607    Withdrawal of Attorney of Record

37 C.F.R. 2.19  Revocation or withdrawal of attorney.

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(b) Withdrawal of attorney. If the requirements of § 11.116 of this chapter are met, a practitioner authorized to represent an applicant, registrant, or party to a proceeding in a trademark case may withdraw upon application to and approval by the Director or, when applicable, upon motion granted by the Trademark Trial and Appeal Board. The practitioner should file the request to withdraw soon after the practitioner notifies the client of his/her intent to withdraw. The request must include the following:

  • (1) The application serial number, registration number, or proceeding number;
  • (2) A statement of the reason(s) for the request to withdraw; and
  • (3) Either
    • (i) A statement that the practitioner has given notice to the client that the practitioner is withdrawing from employment and will be filing the necessary documents with the Office; that the client was given notice of the withdrawal at least two months before the expiration of the response period, if applicable; that the practitioner has delivered to the client all documents and property in the practitioner’s file concerning the application, registration or proceeding to which the client is entitled; and that the practitioner has notified the client of any responses that may be due, and of the deadline for response; or
    • (ii) If more than one qualified practitioner is of record, a statement that representation by co counsel is ongoing.

37 C.F.R. 11.116  Declining or terminating representation.

(a) Except as stated in paragraph (c) of this section, a practitioner shall not represent a client, or where representation has commenced, shall withdraw from the representation of a client if:

  • (1) The representation will result in violation of the USPTO Rules of Professional Conduct or other law;
  • (2) The practitioner’s physical or mental condition materially impairs the practitioner’s ability to represent the client; or
  • (3) The practitioner is discharged.

(b) Except as stated in paragraph (c) of this section, a practitioner may withdraw from representing a client if:

  • (1) Withdrawal can be accomplished without material adverse effect on the interests of the client;
  • (2) The client persists in a course of action involving the practitioner’s services that the practitioner reasonably believes is criminal or fraudulent;
  • (3) The client has used the practitioner’s services to perpetrate a crime or fraud;
  • (4) A client insists upon taking action that the practitioner considers repugnant or with which the practitioner has a fundamental disagreement;
  • (5) The client fails substantially to fulfill an obligation to the practitioner regarding the practitioner’s services and has been given reasonable warning that the practitioner will withdraw unless the obligation is fulfilled;
  • (6) The representation will result in an unreasonable financial burden on the practitioner or has been rendered unreasonably difficult by the client; or
  • (7) Other good cause for withdrawal exists.

(c) A practitioner must comply with applicable law requiring notice to or permission of a tribunal when terminating a representation. When ordered to do so by a tribunal, a practitioner shall continue representation notwithstanding good cause for terminating the representation.

(d) Upon termination of representation, a practitioner shall take steps to the extent reasonably practicable to protect a client’s interests, such as giving reasonable notice to the client, allowing time for employment of other counsel, surrendering papers and property to which the client is entitled and refunding any advance payment of fee or expense that has not been earned or incurred. The practitioner may retain papers relating to the client to the extent permitted by other law.

An attorney may permissively withdraw from representation for reasons noted in 37 C.F.R. §11.116(b), such as where the client insists upon taking action with which the practitioner has a fundamental disagreement or the representation will result in an unreasonable financial burden on the practitioner.

An attorney is required to withdraw from representation for reasons noted in 37 C.F.R. §11.116(a), such as where the representation violates the USPTO Rules of Professional Conduct or other law or the practitioner is discharged by the applicant or registrant.

The requirements for withdrawing as an attorney are set forth in 37 C.F.R. §11.116. To withdraw from representation in trademark matters, the attorney must comply with the permission and notification requirements set forth in Trademark Rule 2.19(b), 37 C.F.R. §2.19(b). See 37 C.F.R. §11.116(c)  (stating that the "practitioner must comply with applicable law requiring notice to or permission of a tribunal when terminating a representation"); see also 37 C.F.R. §11.1  (defining "tribunal" to include "the Office"). These requirements apply to all requests to withdraw, whether the withdrawal is mandatory or permissive. The USPTO also applies these requirements to a qualified U.S. attorney who was recognized by signing a document or being identified as the representative in a document submitted on behalf of a previously unrepresented applicant or registrant. See 37 C.F.R. §2.17(b)(1)(ii) -(iii); TMEP §604.01.

May Not Prejudice Applicant or Registrant. A qualified U.S. attorney may not withdraw in a way that would prejudice the applicant or registrant.  37 C.F.R. §11.116(b)(1);  In re Legendary, Inc., 26 USPQ2d 1478 (Comm’r Pats. 1992) (denying the attorney’s request to withdraw where the request was filed on the last day of the period for response to an Office action and attorney stated neither that the applicant was given due notice of the attorney’s withdrawal from employment, nor that the attorney had delivered all documents and property in his file concerning the prosecution of the application to the applicant).

TEAS form.  Requests to withdraw must be filed using the TEAS Request for Withdrawal as Attorney of Record/Update of USPTO’s Database After Power of Attorney Ends form. The TEAS form incorporates the requirements listed below.

Requirements for Request.  A request to withdraw must include the following:

  • (1) A statement of the reason(s) for the request to withdraw;
  • (2) The application serial number or registration number; and
  • (3) Either of the following;
    •  A statement that the attorney has given notice to the client that the attorney is withdrawing from employment and will be filing the necessary documents with the USPTO; that the client was given notice of the withdrawal, at least two months before the expiration of the response period, if applicable; that the attorney has delivered to the client all documents and property in the attorney’s file concerning the application or registration to which the client is entitled; and that the attorney has notified the client of any responses or other filings that may be due, and of the deadline for the response or filing (see 37 C.F.R. §11.116(d) ). In re Slack, 54 USPQ2d 1504 (Comm’r Pats. 2000); or
    • If there is more than one qualified U.S. attorney of record, a statement that representation by co-counsel is ongoing.

37 C.F.R. §2.19(b).  

The requirement for a statement that the client was given notice of the withdrawal at least two months before the expiration of any outstanding response period does not apply where the attorney states that his or her representation was terminated by the applicant or registrant when less than two months remained in the response period.

The request to withdraw should be filed soon after the attorney notifies the applicant or registrant of his or her intent to withdraw.  37 C.F.R. §2.19(b).

These requirements apply to all requests to withdraw, whether withdrawal is mandatory or permissive.  The USPTO also applies these requirements where a qualified U.S. attorney was recognized by signing a document or being identified as the representative in a document submitted on behalf of a previously unrepresented applicant or registrant. See 37 C.F.R. §2.17(b)(1)(ii)-(iii); TMEP §604.01.

Requests Filed After Registration. For purposes of recognition as a representative, the USPTO considers recognition to end with registration.  37 C.F.R. §2.17(g)(1). If the recognition is established in connection with an affidavit under §8, §12(c), §15, or §71, a §9 renewal application, or a §7 request, the recognition is deemed to end upon acceptance or final rejection of the filing.  37 C.F.R. §2.17(g)(2); TMEP §604.03. Accordingly, no request to withdraw is needed after recognition ends, but if one is filed and granted, it will be entered into the registration record.

Requests Filed in Abandoned Application.  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 application is abandoned. 37 C.F.R. §2.17(g)(1). Accordingly, no request to withdraw is needed, but if one is filed and granted, it will be entered into the application record.

Processing Paper Requests. For permitted paper filings (see TMEP §301.01), a request to withdraw filed before registration will be handled by the appropriate managing attorney, or, if a notice of allowance has issued and the application is awaiting the filing of a statement of use, by the supervisor of the ITU/Divisional Unit. After registration, a paper request for permission to withdraw will be handled by the supervisor of the Post Registration Section.

The managing attorney or supervisor will approve or deny the request, notify the applicant or registrant and the attorney of the approval or denial of the request, and place a copy of this notification in the record. If the request is approved, the managing attorney or supervisor should ensure that the correspondence address is changed in the USPTO’s Trademark database. It is the responsibility of the managing attorneys or supervisors to establish procedures that permit withdrawal requests to be given priority and acted on promptly.

For a permitted paper request for permission to withdraw filed after registration (see TMEP §301.01), the USPTO will scan an image of the request into the Trademark database but will not update the attorney information unless the registrant concurrently takes a separate action, such as filing an affidavit under §8. TMEP §1612.

If the attorney who seeks to withdraw is also the domestic representative, the managing attorney or supervisor should inquire as to whether the attorney intends to withdraw as domestic representative. This inquiry should be made by telephone or email, if possible. If the attorney withdraws as domestic representative, the managing attorney or supervisor must ensure that the "Domestic Representative" field in the USPTO’s Trademark database is updated.

Board Proceedings. See TBMP §§116.02–116.05 regarding withdrawal as the representative of a party to a Board proceeding.