1612.02 Representation Based on Domicile of Mark Owner
Mark owner initially unrepresented in post registration filings unless a qualified U.S. attorney is recognized in the filing or is appointed in a separate document. Recognition of a qualified U.S. attorney in a pending application ends when the mark registers. 37 C.F.R. §2.17(g)(1); TMEP §604.03. In addition, recognition of a qualified U.S. attorney established in connection with a §8, §12(c), §15, or §71 affidavit or declaration, §9 renewal application, or §7 request ends upon acceptance or final rejection of the filing. 37 C.F.R. §2.17(g)(2); TMEP §604.03. Accordingly, an owner that is making any of these post-registration submissions is considered unrepresented unless a qualified U.S. attorney (1) is identified in and/or signs the submission or (2) is appointed in a separate power of attorney that is signed by the owner and is filed post registration and, when applicable, following the acceptance of a previous maintenance filing. 37 C.F.R. §2.17(b); TMEP §604.01.
Unrepresented non-U.S. domiciled owners must be represented by a qualified U.S. attorney in all post registration filings. An owner whose domicile is not located within the United States or its territories must be represented before the USPTO by 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 (a qualified U.S. attorney). 37 C.F.R. §2.11(a); TMEP §601.
Determining whether owner has non-U.S. domicile. The Post Registration staff must determine whether the owner’s domicile address is outside the United States and its territories. To do this, Post Registration staff must follow the procedures in TMEP §§601-601.01(b)(1).
Issuing an Office action requiring clarification of domicile and requiring a qualified U.S. attorney to represent mark owner with domicile that is or may be outside the United States and its territories. If the owner’s domicile address is or may be outside of the United States and its territories, the Post Registration staff will follow the procedures in TMEP §§601-601.01(b)(1) and issue an Office action requiring clarification of the owner’s domicile and requiring the owner to have a qualified U.S. attorney.
If in a previous Office action the owner was required to be represented by a qualified U.S. attorney and their response was not filed by, nor are they represented by, such an attorney, then the Post Registration staff should issue a second action on all previously raised issues, including the requirement for a qualified U.S. attorney. See TMEP §601.01(a) and (b) regarding when a registrant is required to have U.S. counsel.
Required attorney identification information. See TMEP §1612(c) for more information.
See generally TMEP §§602-602.03(c) regarding persons authorized to practice before the USPTO in trademark matters, including §602.03(a) regarding Canadian trademark attorneys and agents. See also TMEP §604 regarding recognition as a representative and §605.04 regarding powers of attorney filed after registration.