602    Persons Authorized to Practice Before USPTO in Trademark Matters

37 C.F.R. §2.17(a)  Authority to practice in trademark cases.

Only an individual qualified to practice under §11.14 of this chapter may represent an applicant, registrant, or party to a proceeding before the Office in a trademark case.

37 C.F.R. §11.5(b)  Practice before the Office.

Practice before the Office includes, but is not limited to, law-related service that comprehends any matter connected with the presentation to the Office or any of its officers or employees relating to a client’s rights, privileges, duties, or responsibilities under the laws or regulations administered by the Office for the grant of a patent or registration of a trademark, or for enrollment or disciplinary matters. Such presentations include preparing necessary documents in contemplation of filing the documents with the Office, corresponding and communicating with the Office, and representing a client through documents or at interviews, hearings, and meetings, as well as communicating with and advising a client concerning matters pending or contemplated to be presented before the Office. Nothing in this section proscribes a practitioner from employing or retaining non-practitioner assistants under the supervision of the practitioner to assist the practitioner in matters pending or contemplated to be presented before the Office.

* * *

(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.

37 C.F.R. §11.14  Individuals who may practice before the Office in trademark and other non-patent matters.

  • (a) Attorneys.  Any individual who is an attorney as defined in §11.1 may represent others before the Office in trademark and other non-patent matters.  An attorney is not required to apply for registration or recognition to practice before the Office in trademark and other non-patent matters.  Registration as a patent practitioner does not itself entitle an individual to practice before the Office in trademark matters.
  • (b) Non-lawyers.  Individuals who are not attorneys are not recognized to practice before the Office in trademark and other non-patent matters, except that individuals not attorneys who were recognized to practice before the Office in trademark matters under this chapter prior to January 1, 1957, will be recognized as agents to continue practice before the Office in trademark matters.  Except as provided in the preceding sentence, registration as a patent agent does not itself entitle an individual to practice before the Office in trademark matters.
  • (c) Foreigners.  (1) Any foreign attorney or agent not a resident of the United States who shall file a written application for reciprocal recognition under paragraph (f) of this section and prove to the satisfaction of the OED Director that he or she is a registered and active member in good standing before the trademark office of the country in which he or she resides and practices and possesses good moral character and reputation, may be recognized for the limited purpose of representing parties located in such country before the Office in the presentation and prosecution of trademark matters, provided: The trademark office of such country and the USPTO have reached an official understanding to allow substantially reciprocal privileges to those permitted to practice in trademark matters before the Office. Recognition under this paragraph (c) shall continue only during the period that the conditions specified in this paragraph (c) obtain.
  • (2) In any trademark matter where a foreign attorney or agent authorized under paragraph (c)(1) of this section is representing an applicant, registrant, or party to a proceeding, an attorney, as defined in § 11.1 and qualified to practice under paragraph (a) of this section, must also be appointed pursuant to § 2.17(b) and (c) of this chapter as the representative who will file documents with the Office and with whom the Office will correspond.
  • (d) Recognition of any individual under this section shall not be construed as sanctioning or authorizing the performance of any act regarded in the jurisdiction where performed as the unauthorized practice of law.
  • (e) Appearance. No individual other than those specified in paragraphs (a), (b), and (c) of this section will be permitted to practice before the Office in trademark matters on behalf of a client. Except as specified in § 2.11(a) of this chapter, an individual may appear in a trademark or other non-patent matter in his or her own behalf or on behalf of:
  • (1) A firm of which he or she is a member;
  • (2) A partnership of which he or she is a partner; or
  • (3) A corporation or association of which he or she is an officer and which he or she is authorized to represent, if such firm, partnership, corporation, or association is a party to a trademark proceeding pending before the Office.
  • (f) Application for reciprocal recognition.  An individual seeking reciprocal recognition under paragraph (c) of this section, in addition to providing evidence satisfying the provisions of paragraph (c) of this section, shall apply in writing to the OED Director for reciprocal recognition, and shall pay the application fee required by §1.21(a)(1)(i) of this subchapter.

Only an individual qualified to practice under 37 C.F.R. §11.14  may represent an applicant or registrant in trademark matters before the USPTO. 37 C.F.R. §2.17(a). Under 37 C.F.R. §11.14, only the following individuals may represent an applicant or registrant in a trademark case:

  • An attorney as defined in 37 C.F.R. §11.1  (i.e., an attorney who is an active member in good standing of the bar of the highest court of a U.S. state, Commonwealth, or territory or the District of Columbia) (a "qualified U.S. attorney") (see TMEP §602.01);
  • A Canadian attorney or agent who has been granted recognition by the Director of Enrollment and Discipline (OED Director) for the limited purpose of representing parties located in Canada, pursuant to 37 C.F.R. §11.14(c);, and who is working under a qualified U.S. attorney who has been appointed as the applicant’s or registrant’s representative (see TMEP §602.03-602.03(a)); or
  • An individual who is not an attorney but was recognized to practice before the USPTO in trademark cases prior to January 1, 1957.

See TMEP §602.03(a) regarding Canadian attorneys and agents, and TBMP §§114–114.08 regarding representation of parties to Board proceedings.

602.01    Attorneys Licensed to Practice in the United States

An attorney who is an active member in good standing of the bar of the highest court of a U.S. state (which includes the District of Columbia and any U.S. Commonwealth or territory) may practice before the USPTO in trademark matters. 37 C.F.R. §§2.17(a),11.1  (see definitions of Attorney and State), 11.14(a).  No application for recognition to practice before the USPTO in trademark matters is necessary.  The USPTO does not give an examination for eligibility or maintain a register of U.S. attorneys entitled to practice in trademark cases.  An attorney meeting the requirements of 37 C.F.R. §11.14  who (1) files a power of attorney pursuant to 37 C.F.R. §2.17(c), (2) is identified as a representative in a document submitted on behalf of an otherwise unrepresented applicant or registrant, or (3) signs a document on behalf of an applicant or registrant who is otherwise unrepresented will be recognized as the representative of the applicant or registrant.  37 C.F.R §2.17(b)(1). A telephone call from an attorney does not satisfy the "appearance" requirements of 37 C.F.R. §2.17(b).

Only individuals, not law firms, are entitled to be recognized to represent an applicant or registrant. See also 37 C.F.R §2.17(c)(1).

Attorneys who have not specifically been mentioned in a power of attorney generally may not communicate with the USPTO regarding specific application- or registration-related business, unless they are from the same firm as the recognized attorney. If an attorney from the same U.S. firm as the attorney of record claims to be authorized by the attorney of record to conduct business and approve amendments with respect to a specific application or registration, the USPTO will permit the attorney to conclude business, and will note this fact in any resulting examiner’s amendment, priority action, or Office action. See generally 37 C.F.R §2.18(b)(1).

602.01(a)    Attorney Identification Information Required

37 C.F.R. §2.17  Recognition for representation.

(b)(3) Bar information required. A practitioner qualified under §11.14(a)  of this chapter will be required to provide the name of a State, as defined in §11.1  of this chapter, in which he or she is an active member in good standing, the date of admission to the bar of the named State, and the bar license number, if one is issued by the named State. The practitioner may be required to provide evidence that he or she is an active member in good standing of the bar of the specified State.

37 C.F.R. §2.22  Requirements for a TEAS Plus application.

(a)(20) A trademark/service mark application for registration on the Principal Register under section 1 and/or section 44 of the Act that meets the requirements for a filing date under §2.21  will be entitled to a reduced filing fee under 37 C.F.R §2.6(a)(1)(iv)  if it includes: An applicant whose domicile is not located within the United States or its territories must designate an attorney as the applicant’s representative, pursuant to 37 C.F.R §2.11(a), and include the attorney’s name, postal address, email address, and bar information.

37 C.F.R. §2.32  Requirements for a complete trademark or service mark application.

(a)(4) The application must be in English and include the following: When the applicant is, or must be, represented by an attorney, as defined in §11.1  of this chapter, who is qualified to practice under §11.14  of this chapter, the attorney’s name, postal address, email address, and bar information.

If the applicant is represented by an attorney qualified under 37 C.F.R §11.14, or is required to appoint such an attorney due to its foreign domicile, the applicant must include the individual attorney’s name, postal address, email address, and bar information in a Section 1 or 44(a) application, or in a subsequent submission in a Section 66(a) application. 37 C.F.R §2.11(a), 37 C.F.R §2.22(a)(20), 37 C.F.R §2.32(a)(4).

The bar information for the attorney includes (1) the name of the U.S. state, Commonwealth, or territory, or the District of Columbia, in which he or she is an active member in good standing; (2) the date of his or her admission to the bar in the named U.S. state, Commonwealth, or territory, or District of Columbia; (3) the bar license number, if one is issued by the U.S. state, Commonwealth, or territory or the District of Columbia; and (4) a statement that he or she is an active member in good standing of the bar of the listed U.S. state, Commonwealth, or territory or District of Columbia.

This information must be provided for the attorney of record (i.e., the primary attorney). The attorney must provide the number used by the U.S. state, Commonwealth, or territory that licenses the attorney, which number may be called by different names, including a bar, membership, account, or identification number.

The majority of the TEAS forms include specific fields to enter attorney bar information for the attorney of record. If an applicant’s or registrant’s attorney’s bar information and/or the statement that the attorney is an active member in good standing of the referenced bar is omitted or incomplete, the examining attorney will issue an Office action requiring the attorney bar information and/or statement of active bar membership in good standing.

In cases where attorney bar information is required and all other outstanding issues may be resolved by examiner’s amendment, the examining attorney may email or call the attorney about the outstanding issues, obtain his or her bar information, and ask that he or she agree to a statement of good standing, if it is not already in the record. An associate attorney authorized to represent the applicant may also authorize an examiner’s amendment for the primary attorney or record’s bar information and a statement of good standing.

Attorney bar information entered in the bar information fields on the "Attorney Information" page of TEAS forms will be hidden from public view. The USPTO makes an effort to mask these fields only as a courtesy, to make it harder for the data to be scraped for improper or other purposes, not because the data is private. If entered anywhere else in the TEAS forms, the attorney bar information will not be hidden. Attorney bar information is a matter of public record, and attorneys should be aware that this information may sometimes be available on filings. If the examining attorney obtains the bar information to enter it by examiner’s amendment, the amendment will not include the specific information but rather will indicate only that the bar information has been provided. If an applicant emails the attorney bar information to the USPTO, an examining attorney must follow the normal procedure for making relevant email communications part of the record and will not hide such information, unless the applicant’s attorney requests that it be hidden. See TMEP §709.04.

602.01(b)    Invalid Attorney Identification Information

If a submission includes clearly invalid attorney identification information (e.g., John Doe, a series of question marks or letters/numerals, a single name, or the word "test"), the listed attorney does not appear to be a qualified U.S.-licensed attorney, or the listed attorney has not consented to represent the applicant, the examining attorney or post-registration specialist must (1) remove the attorney identification information from the correspondence section of the Trademark database and enter the applicant’s or registrant’s address, and (2) issue an Office action notifying the applicant or registrant that the listed attorney does not appear to be a qualified practitioner or has not consented to represent the applicant or registrant. In such cases, correspondence must be sent directly to the applicant or registrant at the address specified in the initial application or post-registration maintenance document. In addition, for a foreign-domiciled applicant, any Office action issued must make requirements for appointment of a qualified U.S. attorney and domicile information, if applicable.

If the attorney identification information appears valid, but circumstances call into question the veracity of the information, the examining attorney or post-registration staff must (1) remove the attorney identification information from the correspondence section of the Trademark database and enter the applicant’s or registrant’s address, and (2) issue an Office action notifying the applicant or registrant that the listed attorney does not appear to be a qualified U.S. attorney or has not consented to represent the applicant or registrant. In addition, the Office action must include a requirement for the attorney’s identification information (including bar credentials) if appropriate, and, for a foreign-domiciled applicant, requirements for appointment of a qualified U.S. attorney and domicile information, if applicable.

See TMEP §601.01 regarding the requirement to provide the owner’s domicile and for foreign domiciliaries to appoint a qualified U.S. attorney to represent them at the USPTO.

602.02    Non-Attorneys

37 C.F.R. §2.17(f)  Non-lawyers.

 A non-lawyer may not act as a representative except in the limited circumstances set forth in §11.14(b) of this chapter.  Before any non-lawyer who meets the requirements of §11.14(b) of this chapter may take action of any kind with respect to an application, registration or proceeding, a written authorization must be filed, signed by the applicant, registrant, or party to the proceeding, or by someone with legal authority to bind the applicant, registrant, or party (e.g., a corporate officer or general partner of a partnership).  

37 C.F.R. §11.14(b)  Non-lawyers.

 Individuals who are not attorneys are not recognized to practice before the Office in trademark and other non-patent matters, except that individuals not attorneys who were recognized to practice before the Office in trademark matters under this chapter prior to January 1, 1957, will be recognized as agents to continue practice before the Office in trademark matters.  Except as provided in the preceding sentence, registration as a patent agent does not itself entitle an individual to practice before the Office in trademark matters.

Non-attorneys are not permitted to practice before the Office except under the limited circumstances specified in 37 C.F.R. §11.14(b), set forth above.  5 U.S.C. §§500(b), (d); 37 C.F.R. §§2.17(f), 11.14(e).

Where the USPTO suspects that a non-attorney may be engaging in unauthorized practice before the Office, the applicant or registrant may be required to provide information regarding the type of assistance rendered, the identity of the person(s) providing such assistance, and the compensation provided or charged. 37 C.F.R. §2.11(c).

See TMEP §608.01 regarding unauthorized practice, and TMEP §§611–611.06(h) regarding signature of documents filed in the USPTO.

602.03    Foreign Attorneys and Agents  

37 C.F.R. §2.17  Recognition for representation.

(e) Foreign attorneys and agents. Recognition to practice before the Office in trademark matters is governed by §11.14(c)  of this chapter.

37 C.F.R. §11.14(c)  Foreigners.

 

  • (1) Any foreign attorney or agent not a resident of the United States who shall file a written application for reciprocal recognition under paragraph (f) of this section and prove to the satisfaction of the OED Director that he or she is a registered and active member in good standing before the trademark office of the country in which he or she resides and practices and possesses good moral character and reputation, may be recognized for the limited purpose of representing parties located in such country before the Office in the presentation and prosecution of trademark matters, provided: the trademark office of such country and the USPTO have reached an official understanding to allow substantially reciprocal privileges to those permitted to practice in trademark matters before the Office. Recognition under this paragraph (c) shall continue only during the period that the conditions specified in this paragraph (c) obtain.
  • (2) In any trademark matter where a foreign attorney or agent authorized under paragraph (c)(1) of this section is representing an applicant, registrant, or party to a proceeding, an attorney, as defined in § 11.1 and qualified to practice under paragraph (a) of this section, must also be appointed pursuant to § 2.17(b) and (c) of this chapter as the representative who will file documents with the Office and with whom the Office will correspond.

37 C.F.R. §11.14 (f)  Application for reciprocal recognition.

An individual seeking reciprocal recognition under paragraph (c) of this section, in addition to providing evidence satisfying the provisions of paragraph (c) of this section, shall apply in writing to the OED Director for reciprocal recognition, and shall pay the application fee required by §1.21(a)(1)(i) of this subchapter.

Generally, only an attorney as defined in 37 C.F.R. §11.1  may practice before the USPTO in trademark matters on behalf of an applicant or registrant.  5 U.S.C. §500(b), (d); 37 C.F.R. §§2.17(a), 11.14(a), (e).  In very limited circumstances, foreign agents or attorneys that are registered and active members in good standing before the trademark office in the country in which they reside may file an application for reciprocal recognition to represent parties located in that country. 37 C.F.R. §11.14(c), (f). Foreign patent attorneys and agents may not practice before the USPTO in trademark matters. See 37 C.F.R. §11.14(c)(1).

A foreign attorney or agent may be recognized to represent parties located in the country in which the foreign attorney resides and practices, only if:  

  • (1)  He or she applies in writing to the OED Director for reciprocal recognition and pays the fee required by 37 C.F.R. §1.21(a)(1)(i);
  • (2) He or she proves to the satisfaction of the OED Director that he or she is a registered and active member in good standing before the trademark office of the country in which he or she resides and practices and possesses good moral character and reputation;
  • (3)  The trademark office of that foreign country allows substantially reciprocal privileges to those permitted to practice before the USPTO; and
  • (4) An attorney, as defined under 37 C.F.R. §11.1, is appointed pursuant to 37 C.F.R. §2.17(b)  and (c)  as the representative who will file documents with the USPTO and with whom the USPTO will correspond.

37 C.F.R. §§2.17(a), 11.14(c), (f).  

The OED Director will grant recognition of an attorney in the form of a written communication. A foreign attorney or agent not previously recognized to practice before the USPTO in trademark cases should allow adequate time to file and obtain recognition before representing a party before the USPTO. The application for reciprocal recognition must be filed and granted prior to practicing before the USPTO in trademark matters.  Currently, a Canadian trademark attorney or agent who is registered and an active member in good standing with the Canadian Intellectual Property Office is the only foreign attorney or agent who may be recognized as meeting the above criteria.  See TMEP §602.03(a) regarding Canadian trademark attorneys and agents.

If a USPTO employee suspects that an individual who does not meet the requirements of 37 C.F.R. §11.14(c)  is engaging in unauthorized practice by representing applicants or registrants in trademark matters, he or she should bring the matter to the attention of the Office of the Deputy Commissioner for Trademark Examination Policy.

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.

602.03(b)    Documents Filed by Foreign Attorneys and Agents Not Reciprocally Recognized

A foreign attorney or agent who is not reciprocally recognized under 37 C.F.R. §11.14(c)  by the USPTO (see TMEP §602.03) is not authorized to practice before the USPTO under 37 C.F.R. §11.14  and thus may not prepare an application, response, post-registration maintenance document, or other document to be filed in the USPTO, sign responses to Office actions, or communicate with the USPTO on behalf of any applicant or registrant. Preparing a document, authorizing an amendment to an application, and submitting legal arguments in response to a requirement or refusal all constitute examples of representation of a party in a trademark matter. See 37 C.F.R. §11.5(b)(2); TMEP §608.01.  

If a foreign attorney or agent who does not meet the requirements of 37 C.F.R. §11.14(c)  is designated or acts as a representative of a party in a trademark matter, the USPTO will treat any document submitted by the attorney or agent as a document filed by an improper party and follow the procedures in TMEP §§611.05–611.05(c).

602.03(c)    Representatives of Holders of International Registrations

In the case of an application under Trademark Act §66(a), 15 U.S.C. §1141f(a), known in the United States as a request for extension of protection, the applicant’s appointed representative, as communicated from the International Bureau of the World Intellectual Property Organization (IB), is not authorized to practice before the USPTO unless he or she meets the requirements of 37 C.F.R. §11.14(a), (c), and (f). See TMEP §609.01(a) regarding correspondence in §66(a) applications, and TMEP §§611–611.06(h) regarding signature on documents filed in the USPTO.