608    Unauthorized Practice

608.01    Actions by Unauthorized Persons Not Permitted

37 C.F.R. §11.5(b)(2)  Practice before the Office in trademark matters.

 Practice before the Office in trademark matters includes, but is not limited to, consulting with or giving advice to a client in contemplation of filing a trademark application or other document with the Office; preparing and prosecuting an application for trademark registration; preparing an amendment which may require written argument to establish the registrability of the mark; and conducting an opposition, cancellation, or concurrent use proceeding; or conducting an appeal to the Trademark Trial and Appeal Board.

An individual who is not authorized under 37 C.F.R. §11.14  to practice before the USPTO in trademark cases (TMEP §§602-602.03(c)) is not permitted to represent a party in the prosecution of a trademark application, in the maintenance of a registration, or in a proceeding before the USPTO.  5 U.S.C. §500(b), (d); 37 C.F.R. §§2.17(a), 11.14(a), (e).

An individual who does not meet the requirements of 37 C.F.R. §11.14  cannot:  prepare an application, response, post-registration maintenance document, or other document to be filed in the USPTO; sign or submit amendments, responses to Office actions, petitions to the Director under 37 C.F.R. §2.146  or §2.147, requests to change the correspondence address, assignments, or letters of express abandonment; authorize issuance of examiner’s amendments and priority actions; or otherwise represent an applicant, registrant, or party to a proceeding in the USPTO. See 37 C.F.R. §11.5(b)(2), 11.14. See TMEP §§611.03–611.03(i) regarding signature of documents filed in the USPTO. Requesting an amendment to an application and submitting legal arguments in response to a refusal are examples of representation of the applicant or registrant. See 37 C.F.R. §11.5(b)(2); TMEP §611.03(b). However, a non-attorney employee of a qualified U.S. attorney may work under the supervision of the attorney to prepare documents for review and signature by and assist the attorney in trademark matters before the USPTO. 37 C.F.R. §11.5(b).

See TMEP §602.03 regarding foreign attorneys and agents in general and §602.03(a) regarding Canadian attorneys and agents who are not authorized to practice before the USPTO except in limited circumstances.

When an applicant or registrant is represented by a qualified U.S. attorney, the USPTO will communicate only with the appointed attorney. 37 C.F.R. §2.18(a)(2). Although paralegals and legal assistants may relay information between the examining attorney and the appointed attorney, they are not authorized to conduct business before the USPTO.  For example, paralegals and legal assistants cannot authorize examiner’s amendments or priority actions, even if only conveying the recognized attorney’s approval by indicating that the recognized attorney has approved the amendment or action.

Once the USPTO recognizes a qualified U.S. attorney as representing 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 attorney has been deemed to end pursuant to 37 C.F.R. §2.17(g); or (4) the previously recognized attorney withdraws or has been suspended or excluded from practicing before the USPTO in trademark matters. . 37 C.F.R. §§2.18(a)(2), 11.15.

An individual who is not authorized under 37 C.F.R. §11.14  may receive correspondence and transmit it to the applicant or registrant.  Such an individual may also sign a verification in an application- or registration-related filing, if he or she meets the requirements of 37 C.F.R. §2.193(e)(1)  (e.g., has firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant or registrant. See TMEP §§611.03(a), 804.04.

Any individual, whether an attorney or non-attorney, who presents a document to the USPTO (whether by signing, filing, submitting, or later advocating the document) is subject to 37 C.F.R. §11.18(b).  37 C.F.R. §2.193(f); see TMEP §611.01(a).

If a USPTO employee suspects that an individual who does not meet the requirements of 37 C.F.R. §11.14  is engaging in widespread unauthorized practice by representing applicants or registrants, he or she should bring the matter to the attention of the Office of the Deputy Commissioner for Trademark Examination Policy.

See TMEP §§611–611.06(h) regarding signature of documents filed in the USPTO.

608.02    Individuals Excluded, Suspended, or Unauthorized to Practice Before the USPTO

The Director of the USPTO may suspend or exclude a practitioner from practice before the USPTO.  35 U.S.C. §32;  37 C.F.R. §§11.20,11.56. A suspended or excluded practitioner is not a qualified U.S. attorney and may not practice before the USPTO. See 37 C.F.R. §§2.17(a), 11.14, 11.58; TMEP §602. Notice of the suspension or exclusion is published in the Trademark Official Gazette and the decision is posted in the FOIA Reading Room on the USPTO website.

In addition, under 35 U.S.C. §3(b)(2)(A), the Commissioner for Trademarks possesses the authority to manage and direct all aspects of the activities of the USPTO that affect the administration of trademark operations. Accordingly, if the USPTO discovers that a party who does not meet the requirements of 37 C.F.R. §11.14  is engaged in the deliberate or widespread unauthorized practice of representing applicants and registrants before the USPTO or violates the USPTO Rules of Professional Conduct (see 37 C.F.R. pt. 11, subpt. D ), the Commissioner for Trademarks may sanction the party under 37 C.F.R §11.18(c)  and may refer the party to the Office of Enrollment and Discipline for additional investigation. Sanctions may include striking an offending document, excluding a party from participating as a signatory, correspondent, or domestic representative on behalf of others in any trademark matters before the USPTO, requiring a party to be represented by a qualified U.S. attorney, terminating trademark proceedings involving the party, or any other action deemed appropriate by the Commissioner under the circumstances. See 35 U.S.C. §§2, 3(b)(2)(A), 32; 37 C.F.R. §11.18. Exclusion orders and other sanctions issued by the Commissioner for Trademarks are listed at https://www.uspto.gov/trademark/trademark-updates-and-announcements/orders-issued-commissioner-trademarks.

When an individual has been suspended or excluded from practice before the USPTO, the Office of the Deputy Commissioner for Trademark Examination Policy will notify the USPTO staff accordingly. In addition, as appropriate, the USPTO may notify the affected applicants and registrants that:

  • (1) The individual is not entitled to practice before the USPTO in trademark matters and, therefore, may not represent the applicant or registrant;
  • (2) Any power of attorney is void ab initio;
  • (3) The individual may not sign responses to Office actions, authorize examiner’s amendments or priority actions, conduct interviews with USPTO employees, or otherwise represent an applicant, registrant, or party to a proceeding before the Office; and
  • (4) All correspondence concerning the application or registration will be sent to the applicant or registrant at its address of record.

The USPTO will change the correspondence address to that of the applicant or registrant, as appropriate.

Generally, if an Office action was sent to the correspondence address of record before the relevant party’s suspension or exclusion and the action remains outstanding, the USPTO will not send the applicant or registrant a supplemental action restating the refusals or requirements. See TMEP §717.02 regarding non-receipt of Office actions.

When the Director of the USPTO or Commissioner for Trademarks has suspended or excluded a particular individual from practice before the USPTO, the USPTO will treat any submission signed by such individual as improperly signed and/or non-responsive. 37 C.F.R. §§2.17(a), 11.14.

If the applicant or registrant is required to be represented by a qualified U.S. attorney under 37 C.F.R. §2.11(a)  and the USPTO receives a response to an Office action signed by an excluded or suspended attorney, the examining attorney or post registration specialist must issue a new non-final Office action, addressed to the applicant or registrant, requiring the applicant or registrant to appoint a new qualified U.S. attorney and to perfect the response pursuant to 37 C.F.R. §2.62(a). SeeTMEP §§713, 714.05(a).

If the applicant or registrant is not required to appoint a qualified U.S. attorney under 37 C.F.R. §2.11(a), and the USPTO receives a response to an Office action signed by an excluded or suspended attorney, the examining attorney or post registration specialist must prepare a notice of incomplete response, addressed to the applicant or registrant, granting the applicant or registrant 30 days, or to the end of the response period set forth in the previous Office action, whichever is longer, to perfect the response, pursuant to 37 C.F.R. §2.65(a)(2).  See TMEP §§611.05–611.05(c), 712.03, and 718.03(b) for further information.

Other submissions that will be treated as improperly signed and/or non-responsive include amendments to allege use, petitions to revive or to the Director, or responses to deficiency or inquiry letters issued by USPTO specialists, paralegals, or staff attorneys. See TMEP §1104.01(a) regarding amendments to allege use, §1109.02 regarding statements of use, and §1705.07 regarding petitions.

USPTO employees must also notify the Office of the Deputy Commissioner for Trademark Examination Policy of the receipt of a document signed by an excluded or suspended individual, or any party who appears to be engaged in the deliberate or widespread unauthorized practice of law before the USPTO.