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 by being identified as the representative in a document submitted to the Office 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) Authorization to represent. When a practitioner qualified under § 11.14 of this chapter signs a document or appears pursuant to paragraph (b) of this section, his or her signature or appearance 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 U.S. attorney 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 by being identified as a representative in a document submitted to the USPTO on behalf of an applicant or registrant who is not already represented by a qualified U.S. attorney 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)  may not be recognized as an additional representative to the applicant’s qualified U.S. attorney. See 37 C.F.R. §11.14(c).

Generally, as long as no other qualified U.S. attorney from a different firm has been previously appointed, it is not necessary for a qualified U.S. attorney to file a power of attorney or obtain special authorization in a trademark case.  A qualified U.S. attorney who signs a document or appears on behalf of an applicant or registrant will be recognized as the representative of the applicant or registrant. 37 C.F.R. §2.17(b)(2). For example, a qualified U.S. attorney will be recognized as the applicant’s representative if the attorney is identified as the attorney of record in the application when the application is signed by the applicant. See 37 C.F.R. §2.17(b)(2).

Neither a telephone call nor an email from a qualified U.S. attorney satisfies the "appearance" requirements of 37 C.F.R. §2.17(b)(1)(iii). However, after issuance of an Office action to a pro se applicant or registrant, and prior to response, a qualified U.S. attorney may appear by being identified as the representative in a document submitted on behalf of an applicant or registrant, such as the Change Address or Representation (CAR) form. See 37 C.F.R. §2.17(b)(1)(iii), (b)(2). Such document need not be signed by an individual with legal authority to bind (e.g., a corporate officer or general partner of a partnership) the applicant or registrant to meet the appearance requirements of 37 C.F.R. §2.17(b)(1)(iii). Alternatively, a qualified U.S. attorney may be recognized as an unrepresented applicant’s or registrant’s representative by signing a document such as a CAR form or a response. See 37 C.F.R. §2.17(b)(1)(ii).

An individual not meeting the requirements of 37 C.F.R. §2.17(b)(1)  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. In addition, a practitioner who has been falsely, fraudulently, or mistakenly designated as a representative for an applicant, registrant, or party to a proceeding without the practitioner’s prior authorization or knowledge will not be recognized as a representative. 37 C.F.R §2.17(b)(4).

Once the USPTO has recognized a qualified U.S. attorney as the representative of an applicant or registrant, the USPTO will communicate and conduct business only with that attorney or with another qualified U.S. attorney from the same firm. See 37 C.F.R. §2.18(a)(2). The USPTO will not conduct business directly with the applicant or registrant, or with a qualified U.S. attorney from a different firm, unless the applicant or registrant files a new power of attorney and/or revokes the previous power, recognition of the attorney has been deemed to end pursuant to 37 C.F.R §2.17(g), or the attorney has withdrawn or been suspended or excluded from practice before the USPTO in trademark matters. 37 C.F.R. §2.18(a)(2), 11.15.  See TMEP §604.03 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.