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 in person 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) Signature as certificate of authorization to represent.  When a practitioner qualified under §11.14 of this chapter appears in person or signs a document pursuant to paragraph (b) of this section, his or her personal appearance or signature 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 practitioner 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 in person on behalf of an applicant or registrant who is not already represented by a qualified practitioner 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)  or registered as a patent agent pursuant to 37 C.F.R. §11.6(c)  may not be recognized as a representative.

Generally, as long as no other qualified practitioner from a different firm has been previously appointed, it is not necessary for a qualified practitioner to file a power of attorney or obtain special authorization in a trademark case.  A qualified practitioner who appears in person or signs a document on behalf of an applicant or registrant will be accepted as the representative of the applicant or registrant.  37 C.F.R. §2.17(b)(2). (A qualified practitioner may also be recognized as the applicant’s representative if the practitioner is identified as the attorney of record in the application, even when the application is signed by the applicant.). Neither a telephone call nor an e-mail from a qualified practitioner satisfies the "appearance" requirements of 37 C.F.R. §2.17(b). However, after issuance of an Office action to a pro se applicant and prior to response, a qualified practitioner may satisfy the appearance requirement by submitting a signed document into the record stating that the practitioner represents the applicant and requesting that the Office records be updated to indicate that he or she is the attorney of record.

An individual not meeting the requirements of 37 C.F.R. §2.17(b)  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 practitioner as the representative of an applicant or registrant, the USPTO will communicate and conduct business only with that practitioner or with another qualified practitioner from the same United States firm.  The USPTO will not conduct business directly with the applicant or registrant, or with a qualified practitioner from a different firm, unless the applicant or registrant files a new power of attorney or revokes the previous power, or the previously recognized practitioner files a request to withdraw.  37 C.F.R. §§2.17(c)(2), 2.18(a)(7), 2.19.  See TMEP §§ 604.02 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    Duration of Recognition

37 C.F.R. §2.17(g)  Duration of power of attorney.

  • (1)  For purposes of recognition as a representative, the Office considers a power of attorney filed while an application is pending to end when the mark registers, when ownership changes, or when the application is abandoned.
  • (2) The Office considers a power of attorney filed after registration to end when the mark is cancelled or expired, or when ownership changes.  If the power was filed in connection with an affidavit under section 8, 12(c), 15 or 71 of the Trademark Act, renewal application under section 9 of the Act, or request for amendment or correction under section 7 of the Act, the power is deemed to end upon acceptance or final rejection of the filing.

Pending Applications. For purposes of recognition as a representative, the USPTO considers a power of attorney filed while an application is pending 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 a power of attorney filed 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 practitioner who transmits one of these documents even absent a new power of attorney or revocation of a previous power.

Example 1:  A qualified practitioner (Attorney A) transmits an affidavit under §8, and the USPTO issues an Office action in connection with the affidavit.  If another qualified practitioner 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 practitioner (Attorney A) transmits an affidavit under §8, and the USPTO accepts the affidavit.  If another qualified practitioner 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 or revocation of the previous power is filed.

Example 3:  A qualified practitioner (Attorney A) transmits an affidavit under §8, and the USPTO issues an Office action in connection with the affidavit.  If another qualified practitioner 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 a power of attorney filed after registration to end when the registration is cancelled or expired or when ownership changes.  37 C.F.R. §2.17(g)(2).  Therefore, the USPTO will not enter a request to withdraw as attorney or revocation of a power of attorney filed in connection with a cancelled or expired registration, unless it is accompanied by a petition to reinstate the registration.  See TMEP §605.04 regarding powers of attorney filed after registration.

Change of Ownership. For purposes of recognition as a representative, the USPTO considers a power of attorney filed 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 practitioner appears on behalf of the new owner, the USPTO will communicate and conduct business with that practitioner even absent a new power of attorney or revocation of the previous power.  If the previously recognized practitioner 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 practitioner.  The previously recognized practitioner does not have to file a new power of attorney 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 a power of attorney to end for purposes of recognition as a representative, the USPTO will not automatically change the attorney and correspondence address in its Trademark database, because it is possible that the previously recognized practitioner still represents the applicant or registrant and wants to continue receiving correspondence.  The USPTO will continue to recognize the previously recognized practitioner if he or she appears or signs a document on behalf of the applicant or registrant.  However, if a new qualified practitioner appears in person or signs a document, the Office will recognize the new qualified practitioner pursuant to 37 C.F.R. §2.17(b), and correspond with him or her, without requiring a new power of attorney or revocation of the previous power.  See TMEP §§609.02–609.02(f) regarding changes of correspondence address.

These practices also apply where a qualified practitioner is recognized by appearing in person or signing or filing a document on behalf of the party whom he or she represents.  37 C.F.R. §2.17(b); TMEP §604.01.

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

604.03    Change of Attorney

Once the USPTO recognizes a qualified practitioner as the representative of an applicant or registrant, a new qualified practitioner 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 practitioner; or (3) the previously recognized practitioner files a request to withdraw.  37 C.F.R. §§2.18(a)(7), 2.19(b).  Until such action is taken, the new qualified practitioner 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.

If an applicant or registrant is already represented by a qualified practitioner, and a new qualified practitioner from a different firm wishes to take action with respect to the application or registration, the new practitioner must file a revocation of the previous power of attorney or new power of attorney naming the new qualified practitioner, 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 practitioner.  37 C.F.R. §2.18(a)(7).  The new practitioner may not sign the revocation of the previous power him or herself.  See 37 C.F.R. §2.17(c)  and TMEP §605.01 regarding requirements for power of attorney, and TMEP §606 regarding revocation of power of attorney.

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

For purposes of recognition as a representative of an applicant or registrant, the USPTO considers a power of attorney filed while an application is pending to end with respect to a particular application when the mark is registered, when the application is abandoned, or when ownership changes.  37 C.F.R. §2.17(g)(1).  The USPTO considers a power of attorney filed after registration to end when the registration is cancelled or expired or when ownership changes. 37 C.F.R. §2.17(g)(2). If the power is filed in connection with an affidavit under §8, §12(c), §15, or §71, a §9 renewal application, or a §7 request, the power is deemed to end upon acceptance or final rejection of the filing.   Id.   TMEP §604.02.  In these situations, it is not necessary to file a new power of attorney or revocation of the previous power before a new qualified practitioner may take action.  See TMEP §605.04 regarding the processing of powers of attorney filed after registration.

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