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(c)) 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 or submit amendments, responses to Office actions, petitions to the Director under 37 C.F.R. §2.146  or §2.147, requests to change the correspondence address, assignments, 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 37 C.F.R. §11.5(b)(2), 11.14. See TMEP §§611.03–611.03(i) regarding signature of documents filed in the USPTO. Requesting an amendment to an application and submitting legal arguments in response to a refusal are examples of representation of the applicant or registrant. See 37 C.F.R. §11.5(b)(2); TMEP §611.03(b). However, a non-attorney employee of a qualified U.S. attorney may work under the supervision of the attorney to prepare documents for review and signature by and assist the attorney in trademark matters before the USPTO. 37 C.F.R. §11.5(b).

See TMEP §602.03 regarding foreign attorneys and agents in general and §602.03(a) regarding Canadian attorneys and agents who are not authorized to practice before the USPTO except in limited circumstances.

When an applicant or registrant is represented by a qualified U.S. attorney, the USPTO will communicate only with the appointed attorney. 37 C.F.R. §2.18(a)(2). Although paralegals and legal assistants may relay information between the examining attorney and the appointed attorney, they are not authorized to conduct business before the USPTO.  For example, paralegals and legal assistants cannot authorize examiner’s amendments or priority actions, even if only conveying the recognized attorney’s approval by indicating that the recognized attorney has approved the amendment or action.

Once the USPTO recognizes a qualified U.S. attorney as representing an applicant or registrant, a new qualified U.S. attorney 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 U.S. attorney; (3) recognition of the previously recognized attorney has been deemed to end pursuant to 37 C.F.R. §2.17(g); or (4) the previously recognized attorney withdraws or has been suspended or excluded from practicing before the USPTO in trademark matters. . 37 C.F.R. §§2.18(a)(2), 11.15.

An individual who is not authorized under 37 C.F.R. §11.14  may receive correspondence and transmit it to the applicant or registrant.  Such an individual may also sign a verification in an application- or registration-related filing, 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 an attorney or non-attorney, 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 Office of the Deputy Commissioner for Trademark Examination Policy.

See TMEP §§611–611.06(h) regarding signature of documents filed in the USPTO.