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).
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).
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).