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:
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).