601.02    Communications with Applicant or Registrant Who Is Represented by an Attorney

37 C.F.R. §2.18(a)(2) 

 If an attorney is recognized as a representative pursuant to § 2.17(b)(1), the Office will correspond only with that attorney. A request to change the correspondence address does not revoke a power of attorney. Except for service of a cancellation petition, the Office will not correspond directly with the applicant, registrant, or a party to a proceeding, or with another attorney from a different firm, unless:

  • (i) The applicant or registrant files a revocation of the power of attorney under § 2.19(a) and/or a new power of attorney that meets the requirements of § 2.17(c);
  • (ii) The attorney has been suspended or excluded from practicing in trademark matters before the USPTO; or
  • (iii) Recognition of the attorney has ended pursuant to § 2.17(g).

If an applicant or registrant is represented by a qualified U.S. attorney, the USPTO will conduct business only with that attorney, unless that representation is terminated, a new power of attorney is properly filed, or until recognition ends.  37 C.F.R. §2.18(a)(2).  See TMEP §604.04 regarding duration of recognition, §606 regarding revocation of an attorney, and §607 regarding withdrawal of an attorney. See also TMEP §602.01 regarding communicating with an attorney from the same U.S. law firm as the appointed U.S. attorney.

If the applicant or registrant contacts the USPTO regarding the application or registration, he or she will be advised that the USPTO will only conduct business with the qualified U.S. attorney.  USPTO employees may answer general questions about the application or registration record and the procedures for obtaining and maintaining a registration, and are encouraged to refer the applicant or registrant to publicly available information on the USPTO’s website.  See TMEP §1805 regarding general inquiries from the public.

The USPTO will not accept responses or amendments authorized or signed by the applicant or registrant if there is a qualified U.S. attorney of record See 37 C.F.R. §2.18(a)(2).  See TMEP §§611–611.06(h) regarding signatures on documents filed in the USPTO. See TMEP §707.01 and §708.02 regarding individuals who can authorize examiner’s amendments and priority actions.

An applicant or registrant may revoke the authority of a qualified U.S. attorney to represent the applicant or registrant, or the attorney could withdraw from representing the applicant or registrant. 37 C.F.R. §2.19(a)(1), (b). However, in these circumstances, an applicant or registrant whose domicile is located outside the United States or its territories is required to be represented, and must appoint a new qualified U.S. attorney as its representative, with whom the USPTO will correspond. 37 C.F.R. §2.11(a).

See TMEP §604.03 regarding changes of attorney and TBMP §§114–114.08 regarding representation of parties to proceedings before the Trademark Trial and Appeal Board.