602.03(a) Canadian Trademark Attorneys and Agents
Currently, Canadian trademark attorneys or agents who are registered and active members in good standing with the trademark branch of the Canadian Intellectual Property Office are the only foreign attorneys or agents who may be recognized by the USPTO Office of Enrollment and Discipline (OED) Director in the presentation and prosecution of trademark matters. In any trademark matter where such an attorney or agent has been recognized and is representing an applicant or registrant, a qualified U.S. attorney must be appointed as the applicant’s or registrant’s representative who will file documents with the USPTO and with whom the USPTO will correspond. 37 C.F.R. §11.14(c)(2). See TMEP §602.03 regarding recognition of foreign attorneys and agents in trademark matters.
To be recognized under 37 C.F.R. §11.14(c), the Canadian trademark attorney or agent must file a written application to the OED Director for reciprocal recognition and pay the fee required by 37 C.F.R. §1.21(a)(1)(i) prior to representing a party before the USPTO. The application must include proof that the individual meets the requirements of 37 C.F.R. §11.14(c), and must be addressed to the OED Director, Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450. 37 C.F.R. §11.14(f).
Once recognized by OED, a Canadian trademark attorney or agent can only represent parties located in Canada. 37 C.F.R. §11.14(c)(1). Thus, he or she cannot represent a party located in the United States or in another foreign country before the USPTO. For example, he or she cannot represent a Canadian national who resides in California and has access to a mailing address in Canada.
A reciprocally recognized Canadian trademark attorney or agent may on behalf of clients located in Canada: prepare, sign, and file a new application; prepare and sign other application and registration-related submissions, including responses and other formal communications, although a qualified U.S. attorney must file such submissions; otherwise communicate informally by phone or email with an examining attorney or paralegal specialist on behalf of their client to discuss the application status, the contents of the examining attorney’s Office action, and possible responses to the Office action, but an appointed qualified U.S. attorney must authorize any examiner’s amendments; and receive courtesy copies of USPTO communications. See 37 C.F.R. §11.5(b)(2).
If a Canadian trademark attorney or agent is designated as representing an applicant or registrant in a trademark matter as another appointed attorney, the USPTO staff must verify that the attorney or agent is recognized by OED, even if the individual files a document through TEAS and indicates that he or she is an authorized Canadian trademark attorney or agent who has been granted recognition by OED. See TMEP §611.02(a) regarding signature radio buttons on TEAS forms. OED maintains a combined list of recognized Canadian trademark attorneys or agents.
After verifying that the Canadian trademark attorney or agent is recognized by OED, the USPTO staff should enter an appropriate Note to the File in the record. If the individual has not been recognized by OED, the USPTO will treat any document filed by that individual as a document filed by an unauthorized person. See TMEP §§611.05–611.05(c) for information about processing these documents.