604    Recognition as a Representative

604.01    Three Ways to Be Recognized as a Representative

37 C.F.R. §2.17(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.

To be recognized as a representative, a qualified U.S. attorney may:

  • File a power of attorney signed by the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership);
  • Sign a document on behalf of an applicant or registrant who is not already represented by a qualified practitioner from a different firm; or
  • Appear by being identified as a representative in a document submitted to the USPTO on behalf of an applicant or registrant who is not already represented by a qualified U.S. attorney from a different firm.

37 C.F.R. §2.17(b).  A foreign attorney or agent who has not been recognized by the OED Director pursuant to 37 C.F.R. §11.14(c)  may not be recognized as an additional representative to the applicant’s qualified U.S. attorney. See 37 C.F.R. §11.14(c).

Generally, as long as no other qualified U.S. attorney from a different firm has been previously appointed, it is not necessary for a qualified U.S. attorney to file a power of attorney or obtain special authorization in a trademark case.  A qualified U.S. attorney who signs a document or appears on behalf of an applicant or registrant will be recognized as the representative of the applicant or registrant. 37 C.F.R. §2.17(b)(2). For example, a qualified U.S. attorney will be recognized as the applicant’s representative if the attorney is identified as the attorney of record in the application when the application is signed by the applicant. See 37 C.F.R. §2.17(b)(2).

Neither a telephone call nor an email from a qualified U.S. attorney satisfies the "appearance" requirements of 37 C.F.R. §2.17(b)(1)(iii). However, after issuance of an Office action to a pro se applicant and prior to response, a qualified U.S. attorney may be recognized by the USPTO by submitting a signed document or being identified as the representative in a document submitted on behalf of an applicant or registrant who is not already represented by a qualified U.S. attorney. See 37 C.F.R. §2.17(b)(1)(ii) -(iii), (b)(2).

An individual not meeting the requirements of 37 C.F.R. §2.17(b)(1)  will not be recognized as a representative, and may not sign responses or authorize amendments to an application. See TMEP §611.03(b) regarding signature on such documents.

Once the USPTO has recognized a qualified U.S. attorney as the representative of an applicant or registrant, the USPTO will communicate and conduct business only with that attorney or with another qualified U.S. attorney from the same firm. See 37 C.F.R. §2.18(a)(2). The USPTO will not conduct business directly with the applicant or registrant, or with a qualified U.S. attorney from a different firm, unless the applicant or registrant files a new power of attorney and/or revokes the previous power, recognition of the attorney has been deemed to end pursuant to 37 C.F.R §2.17(g), or the attorney has withdrawn or been suspended or excluded from practice before the USPTO in trademark matters. 37 C.F.R. §2.18(a)(2), 11.15.  See TMEP §604.03 regarding duration of recognition, §605.03 regarding associate powers of attorney, §606 regarding revocation of power of attorney, and §607 regarding withdrawal of attorney of record.

See TMEP §§609.01 and 609.02–609.02(f) regarding changing the correspondence address, and TBMP §§114–114.08 regarding representation of parties to Board proceedings.

604.02    Attorney Bar Information Required

37 C.F.R. 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.

A qualified U.S. attorney will be required to provide his or her bar information to represent an applicant or registrant at the USPTO. 37 C.F.R. §2.17(b)(3).

See TMEP §602.01(a) for more information regarding attorney bar information in addition to other attorney identification information.

604.03    Duration of Recognition

37 C.F.R. §2.17(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, recognition is deemed to end upon acceptance or final rejection of the filing.

Pending Applications. For purposes of recognition as a representative, the USPTO considers recognition as a qualified U.S. attorney in a pending application to end when the mark is registered, when ownership changes, or when the application is abandoned.  37 C.F.R. §2.17(g)(1).

Post Registration. For purposes of recognition as a representative by the Post Registration Section of the Office, the USPTO considers recognition established in connection with an affidavit under 15 U.S.C. §1058, §1062(c), §1065, or §1141k  (affidavit under §8, §12(c), §15, or §71), a renewal application under 15 U.S.C. §1059  (§9 renewal application), or a request for amendment or correction under 15 U.S.C. §1057  (§7 request) to end upon acceptance or final rejection of the filing.  37 C.F.R. §2.17(g)(2).  

Due to the length of time that may elapse between the filing of these documents (which could be 10 years or more), the USPTO will recognize a qualified U.S. attorney who signs or is identified as the registrant's attorney in one of these documents even absent a new power of attorney and/or revocation of a previous power.

Example 1:  A qualified U.S. attorney (Attorney A) signs or is identified as the registrant’s attorney in an affidavit under §8, and the USPTO issues an Office action in connection with the affidavit.  If another qualified U.S. attorney from a different firm (Attorney B) wants to respond to the Office action, Attorney B must file a new power of attorney and/or revocation of the previous power, signed by the registrant or someone with legal authority to bind the registrant (e.g., a corporate officer or general partner of a partnership), before the USPTO will act on the response or correspond with Attorney B.

Example 2:  A qualified U.S. attorney (Attorney A) signs or is identified as the registrant’s attorney in an affidavit under §8, and the USPTO accepts the affidavit.  If another qualified U.S. attorney from a different firm (Attorney B) later files a §7 request, the USPTO will recognize and correspond with Attorney B regardless of whether a new power of attorney and/or revocation of the previous power is filed.

Example 3:  A qualified U.S. attorney (Attorney A) signs or is identified as the registrant’s attorney in an affidavit under §8, and the USPTO issues an Office action in connection with the affidavit.  If another qualified U.S. attorney from a different firm (Attorney B) wants to file a §7 request before the USPTO accepts or issues a final rejection of the §8 affidavit, Attorney B must file a new power of attorney and/or revocation of the previous power, signed by the registrant or someone with legal authority to bind the registrant (e.g., a corporate officer or general partner of a partnership), before the USPTO will act on the §7 request or correspond with Attorney B.

The USPTO also considers recognition of a qualified U.S. attorney to end when the registration is cancelled or expired, or when ownership changes.  37 C.F.R. §2.17(g)(2). See TMEP §605.04 regarding powers of attorney filed after registration.

Change of Ownership. For purposes of recognition as a representative, the USPTO considers recognition of an attorney in connection with an application or registration to end when ownership changes.  37 C.F.R. §2.17(g).  After a change in ownership has been recorded, if a new qualified U.S. attorney appears or signs a document on behalf of the new owner, the USPTO will communicate and conduct business with that attorney even absent a new power of attorney and/or revocation of the previous power. 37 C.F.R. §2.17(b)(1)(ii) -(iii). If the previously recognized U.S. attorney appears on behalf of the new owner (which might occur when the new owner is a related company), the USPTO will continue to conduct business and correspond with that attorney.  The previously recognized U.S. attorney does not have to file a new power of attorney and/or revocation of the previous power signed by the new owner.  See TMEP §609.02(f) regarding correspondence after recordation of a change of ownership.

Effect on Attorney and Correspondence Information in USPTO Records. In the situations discussed above, when the USPTO deems recognition of a representative has ended, the USPTO will not automatically change the attorney and correspondence address in the Trademark database, because it is possible that the previously recognized U.S. attorney still represents the applicant or registrant and wants to continue receiving correspondence.  The USPTO will continue to recognize the previously recognized U.S. attorney if he or she appears or signs a document on behalf of the applicant or registrant. 37 C.F.R. §2.17(b)(1)(ii)-(iii). However, if a new qualified U.S. attorney appears or signs a document, the USPTO will recognize the new attorney pursuant to 37 C.F.R. §2.17(b)(1)(ii)-(iii), and correspond with him or her without requiring a new power of attorney and/or revocation of the previous power.  See TMEP §§609.02–609.02(f) regarding changes of correspondence address.

Board Proceedings. See TBMP §§114–114.08 regarding representation of parties to Board proceedings, and TBMP §§117–117.02 regarding correspondence in Board proceedings.

604.04    Change of Attorney

Once the USPTO recognizes a qualified U.S. attorney as the representative of an applicant or registrant, a new qualified U.S. attorney from a different firm is not permitted to represent the applicant or registrant until:    

  • (1) the applicant or registrant revokes the previous power of attorney;
  • (2) the applicant or registrant submits a new power of attorney naming the new qualified U.S. attorney;
  • (3) recognition of the previously recognized U.S. attorney has been deemed to end pursuant to 37 C.F.R. §2.17(g); or
  • (4) the previously recognized U.S. attorney withdraws or has been suspended or excluded from practicing in trademark matters before the USPTO.

37 C.F.R. §2.18(a)(2), 11.15.  Until such action is taken, the new qualified U.S. attorney cannot sign responses to Office actions, authorize issuance of examiner’s amendments or priority actions, expressly abandon an application, authorize a change of correspondence address, or otherwise represent the applicant or registrant. See 37 C.F.R. §2.17(a).

If an applicant or registrant is already represented by a qualified U.S. attorney, and a new qualified U.S. attorney from a different firm wishes to take action with respect to the application or registration, the new attorney must file a revocation of the previous power of attorney and/or a new power of attorney naming the new qualified U.S. attorney, signed by the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership), before the USPTO will accept filings by or correspond with the new attorney. See 37 C.F.R. §2.18(a)(2).  The new attorney may not sign the revocation of the previous power.  See 37 C.F.R. §2.17(c)  and TMEP §605.01 regarding requirements for power of attorney, §606 regarding revocation of power of attorney, and §607 regarding withdrawal of attorney of record

Absent a revocation and/or new power, if the new qualified U.S. attorney signs a response, amendment, or request to change the correspondence address, the USPTO will treat this as a document filed by an improper party and follow the procedures in TMEP §§611.05–611.05(c).

See TMEP §604.03 regarding duration of recognition of an attorney or registrant.

See TBMP §§114–114.08  regarding representation of parties to Board proceedings, and TBMP §§117–117.02 regarding correspondence in Board proceedings.