602.01 Attorneys Licensed to Practice in the United States
An attorney who is an active member in good standing of the bar of the highest court of a U.S. state (which includes the District of Columbia and any U.S. Commonwealth or territory) may practice before the USPTO in trademark matters. 37 C.F.R. §§2.17(a),11.1 (see definitions of Attorney and State), 11.14(a). No application for recognition to practice before the USPTO in trademark matters is necessary. The USPTO does not give an examination for eligibility or maintain a register of U.S. attorneys entitled to practice in trademark cases. An attorney meeting the requirements of 37 C.F.R. §11.14 who (1) files a power of attorney pursuant to 37 C.F.R. §2.17(c), (2) is identified as a representative in a document submitted on behalf of an otherwise unrepresented applicant or registrant, or (3) signs a document on behalf of an applicant or registrant who is otherwise unrepresented will be recognized as the representative of the applicant or registrant. 37 C.F.R §2.17(b)(1). A telephone call from an attorney does not satisfy the "appearance" requirements of 37 C.F.R. §2.17(b).
Only individuals, not law firms, are entitled to be recognized to represent an applicant or registrant. See also 37 C.F.R §2.17(c)(1).
Attorneys who have not specifically been mentioned in a power of attorney generally may not communicate with the USPTO regarding specific application- or registration-related business, unless they are from the same firm as the recognized attorney. If an attorney from the same U.S. firm as the attorney of record claims to be authorized by the attorney of record to conduct business and approve amendments with respect to a specific application or registration, the USPTO will permit the attorney to conclude business, and will note this fact in any resulting examiner’s amendment, priority action, or Office action. See generally 37 C.F.R §2.18(b)(1).
602.01(a) Attorney Identification Information Required
37 C.F.R. §2.17 Recognition for representation.
(b)(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.
37 C.F.R. §2.22 Requirements for a TEAS Plus application.
(a)(20) A trademark/service mark application for registration on the Principal Register under section 1 and/or section 44 of the Act that meets the requirements for a filing date under §2.21 will be entitled to a reduced filing fee under 37 C.F.R §2.6(a)(1)(iv) if it includes: An applicant whose domicile is not located within the United States or its territories must designate an attorney as the applicant’s representative, pursuant to 37 C.F.R §2.11(a), and include the attorney’s name, postal address, email address, and bar information.
37 C.F.R. §2.32 Requirements for a complete trademark or service mark application.
(a)(4) The application must be in English and include the following: When the applicant is, or 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 attorney’s name, postal address, email address, and bar information.
If the applicant is represented by an attorney qualified under 37 C.F.R §11.14, or is required to appoint such an attorney due to its foreign domicile, the applicant must include the individual attorney’s name, postal address, email address, and bar information in a Section 1 or 44(a) application, or in a subsequent submission in a Section 66(a) application. 37 C.F.R §2.11(a), 37 C.F.R §2.22(a)(20), 37 C.F.R §2.32(a)(4).
The bar information for the attorney includes (1) the name of the U.S. state, Commonwealth, or territory, or the District of Columbia, in which he or she is an active member in good standing; (2) the date of his or her admission to the bar in the named U.S. state, Commonwealth, or territory, or District of Columbia; (3) the bar license number, if one is issued by the U.S. state, Commonwealth, or territory or the District of Columbia; and (4) a statement that he or she is an active member in good standing of the bar of the listed U.S. state, Commonwealth, or territory or District of Columbia.
This information must be provided for the attorney of record (i.e., the primary attorney). The attorney must provide the number used by the U.S. state, Commonwealth, or territory that licenses the attorney, which number may be called by different names, including a bar, membership, account, or identification number.
The majority of the TEAS forms include specific fields to enter attorney bar information for the attorney of record. If an applicant’s or registrant’s attorney’s bar information and/or the statement that the attorney is an active member in good standing of the referenced bar is omitted or incomplete, the examining attorney will issue an Office action requiring the attorney bar information and/or statement of active bar membership in good standing.
In cases where attorney bar information is required and all other outstanding issues may be resolved by examiner’s amendment, the examining attorney may email or call the attorney about the outstanding issues, obtain his or her bar information, and ask that he or she agree to a statement of good standing, if it is not already in the record. An associate attorney authorized to represent the applicant may also authorize an examiner’s amendment for the primary attorney or record’s bar information and a statement of good standing.
Attorney bar information entered in the bar information fields on the "Attorney Information" page of TEAS forms will be hidden from public view. If entered anywhere else in the TEAS forms, the attorney bar information will not be hidden. If the examining attorney obtains the bar information to enter it by examiner’s amendment, the amendment will not include the specific information but rather will indicate only that the bar information has been provided. If an applicant emails the attorney bar information to the USPTO, an examining attorney must follow the normal procedure for making relevant email communications part of the record and will not hide such information, unless the applicant’s attorney requests that it be hidden. See TMEP §709.04.
602.01(b) Invalid Attorney Identification Information
If a submission includes clearly invalid attorney identification information (e.g., John Doe, a series of question marks or letters/numerals, a single name, or the word "test"), the listed attorney does not appear to be a qualified U.S.-licensed attorney, or the listed attorney has not consented to represent the applicant, the examining attorney or post- registration specialist must issue an Office action notifying the applicant or registrant that the listed attorney does not appear to be a qualified practitioner. In such cases, correspondence must be sent directly to the applicant or registrant at the address specified in the initial application or post-registration maintenance document. An examining attorney or post-registration specialist may be instructed to remove the attorney identification information from the correspondence section of the Trademark database and enter the applicant’s or registrant’s address. In addition, for a foreign-domiciled applicant, any Office action issued must make requirements for appointment of a qualified U.S. attorney and domicile information, if applicable.
If the attorney identification information appears valid, but circumstances call into question the veracity of the information, the examining attorney or post-registration staff must (1) remove the attorney identification information from the correspondence section of the Trademark database and enter the applicant’s or registrant’s address, and (2) issue an Office action notifying the applicant or registrant that the listed attorney does not appear to be a qualified U.S. attorney or has not consented to represent the applicant or registrant. In addition, the Office action must include a requirement for the attorney’s identification information (including bar credentials) if appropriate, and, for a foreign-domiciled applicant, requirements for appointment of a qualified U.S. attorney and domicile information, if applicable.
See TMEP §601.01 regarding the requirement to provide the owner’s domicile and for foreign domiciliaries to appoint a qualified U.S. attorney to represent them at the USPTO.