114    Representation of a Party

37 C.F.R. § 2.11  Requirement for representation.

  • (a) An applicant, registrant, or party to a proceeding whose domicile is not located within the United States or its territories must be represented by an attorney, as defined in § 11.1 of this chapter, who is qualified to practice under § 11.14 of this chapter. The Office cannot aid in the selection of an attorney.
  • (b) The Office may require an applicant, registrant, or party to a proceeding to furnish such information or declarations as may be reasonably necessary to the proper determination of whether the applicant, registrant, or party is subject to the requirement in paragraph (a) of this section.
  • (c) An applicant, registrant, or party to a proceeding may be required to state whether assistance within the scope of § 11.5(b)(2) of this chapter was received in a trademark matter before the Office and, if so, to disclose the name(s) of the person(s) providing such assistance and whether any compensation was given or charged.
  • (d) Failure to respond to requirements issued pursuant to paragraphs (a) through (c) of this section is governed by §§ 2.65, 2.93 and 2.163 and § 7.39 of this chapter, as appropriate.
  • (e) Providing false, fictitious, or fraudulent information in connection with the requirements of paragraphs (a) through (c) of this section shall be deemed submitting a paper for an improper purpose, in violation of § 11.18(b) of this chapter, and subject to the sanctions and actions provided in § 11.18(c).
  • (f) Notwithstanding §§ 2.63(b)(2)(ii) and 2.93(c)(1), if an Office action maintains only requirements under paragraphs (a), (b), and/or (c) of this section, or only requirements under paragraphs (a), (b), and/or (c) of this section and the requirement for a processing fee under § 2.22(c), the requirements may be reviewed only by filing a petition to the Director under § 2.146.

37 C.F.R. § 2.17  Recognition for representation.

  • (a) Authority to practice in trademark cases. Only an individual qualified to practice under § 11.14 of this chapter may represent an applicant, registrant, or party to a proceeding before the Office in a trademark case.
  • (b)
    • (1) Recognition of practitioner as representative. To be recognized as a representative in a trademark case, a practitioner qualified under § 11.14 of this chapter may:
      • (i) File a power of attorney that meets the requirements of paragraph (c) of this section;
      • (ii) Sign a document on behalf of an applicant, registrant, or party to a proceeding who is not already represented by a practitioner qualified under § 11.14 of this chapter from a different firm; or
      • (iii) Appear by being identified as the representative in a document submitted to the Office on behalf of an applicant, registrant, or party to a proceeding who is not already represented by a practitioner qualified under § 11.14 of this chapter from a different firm.
    • (2) Authorization to represent. When a practitioner qualified under § 11.14 of this chapter signs a document or appears pursuant to paragraph (b) of this section, his or her signature or appearance shall constitute a representation to the Office that he or she is authorized to represent the person or entity on whose behalf he or she acts. The Office may require further proof of authority to act in a representative capacity.
    • (3) Bar information required. A practitioner qualified under § 11.14(a) of this chapter will be required to provide the name of a State, as defined in § 11.1 of this chapter, in which he or she is an active member in good standing, the date of admission to the bar of the named State, and the bar license number, if one is issued by the named State. The practitioner may be required to provide evidence that he or she is an active member in good standing of the bar of the specified State.
    • (4) False, fraudulent, or mistaken designation. Regardless of paragraph (b)(1) of this section, where a practitioner has been falsely, fraudulently, or mistakenly designated as a representative for an applicant, registrant, or party to a proceeding without the practitioner’s prior authorization or knowledge, such a designation shall have no effect and the practitioner is not recognized.
  • (c) Requirements for power of attorney. A power of attorney must:
    • (1) Designate by name at least one practitioner meeting the requirements of § 11.14 of this chapter; and
    • (2) Be signed by the individual applicant, registrant, or party to a proceeding pending before the Office, 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. Once the applicant, registrant, or party has designated a practitioner(s) qualified to practice under § 11.14 of this chapter, that practitioner may sign an associate power of attorney appointing another qualified practitioner(s) as an additional person(s) authorized to represent the applicant, registrant, or party. If the applicant, registrant, or party revokes the original power of attorney (§ 2.19(a)), the revocation discharges any associate power signed by the practitioner whose power has been revoked. If the practitioner who signed an associate power withdraws (§ 2.19(b)), the withdrawal discharges any associate power signed by the withdrawing practitioner upon acceptance of the request for withdrawal by the Office.
  • (d) Power of attorney relating to multiple applications or registrations. The owner of an application or registration may appoint a practitioner(s) qualified to practice under § 11.14 of this chapter to represent the owner for all existing applications or registrations that have the identical owner name.
  • (e) Foreign attorneys and agents. Recognition to practice before the Office in trademark matters is governed by § 11.14(c) of this chapter.
  • (f) Non-lawyers. A non-lawyer may not act as a representative except in the limited circumstances set forth in § 11.14(b) of this chapter. Before any non-lawyer who meets the requirements of § 11.14(b) of this chapter may take action of any kind with respect to an application, registration or proceeding, a written authorization must be filed, 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).
  • (g) Duration of recognition.
    • (1) The Office considers recognition as to a pending application to end when the mark registers, when ownership changes, or when the application is abandoned.
    • (2) The Office considers recognition obtained after registration to end when the mark is cancelled or expired, or when ownership changes. If a practitioner was recognized as the representative in connection with an affidavit under section 8, 12(c), 15, or 71 of the Act, renewal application under section 9 of the Act, or request for amendment or correction under section 7 of the Act, the recognition is deemed to end upon acceptance or final rejection of the filing.

37 C.F.R. § 11.1  Definitions.

* * * *

Unless otherwise clear from the context, the following definitions apply to this part:

* * * *

Attorney or lawyer means an individual who is an active member in good standing of the bar of the highest court of any State. A non-lawyer means a person who is not an attorney or lawyer.

* * * *

State means any of the 50 states of the United States of America, the District of Columbia, and any Commonwealth or territory of the United States of America.

* * * *

United States means the United States of America, and the territories and possessions the United States of America.

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.
    • (1) 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 a registered and active member in good standing before the trademark office of the country in which he or she resides and practices and possesses 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 trademark office of such country and the USPTO have reached an official understanding to allow substantially reciprocal privileges to those permitted to practice in trademark matters before the Office. Recognition under this paragraph (c) shall continue only during the period that the conditions specified in this (c) paragraph obtain.
    • (2) In any trademark matter where a foreign attorney or agent authorized under paragraph (c)(1) of this section is representing an applicant, registrant, or party to a proceeding, an attorney, as defined in § 11.1 and qualified to practice under paragraph (a) of this section, must also be appointed pursuant to § 2.17(b) and (c) of this chapter as the representative who will file documents with the Office and with whom the Office will correspond.
  • (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) Appearance. 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. Except as specified in § 2.11(a) of this chapter, any individual may appear in a trademark or other non-patent matter in his or her own behalf or on behalf of:
    • (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;
  • (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, if domiciled in the United States or its territories, may represent itself in an ex parte or inter partes proceeding before the Board, or the party may be represented by an attorney who is licensed to practice law in the United States. [ 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.] Joint owners who elect to represent themselves must act together. [ Note 3.]

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 knowledgeable about trademark law represent a party. [ Note 4.]

Please Note: Effective August 3, 2019, under 37 C.F.R. § 2.11, a foreign-domiciled party to a Board proceeding must be represented by an attorney who is an active member in good standing of the bar of the highest court of a state in the United States (including the District of Columbia or any Commonwealth or territory of the United States). [ Note 5.] Domicile for purposes of 37 C.F.R. § 2.11  means "permanent legal place of residence" of a natural person or the "principal place of business" of a juristic entity. [ Note 6.] A foreign attorney may only appear on a foreign domiciled party’s behalf if the attorney has been reciprocally recognized by the USPTO’s Office of Enrollment and Discipline. [ Note 7.] However, even if a foreign applicant has appointed a reciprocally recognized foreign attorney, a qualified attorney who is licensed to practice law in the United States still must be appointed for filing papers and corresponding with the Office. [ Note 8.] Generally, if a foreign-domiciled party appears and is not represented by U.S. counsel, the Board will suspend the proceedings and inform the party of the time frame within which it must appoint U.S. counsel to represent it before the Board. [ Note 9.]

NOTES:

 1.   See 37 C.F.R. § 2.11; 37 C.F.R. § 11.14(e).

 2.   See 37 C.F.R. § 11.14(e).

 3.   TMEP § 803.03(d). Cf. 37 C.F.R. § 2.193(e)(2)(ii) ("in the case of joint owners who are not represented by a qualified practitioner, all must sign.").

 4.   Hole In 1 Drinks, Inc. v. Lajtay, 2020 USPQ2d 10020, at *1 (TTAB 2020) (quoting TBMP Section 114.01, and noting that compliance with the Trademark Rules of Practice, and where applicable, the Federal Rules of Civil Procedure and the Federal Rules of Evidence, is required of all parties even those who assume the responsibility and risk of representing themselves).

 5.   37 C.F.R. § 2.11, TMEP § 601. See also REQUIREMENT OF U.S. LICENSED ATTORNEY FOR FOREIGN TRADEMARK APPLICANTS AND REGISTRANTS, 84 Fed. Reg. 31498, 31498-31501 (July 2, 2019).

 6.   37 C.F.R. § 2.2(o)  TMEP § 601.01.

 7.   37 C.F.R. § 11.14(c)(1). See also TMEP § 602.03.

 8.   37 C.F.R. § 11.14(c)(2); 37 C.F.R. § 2.17(b)  and 37 C.F.R. § 2.17(c). See REQUIREMENT OF U.S. LICENSED ATTORNEY FOR FOREIGN TRADEMARK APPLICANTS AND REGISTRANTS, 84 Fed. Reg. 31498, 31501 (July 2, 2019); Cloudworks Consulting Services Inc. v. Ongoing Operations, LLC, 2020 USPQ2d 10019, at *1 (TTAB 2020) ("A reciprocally recognized attorney or agent may only appear as an additionally appointed practitioner. A qualified attorney licensed to practice law in the United States, or in any Commonwealth or territory of the United States, must still be appointed as the party’s representative who will file documents with the Board and with whom the Board will correspond."). See also TMEP § 602.03.

 9.   See Cloudworks Consulting Services Inc. v. Ongoing Operations, LLC, 2020 USPQ2d 10019, at *1 (TTAB 2020) (Board suspended proceedings pending appointment of United States counsel). See also Trademark Examination Guide 4-19 (Revised) at 8 (September 2019), available at www.uspto.gov.

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(a).

114.03    Representation by Attorney

The term "attorney" (or "lawyer") is defined in 37 C.F.R. § 11.1  as "an individual who is an active member in good standing of the bar of the highest court of any State." 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. An attorney appearing in a Board proceeding will be required to provide his or her bar membership information to show that he or she is an active member in good standing. [ Note 2.]

Please Note: Practice before the Board constitutes practice before the Office, subjecting any such attorney to the USPTO RULES OF PROFESSIONAL CONDUCT. [ Note 3.] 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 or lawyer, or is identified as the representative in a document submitted to the Office on behalf of a party to a proceeding, [ Note 4.] (2) appears in person, or (3) files a written power of attorney signed by the party the attorney represents. [ Note 5.]

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 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 6.]

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 7.] 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 8.] See TBMP § 117 (Correspondence – With Whom Held).

Please Note: Effective August 3, 2019, the Office amended 37 C.F.R. § 2.11(a)  to require foreign-domiciled applicants, registrants, or parties to a trademark proceeding to be represented by an attorney who is licensed to practice law in the United States. The term "domicile" means the "permanent legal place of residence" of a natural person or the "principal place of business" of a juristic entity. 37 C.F.R. § 2.2(o).

For representation by a foreign attorney, or agent, including a Canadian trademark attorney or agent, seeTBMP § 114.05.

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.   37 C.F.R. § 2.17(b)(3).

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

 4.   37 C.F.R. § 2.17(b)(1)(ii)  and 37 C.F.R. § 2 .17(b)(1)(iii). 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).

 5.   37 C.F.R. § 2.17(b)(1)(i)  and 37 C.F.R. § 2.17(c).

 6.   37 C.F.R. § 2.17(b)(2).

 7.   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).

 8.   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 trademark 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. § 11.14(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

  • (c) 37 C.F.R. § 11.14(c)  Foreigners
    • (1) 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 a registered and active member in good standing before the trademark office of the country in which he or she resides and practices and possesses 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 trademark office of such country and the USPTO have reached an official understanding to allow substantially reciprocal privileges to those permitted to practice in trademark matters before the Office. Recognition under this paragraph (c) shall continue only during the period that the conditions specified in this paragraph (c) obtain.
    • (2) In any trademark matter where a foreign attorney or agent authorized under paragraph (c)(1) of this section is representing an applicant, registrant, or party to a proceeding, an attorney, as defined in § 11.1 and qualified to practice under paragraph (a) of this section, must also be appointed pursuant to § 2.17(b) and (c) of this chapter as the representative who will file documents with the Office and with whom the Office will correspond.

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.]

Currently, the USPTO’s Office of Enrollment and Discipline recognizes only Canada as qualifying for the limited exception provided in 37 C.F.R. § 11.14(c), permitting Canadian trademark attorneys and agents to represent a Canadian party before the Office as additionally appointed practitioners, so long as they remain registered and in good standing in Canada and are formally reciprocally recognized by the USPTO's Office of Enrollment and Discipline. 37 C.F.R. § 11.14(c)(2). [ Note 2.]

Please Note: While a reciprocally recognized Canadian trademark attorney or agent may appear as an additionally appointed practitioner for a Canadian party, [ Note 3.], that party is also required to appoint a U.S.-licensed attorney, as defined in 37 C.F.R. § 11.1  and qualified to practice under 37 C.F.R. § 11.14(a), as the representative who will file documents with the Board and with whom the Board will correspond. [ Note 4.] As an additionally appointed practitioner, the Canadian trademark attorney or agent remains authorized to prepare and sign Board filings and to communicate with Board personnel by telephone or email. [ Note 5.]

The Office of Enrollment and Discipline maintains a list of trademark attorneys and agents who are registered or in good standing with the Canadian Intellectual Property Office. [ Note 6.]

Canadian patent agents are no longer authorized to practice before the USPTO in trademark matters. [ Note 7.] However, for inter partes matters and ex parte appeals pending before August 3, 2019, currently reciprocally recognized Canadian patent attorneys and agents may complete their representation on behalf of a party, but may not handle new trademark matters. [ Note 8.]

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.   37 C.F.R. § 11.14(c)(1). See REQUIREMENT OF U.S. LICENSED ATTORNEY FOR FOREIGN TRADEMARK APPLICANTS AND REGISTRANTS, 84 Fed. Reg. 31498, 31501 (July 2, 2019) ("Recognized Canadian trademark attorneys and agents continue to be authorized to represent Canadian parties in U.S. trademark matters."); Cloudworks Consulting Services Inc. v. Ongoing Operations, LLC, 2020 USPQ2d 10019, at *1 (TTAB 2020) ("A reciprocally recognized attorney or agent may only appear as an additionally appointed practitioner.") (emphasis original).

 3.   37 C.F.R. § 2.11(a); 37 C.F.R. § 11.14(c)(1); 37 C.F.R. § 11.14(c)(2). See Cloudworks Consulting Services Inc. v. Ongoing Operations, LLC, 2020 USPQ2d 10019, at *1 (TTAB 2020).

 4.   37 C.F.R. § 11.14(c)(2). See REQUIREMENT OF U.S. LICENSED ATTORNEY FOR FOREIGN TRADEMARK APPLICANTS AND REGISTRANTS, 84 Fed. Reg. 31498, 31501 (July 2, 2019); Cloudworks Consulting Services Inc. v. Ongoing Operations, LLC, 2020 USPQ2d 10019, at *1 (TTAB 2020).

 5.   See Cloudworks Consulting Services Inc. v. Ongoing Operations, LLC, 2020 USPQ2d 10019, at *1 n.5 (TTAB 2020).

 6.   See TMEP § 602.03 (Foreign Attorneys and Agents); REQUIREMENT OF U.S. LICENSED ATTORNEY FOR FOREIGN TRADEMARK APPLICANTS AND REGISTRANTS, 84 Fed. Reg. 31498, 31501 (July 2, 2019) ("Currently, only Canadian attorneys and agents [who are registered, active, and in good standing] are reciprocally recognized under § 11.14(c)."); Cloudworks Consulting Services Inc. v. Ongoing Operations, LLC, 2020 USPQ2d 10019, at *1 n.4 (TTAB 2020) ("Currently, only Canadian attorneys and agents are reciprocally recognized under this rule and, in accordance therewith, any representation must be limited to parties located in Canada.").

 7.   37 C.F.R. § 11.14(c)(1). See REQUIREMENT OF U.S. LICENSED ATTORNEY FOR FOREIGN TRADEMARK APPLICANTS AND REGISTRANTS, 84 Fed. Reg. 31498, 31501 (July 2, 2019) (amended rule 37 C.F.R. § 11.14(c)(1) "removes from the regulations … the authorization for reciprocally recognized Canadian patent agents to practice before the USPTO in trademark matters.").

 8.   REQUIREMENT OF U.S. LICENSED ATTORNEY FOR FOREIGN TRADEMARK APPLICANTS AND REGISTRANTS, 84 Fed. Reg. 31498, 31501 (July 2, 2019) (Canadian patent agents are authorized to practice in trademark matters pending before the Office prior to August 3, 2019, the effective date of 37 C.F.R. § 11.14(c)(1), as amended, where they are listed as the representative).

114.06    Individual Not Recognized to Represent Others

An individual who is not recognized, under 37 C.F.R. § 11.14(a), 37 C.F.R. § 11.14(b), 37 C.F.R. § 11.14(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 recognition of who may practice before the USPTO in trademark matters.

If it comes to the attention of the Board that an individual who is not recognized, under 37 C.F.R. § 11.14(a), 37 C.F.R. § 11.14(b), 37 C.F.R. § 11.14(c)  or 37 C.F.R. § 11.14(e), 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 to the party's domestic representative if appropriate. [ 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(a).

114.07    Designation of Domestic Representative

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

  • (a) An applicant or registrant that is not domiciled in the United States 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).
  • (b) The designation, or a request to change or revoke a designation, must set forth the name, email address, and postal address of the domestic representative and be signed pursuant to § 2.193(e)(8).
  • (c) The mere designation of a domestic representative does not authorize the person designated to represent the applicant or registrant.

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).

Generally, foreign-domiciled applicants and parties to a Board proceeding will not need to designate a domestic representative because such applicant and parties are required to be represented by an attorney who is licensed to practice law in the United States. Where records need to be updated during the pendency of a Board proceeding, shown below is a suggested format for the designation of a domestic representative:

Designation of Domestic Representative

(Name of Domestic Representative), whose postal

address is ______________________________

and whose email 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)

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.]

Effective August 3, 2019, all foreign-domiciled applicants, registrants, or parties to a Board proceeding must be represented by an attorney licensed to practice law in the United States. [ Note 3.] Even if a party has appointed a domestic representative, once a U.S. licensed attorney is appointed, the Board will send correspondence only to the appointed attorney.

If the foreign-domiciled party has not appointed a domestic representative and a U.S. licensed attorney has not yet been appointed to represent the party in the proceeding, the Board will send correspondence directly to the party at the address of record for the party, unless the party requests in writing to change its address. [ 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.   37 C.F.R. § 2.11.

 4.   37 C.F.R. § 2.119(d); 37 C.F.R. § 2.18(a)(1).

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).