 1.   Birlinn Ltd. v. Stewart, 111 USPQ2d 1905, 1908 (TTAB 2014) (Board applies opportunity to cure provision in 2.119(e) to improperly signed papers, which defines the time period for cure as "within the time limit set in the notification of this defect by the Office"); 37 C.F.R. § 2.119(e).

 2.   37 C.F.R. § 2.18(d).

114.07    Designation of Domestic Representative

37 C.F.R. § 2.24  Designation of representative by foreign applicant.

  • (a)
    • (1) If an applicant is not domiciled in the United States, the applicant may designate a domestic representative (i.e., a person residing in the United States on whom notices or process in proceedings affecting the mark may be served) by either:
      • (i) Setting forth the name and address of the domestic representative in the initial application; or
      • (ii) Filing a separate designation setting forth the name and address of the domestic representative, signed by the applicant, someone with legal authority to bind the applicant (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter.
    • (2) If the applicant does not file a document designating the name and address of a person residing in the United States on whom notices or process in proceedings affecting the mark may be served, or if the last person designated cannot be found at the address given in the designation, then notices or process in proceedings affecting the mark may be served on the Director.
    • (3) The mere designation of a domestic representative does not authorize the person designated to represent the applicant unless qualified under § 11.14 of this chapter.

37 C.F.R. § 2.119(d)  If a party to an inter partes proceeding is not domiciled in the United States and is not represented by an attorney or other authorized representative located in the United States, none of the parties to the proceeding is eligible to use the service option under paragraph (b)(4) of this section. The party not domiciled in the United States may designate by submission filed in the Office the name and address of a person resident in the United States on whom may be served notices or process in the proceeding. If the party has appointed a domestic representative, official communications of the Office will be addressed to the domestic representative unless the proceeding is being prosecuted by an attorney at law or other qualified person duly authorized under § 11.14(c) of this chapter. If the party has not appointed a domestic representative and the proceeding is not being prosecuted by an attorney at law or other qualified person, the Office will send correspondence directly to the party, unless the party designates in writing another address to which correspondence is to be sent. The mere designation of a domestic representative does not authorize the person designated to prosecute the proceeding unless qualified under § 11.14(a), or qualified under § 11.14(b) and authorized under § 2.17(f).

Shown below is a suggested format for the designation of a domestic representative (the suggested format should appear below information identifying the proceeding in connection with which it is filed):

Designation of Domestic Representative

(Name of Domestic Representative), whose postal

address is ______________________________

______________________________________,

is hereby designated (Name of Designating Party’s)

representative upon whom notice or process in this

proceeding may be served.

__________________________

(Signature of Designating Party)

__________________________

(Identification of Person Signing)

__________________________

(Date of Signature)

Once a party has appointed a domestic representative, all correspondence in the case will be sent to the domestic representative, unless the party is represented by an attorney or other authorized representative located in the United States, or by a foreign attorney or agent duly qualified under.37 C.F.R. § 11.14(c). See TBMP § 117.06 (Correspondence with Foreign Party).

The designation of a domestic representative is not the equivalent of a power of attorney. [ Note 1.] In other words, a domestic representative cannot represent a party in Board proceedings. The appointment of a domestic representative serves a different purpose; that is to provide a contact and address for service of process. [ Note 2.]

The provision of 37 C.F.R. § 2.24(a)(2) allowing for service of notice or process on the Director is directed to applications during ex parte prosecution, not to service of submissions in Board inter partes proceedings. [ Note 3.]

If the party has not appointed a domestic representative and the proceeding is not being prosecuted by an attorney at law or other qualified person, the Office will send correspondence directly to the party, unless the party designates in writing another address to which correspondence is to be sent. [ Note 4.]

NOTES:

 1.   See TMEP § 610; Jacques Moret Inc. v. Speedo Holdings B.V., 102 USPQ2d 1212, 1214 n.4 (TTAB 2012) (discussing difference between an attorney designated solely as domestic representative and an attorney appointed as counsel of record).

 2.   See TMEP § 610.

 3.   Jacques Moret Inc. v. Speedo Holdings B.V., 102 USPQ2d 1212, 1216 (TTAB 2012) (rule governs service of notices or process in applications during ex parte prosecution, not service of complaints and other papers in cancellation proceedings).

 4.   37 C.F.R. § 2.119(d).

114.08    Adverse Parties Represented by Same Practitioner

37 C.F.R. § 11.107 Conflict of interest; Current clients.

  • (a) Except as provided in paragraph (b) of this section, a practitioner shall not represent a client if the representation involves a concurrent conflict of interest. A concurrent conflict of interest exists if:
    • (1) The representation of one client will be directly adverse to another client; or
    • (2) There is a significant risk that the representation of one or more clients will be materially limited by the practitioner’s responsibilities to another client, a former client or a third person or by a personal interest of the practitioner.
  • (b) Notwithstanding the existence of a concurrent conflict of interest under paragraph (a) of this section, a practitioner may represent a client if:
    • (1) The practitioner reasonably believes that the practitioner will be able to provide competent and diligent representation to each affected client;
    • (2) The representation is not prohibited by law;
    • (3) The representation does not involve the assertion of a claim by one client against another client represented by the practitioner in the same litigation or other proceeding before a tribunal; and
    • (4) Each affected client gives informed consent, confirmed in writing.

As a general rule, a practitioner (i.e., attorney or other authorized representative) may not represent parties with conflicting interests in proceedings before the Office. That is, a practitioner normally may not accept proffered employment, or continue multiple employment, if the exercise of the practitioner’s independent professional judgment on behalf of one client is likely to be adversely affected by the practitioner’s representation of another client, or if the employment would be likely to involve the practitioner in representing differing interests. [ Note 1.]

However, a practitioner may represent multiple clients under the particular circumstances specified in 37 C.F.R. § 11.107(b).

If it comes to the attention of the Board that two or more parties whose interests are in conflict appear to be represented by the same practitioner, or by different practitioners within the same firm, each of the parties and their practitioner(s) will be notified by the Board, in writing, of the possible conflict of interest.

It is the responsibility of a practitioner to ensure that there is no violation of the rules cited above. If an impermissible conflict exists, a practitioner should take appropriate action immediately. A practitioner who fails to do so may be subject to disciplinary action.

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 CODE OF PROFESSIONAL CONDUCT that was in effect at that time. These earlier cases continue to be instructive.

NOTES:

 1.   37 C.F.R. § 11.107; Sunkist Growers, Inc. v. Benjamin Ansehl Co., 221 USPQ 1077, 1082 (Comm’r 1984) (attorney was disqualified, but law firm was not); Plus Products v. Con-Stan Industries, Inc., 221 USPQ 1071, 1075 (Comm’r 1984) (attorney representing respondent in an opposition disqualified in view of his previous representation of petitioner in USPTO proceedings and in infringement litigation concerning the same trademark issues). But see Gilman Corp. v. Gilman Brothers Co., 20 USPQ2d 1238, 1240 (Comm’r 1991) (petitioner’s former attorney in patent matter not disqualified from representing respondent in trademark cancellation proceeding; no "substantial relationship" between prior and present matters); Unico American Corp. v. Unico Banking Group, 223 USPQ 684, 685 (Comm’r 1984) (opposer has no right to seek disqualification of applicant’s counsel based on any possible conflict between applicant and third parties).