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(e)) 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 amendments, responses to Office actions, petitions to the Director under 37 C.F.R. §2.146, requests to change the correspondence address, 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 TMEP §§611.03–611.03(i) regarding signature of documents filed in the USPTO. Presenting an amendment to an application and submitting legal arguments in response to a refusal are examples of representation of the applicant or registrant.  37 C.F.R. §11.5(b)(2); TMEP §611.03(b). However, a non-practitioner employee of a qualified practitioner may work under the supervision of the practitioner to prepare documents for review and signature by and assist the practitioner in trademark matters before the USPTO. 37 C.F.R. §11.5(b).

When an applicant or registrant is represented by a qualified practitioner, the USPTO encourages the practice of direct communication with the appointed practitioner.  Although paralegals and legal assistants may relay information between the examining attorney and the appointed practitioner, they are not authorized to conduct business before the USPTO.  For example, paralegals and legal assistants cannot authorize issuance of examiner’s amendments or priority actions, even if only conveying the appointed practitioner’s approval by indicating that the appointed practitioner has approved the amendment or action.

Once the USPTO recognizes a qualified practitioner as representing an applicant or registrant, a new qualified practitioner from a different firm is not permitted to represent the applicant or registrant until the applicant or registrant revokes the power of attorney of the previously recognized practitioner, or the previously recognized practitioner withdraws.   TMEP §604.03.

An individual who is not authorized under 37 C.F.R. §11.14  may transmit and receive correspondence.  Such an individual may also sign a verification on behalf of an applicant or registrant, 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 a practitioner or non-practitioner, 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 Administrator for Trademark Policy and Procedure in 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

Occasionally, the Director of the USPTO suspends or excludes a particular individual from practice before the USPTO.  35 U.S.C. §32;  37 C.F.R. §11.56. A suspended or excluded individual is not a qualified practitioner 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 Official Gazette and the decision is posted in the FOIA Reading Room https://e-foia.uspto.gov/Foia/OEDReadingRoom.jsp.

In addition, the USPTO may discover that a person 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. In these cases, the Commissioner for Trademarks may exclude the party from participating as a signatory, correspondent, or domestic representative on behalf of others in any trademark matters before the USPTO. See 35 U.S.C. §§2, 3(b)(2)(A), 32. Exclusion orders 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 Administrator for Trademark Policy and Procedure ("Administrator") 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 domestic representative if appropriate, or, alternatively, to the applicant or registrant at its address of record.

The USPTO will change the correspondence address to that of the applicant, registrant, or domestic representative, 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)  and 11.14. If the examining attorney or Post Registration staff receives a response to an Office action signed by an excluded or suspended party, he or she 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 alleging 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 alleging use, §1109.02 regarding statements of use, and §1705.07 regarding petitions.

USPTO employees must also notify the Administrator 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.