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, the Director has inherent and express authority in 35 U.S.C. §3(a)-(b)  and 37 C.F.R §11.18(c)  to manage the Office and the registration of trademarks and to sanction those filing trademark submissions in violation of the USPTO rules. The Director has delegated to the Commissioner for Trademarks the authority to impose such sanctions or actions permitted under 37 C.F.R §11.18(c)  as deemed appropriate in trademark matters and to otherwise exercise the Director’s authority in trademark-related matters. See In re Yusha Zhang, et al., 2021 TTAB LEXIS 465, at *10, 23-24 (Dir. USPTO Dec. 10, 2021). Under 35 U.S.C. §3(b)(2)(A), the Commissioner for Trademarks also 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, precluding 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. Orders concerning 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, excluded, or precluded 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, excluded, or precluded 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 for 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, suspended, or precluded individual, or any party who appears to be engaged in the deliberate or widespread unauthorized practice of law before the USPTO.