- Trademark Manual of Examining Procedure
- Chapter 600

# Chapter 600 Attorney, Representative, Correspondence, and Signature

Attorney, Representative, Correspondence, and Signature

NOTE: This chapter sets forth the procedures for recognition of representatives, signature of documents, and establishing and maintaining the correspondence address in pending applications for registration, and documents filed with the Post Registration Section of the United States Patent and Trademark Office (USPTO). For a statement of practice concerning representation of others, signature of documents, and establishing and maintaining the correspondence address in proceedings before the Trademark Trial and Appeal Board (Board), parties should refer to the Trademark Trial and Appeal Board Manual of Procedure (TBMP), Chapter 100, which is available on the USPTO website, or contact the Board at (571) 272-8500.

# 601 Requirement for Representation Based on Domicile of Mark Owner

#### 37 C.F.R. Requirement for representation.

(a) An applicant, registrant, or party to a proceeding whose domicile is not located within the United States or its territories 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 Office cannot aid in the selection of an attorney.

An applicant’s or registrant’s domicile will determine whether the applicant or registrant is required to 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 or the District of Columbia (a “qualified U.S. attorney”). 37 C.F.R. §§2.11(a) , 11.1 , 11.14(e) ; see TMEP §602 .

An applicant or registrant whose domicile is not located within the United States or its territories must be represented by a qualified U.S. attorney. 37 C.F.R §2.11(a) .

An applicant or registrant whose domicile is located within the United States or its territories may represent himself or herself in prosecuting an application or maintaining a registration or may be represented by a qualified U.S. attorney. 37 C.F.R §§11.1 , 11.14(e) .

In the case of joint owners, if any single owner of the application or registration is domiciled in the United States, the applicants or registrants are not required to appoint a qualified U.S. attorney unless the U.S. address appears to be incorrect.

The USPTO cannot aid an applicant or registrant in selecting a qualified attorney. 37 C.F.R §2.11(a) . To find the names of attorneys who are licensed to practice law in the U.S. and handle trademark matters, consult telephone listings or the internet, or contact the attorney referral service of a U.S. state or local bar association (see the American Bar Association’s Consumers’ Guide to Legal Help). For more information about selecting a U.S.-licensed trademark attorney, see the USPTO website.

# 601.01 Determining an Owner’s Domicile

For a natural person, domicile is the permanent legal place of residence, which is the place the person resides and intends to be his/her principal home. 37 C.F.R §2.2(o) .

For a juristic entity, domicile is the principal place of business, which is the entity’s headquarters where its senior executives or officers ordinarily direct and control the entity’s activities and is usually the center from where other locations are controlled. 37 C.F.R §2.2(o)-(p) .

Determining whether an applicant’s or registrant’s domicile is within or outside the United States is based on the applicant’s or registrant’s street address.

In most cases, a post-office box, a “care of” (c/o) address, address provided by a mail forwarding service, or other similar variation cannot be a domicile address because it does not identify the location of the place the person resides and intends to be the person’s principal home (for a natural person) or the location of a juristic entity’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities (for a juristic entity). TMEP §601.01(b)(1) . When necessary, the USPTO may require an applicant or registrant to furnish information or documentation to support an applicant’s or registrant’s domicile address. See 37 C.F.R §2.11(b) .

# 601.01(a) Owners with a Non-U.S. Domicile

Examination and post-registration. If a submission lists a foreign address (i.e., any street address that is located outside of the United States and its territories) as the applicant’s or registrant’s domicile, and the applicant or registrant is not represented by a qualified U.S. attorney, the examining attorney or post-registration specialist will issue an Office action that requires the applicant or registrant to appoint a qualified U.S. attorney as its representative and to provide that attorney’s bar information. The Office action will also include any other applicable refusals and/or requirements.

Section 66(a) applications. The requirement for a foreign-domiciled applicant to appoint a qualified U.S. attorney is not a filing-date requirement for an initial §66(a) application because these are transmitted to the USPTO by the International Bureau (IB) and generally do not include an appointment of an attorney authorized to practice before the USPTO. If an Office action must issue for other refusals and/or requirements, the examining attorney will require the applicant to appoint a qualified U.S. attorney as its representative and to provide that attorney’s bar information. See TMEP §601.01(a) regarding applicants with a non-U.S. domicile and §714.05 regarding the deadline within which all refusals and/or requirements must be notified to the IB. If, however, a §66(a) application is otherwise in condition for approval for publication upon first action, the examining attorney may approve the application for publication and should not require the applicant to appoint an attorney authorized to practice before the USPTO or to provide an email address. See TMEP §803.05(b) regarding applicant’s email address as a required element of an application.

If the applicant responds, but does not appoint a qualified U.S. attorney, the examining attorney will issue a final action as to the requirement to appoint such an attorney and all other unresolved refusals and/or requirements, if the file is otherwise in condition for a final action. If the registrant responds in a post-registration matter, but does not appoint a qualified U.S. attorney, the post- registration specialist will issue a second action maintaining the requirement to appoint such an attorney and maintaining all prior unresolved refusals and/or requirements.

If the applicant or registrant responds by appointing a qualified U.S. attorney, the examining attorney or post-registration specialist will withdraw the requirement to appoint such an attorney. If the applicant or registrant responds by amending to a U.S. street address, but does not appoint a qualified U.S. attorney, the USPTO will follow the procedures in TMEP §606.01(b) . If the applicant or registrant responds by amending its domicile address to a U.S. post-office box, “care of” (c/o) address, address provided by a mail forwarding service, or other similar variation, the USPTO will follow the procedures in TMEP §601.01(b)(1) .

If the examining attorney or post-registration specialist issues an Office action that (1) maintains only a requirement to appoint a qualified U.S. attorney and/or for additional information under 37 C.F.R §2.11(a) , (b) , and/or (c) , or (2) maintains only the requirement for the TEAS Plus processing fee under 37 C.F.R §2.22(c) in addition to one or all of the requirements under 37 C.F.R §2.11(a) , (b) , and/or (c) , an applicant or registrant may only seek review of the requirement(s) by filing a petition to the Director under 37 C.F.R §2.146 . 37 C.F.R §§2.11(f) , 2.165 , 2.186 , 7.40 .

Further, if it is clear that the applicant or registrant is foreign-domiciled and has not appointed a qualified U.S. attorney to represent it, then amendments to the application or registration are not authorized and may not be entered. If it is not clear whether the applicant or registrant is foreign-domiciled, and the examining attorney or post-registration specialist must issue the requirements regarding domicile and to appoint a qualified U.S. attorney, then amendments to the application or registration are not authorized and may not be entered until the applicant or registrant establishes that its domicile is in the United States. For example, the examining attorney may not contact an applicant to authorize an examiner’s amendment or to issue a priority action in this situation.

Petitions, requests for reinstatement, and post-publication amendments . If the USPTO receives a petition to the Director, a request for reinstatement, or a post-publication amendment filed by a foreign domiciliary, an attorney or paralegal in the Office of the Deputy Commissioner for Trademark Examination Policy will notify the filer that appointment of a qualified U.S. attorney is required and of any other deficiencies. The applicant or registrant will be granted 60 days to appoint a qualified U.S. attorney and to supplement the petition or request for reinstatement, as appropriate. If the applicant or registrant does not appoint a qualified U.S. attorney and submit any additional necessary information within the time allowed, the petition or request for reinstatement will be denied or the amendment will not be entered. Filing a petition does not extend the time for responding to an outstanding Office action or other statutory deadline.

TTAB proceedings. The TTAB will suspend proceedings when requiring a foreign-domiciled party to appoint a qualified U.S. attorney to represent it and inform the party of the time frame within which it must appoint such an attorney. TBMP §114.01 .

# 601.01(b) Owners with a U.S. Domicile

If a U.S. address (i.e., any street address that is located within the United States and its territories) is listed as the applicant’s or registrant’s domicile in any submission, an applicant or registrant may, but generally need not, appoint a qualified U.S. attorney as its representative.

Under some circumstances, the USPTO will require the applicant or registrant to provide documentation to support its U.S. address. See 37 C.F.R §§2.11(b) , 2.61(b) , 2.189 . For example, if the address appears incorrect, the examining attorney or post-registration specialist will issue an Office action requiring the applicant or registrant to provide documentation, such as that listed within this section, to support the specified address. If the applicant or registrant is a foreign citizen or entity with a U.S. street address, and is not represented by a qualified U.S. attorney, the examining attorney or post- registration specialist will issue an Office action requiring the applicant or registrant to either appoint a qualified U.S. attorney or provide documentation supporting the specified U.S. street address. In such cases, the Office action will also include all other applicable refusals and/or requirements. If the applicant or registrant responds by appointing a qualified U.S. attorney, the examining attorney or post-registration specialist will withdraw the requirement for documentation supporting the U.S. street address, unless the U.S. street address appears to be incorrect. The requirement will be reissued if the qualified U.S. attorney withdraws or is subsequently revoked.

An applicant or registrant who provides acceptable documentation supporting its U.S. address is not required to appoint a qualified U.S. attorney.

If the applicant responds but does not appoint a qualified U.S. attorney or provide the information necessary to support its U.S. street address, the examining attorney will issue a final action as to the requirements regarding domicile, to appoint a qualified U.S. attorney, and all other unresolved refusals and/or requirements, if the application is otherwise in condition for final action. If the registrant responds in a post-registration matter but does not appoint a qualified U.S. attorney or provide the information necessary to support its U.S. street address, the post-registration specialist will issue a second action maintaining the requirements regarding domicile, to appoint a qualified U.S. attorney, and all other unresolved refusals and/or requirements.

Examples of documents that can support a U.S. street address include the following:

- (a) For an individual, documentation showing the name and listed address of the individual, such as one of the following:
  - (i) a current, valid signed rental, lease, or mortgage agreement;
  - (ii) a current, valid homeowner’s, renter’s, or motor vehicle insurance policy; or
  - (iii) a computer-generated bill issued by a utility company dated no earlier than 60 days before the application or post-registration document filing date.
- (b) For a juristic entity, documentation showing that the address is the applicant’s or registrant’s business headquarters, such as one of the following:
  - (i) the most recent final annual or quarterly report or other similar report; or
  - (ii) a current, valid signed rental, lease, or mortgage agreement for office space.

# 601.01(b)(1) Post-office Box, “Care of” (c/o) Address, Address Provided by a Mail Forwarding Service, or Other Similar Variation

The USPTO allows applicants and registrants to provide a mailing address for the owner that is different from its domicile address. A post-office box, “care of” (c/o) address, address provided by a mail forwarding service, or other similar variation can be a mailing address, but in most cases cannot be a domicile address because such address usually does not identify the location of the place the person resides and intends to be the person’s principal home (for a natural person) or the location of a juristic entity’s headquarters where its senior executives or officers ordinarily direct and control the entity’s activities and tends to be the center from where other locations are controlled (for a juristic entity).

For example, a mail forwarding service is a private service that provides an address where mail can be sent to before being forwarded to a second address. If an applicant or registrant lists such an address as its domicile, or fails to provide a street address entirely, the applicant or registrant will be required to provide a street address. Alternatively, an applicant may demonstrate that the listed address is, in fact, its domicile.

If an applicant lists as its domicile address a post-office box, “care of” address, address provided by a mail forwarding service, or other similar variation, even if the address is hidden ( see TMEP §601.01(d) ), or no street address at all, the examining attorney or post registration specialist will require the applicant’s or registrant’s street address. See 37 C.F.R §2.32(a) .

If the applicant is an unrepresented U.S. citizen who specifies a post office box, “care of” address, mail forwarding, or non-street address as the owner address, the examining attorney may contact the applicant to obtain the applicant’s domicile address and may enter the address by examiner’s amendment, if otherwise appropriate. See TMEP §609.02(b) regarding the requirements for requesting to change the correspondence address.

If the applicant or registrant adds a non-U.S. street address as its domicile, the USPTO will follow the procedures in TMEP §601.01(a) . If the applicant or registrant adds a U.S. street address as its domicile, the USPTO will follow the procedures in TMEP §601.01(b) .

If the applicant does not amend the listed domicile to a street address, and fails to demonstrate that the listed address is its domicile, the examining attorney will issue a final action as to the requirements regarding domicile and all other unresolved refusals and/or requirements, if the application is otherwise in condition for final action. If the registrant does not amend the listed domicile to a street address, and fails to demonstrate that the listed address is its domicile, the post-registration specialist will issue a second action maintaining the requirements regarding domicile and all other unresolved refusals and/or requirements.

No requirement for a street address should be made to U.S. government entities or federally recognized American Indian and Alaska Native tribes with a U.S. post-office box address.

# 601.01(c) Domicile Address Must Be Kept Current

#### 37 C.F.R. Requirement to provide domicile address.

An applicant or registrant must provide and keep current the address of its domicile, as defined in § 2.2(o).

An applicant or registrant must provide and keep current its domicile address, as defined in TMEP §601.01 , and inform the USPTO of any changes to that address. An applicant or registrant can update its domicile address with the USPTO by using the Change Address or Representative TEAS form. See TMEP §601.01(d) regarding how an applicant or registrant can hide such an address from public view.

# 601.01(d) Hiding the Domicile Address

Most TEAS forms allow an applicant or registrant to specify the owner’s mailing address, which is publicly viewable, and a separate domicile address, which is masked or hidden from public view. If the applicant or registrant provides the same address as its mailing address and domicile address in those forms, the address will be viewable by the public. To hide the applicant’s or registrant’s domicile address from public view, the applicant or registrant must provide a mailing address that differs from its domicile address and enter the domicile address into the dedicated “Domicile Address” fields on the Owner Information page within most TEAS forms.

In an extraordinary situation, an individual applicant or registrant who does not have a mailing address that is different from its domicile address may also request a waiver of the requirement to make their address public by filing a Petition to the Director. See 37 C.F.R §2.146(a)(5) ; TMEP §1708 . In such cases, when filing the application, the applicant may enter “Petition” in the street address field of the TEAS form and separately file a petition to waive the requirement to make public their street address. If the petition is granted, the applicant must also provide an address where mail can be received. Filing a petition does not extend the time for responding to an outstanding Office action or other statutory deadline.

If an Office action is being issued that questions the validity of a domicile address that was hidden from public view, an examining attorney should not list the exact address in the Office action. However, if evidence is being attached to the Office action to support the inquiry, an examining attorney may attach evidence that identifies the address if necessary. Applicant may then later petition the USPTO to have that information redacted.

# 601.02 Communications with Applicant or Registrant Who Is Represented by an Attorney

#### 37 C.F.R.

If an attorney is recognized as a representative pursuant to § 2.17(b)(1), the Office will correspond only with that attorney. A request to change the correspondence address does not revoke a power of attorney. Except for service of a cancellation petition, the Office will not correspond directly with the applicant, registrant, or a party to a proceeding, or with another attorney from a different firm, unless:

- (i) The applicant or registrant files a revocation of the power of attorney under § 2.19(a) and/or a new power of attorney that meets the requirements of § 2.17(c);
- (ii) The attorney has been suspended or excluded from practicing in trademark matters before the USPTO; or
- (iii) Recognition of the attorney has ended pursuant to § 2.17(g).

If an applicant or registrant is represented by a qualified U.S. attorney, the USPTO will conduct business only with that attorney, unless that representation is terminated, a new power of attorney is properly filed, or until recognition ends. 37 C.F.R. §2.18(a)(2) . See TMEP §604.04 regarding duration of recognition, §606 regarding revocation of an attorney, and §607 regarding withdrawal of an attorney. See also TMEP §602.01 regarding communicating with an attorney from the same U.S. law firm as the appointed U.S. attorney.

If the applicant or registrant contacts the USPTO regarding the application or registration, he or she will be advised that the USPTO will only conduct business with the qualified U.S. attorney. USPTO employees may answer general questions about the application or registration record and the procedures for obtaining and maintaining a registration, and are encouraged to refer the applicant or registrant to publicly available information on the USPTO’s website. See TMEP §1805 regarding general inquiries from the public.

The USPTO will not accept responses or amendments authorized or signed by the applicant or registrant if there is a qualified U.S. attorney of record See 37 C.F.R. §2.18(a)(2) . See TMEP §§611–611.06(h) regarding signatures on documents filed in the USPTO. See TMEP §707.01 and §708.02 regarding individuals who can authorize examiner’s amendments and priority actions.

An applicant or registrant may revoke the authority of a qualified U.S. attorney to represent the applicant or registrant, or the attorney could withdraw from representing the applicant or registrant. 37 C.F.R. §2.19(a)(1) , (b) . However, in these circumstances, an applicant or registrant whose domicile is located outside the United States or its territories is required to be represented, and must appoint a new qualified U.S. attorney as its representative, with whom the USPTO will correspond. 37 C.F.R. §2.11(a) .

See TMEP §604.03 regarding changes of attorney and TBMP §§114–114.08 regarding representation of parties to proceedings before the Trademark Trial and Appeal Board.

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# 602 Persons Authorized to Practice Before USPTO in Trademark Matters

#### 37 C.F.R. 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. 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. 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. 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. 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. 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. If entered anywhere else in the TEAS forms, the attorney bar information will not be hidden. 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 issue an Office action notifying the applicant or registrant that the listed attorney does not appear to be a qualified practitioner. 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. An examining attorney or post-registration specialist may be instructed to remove the attorney identification information from the correspondence section of the Trademark database and enter the applicant’s or registrant’s address. 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. 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. 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. 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. 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. 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.

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# 603 Standards of Conduct

#### 37 C.F.R.

Refusal to recognize a practitioner. Any practitioner authorized to appear before the Office may be suspended, excluded, or reprimanded in accordance with the provisions of this Part. Any practitioner who is suspended or excluded under this Part shall not be entitled to practice before the Office in patent, trademark, or other non-patent matters while suspended or excluded.

Part 11 of Title 37 of the Code of Federal Regulations pertains to representation of others before the USPTO. Part 11 identifies and defines individuals entitled to practice before the USPTO, sets forth a procedure for investigations and disciplinary proceedings, and establishes rules of professional conduct and responsibility.

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# 604 Recognition as a Representative

# 604.01 Three Ways to Be Recognized as a Representative

#### 37 C.F.R.

- (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 and prior to response, a qualified U.S. attorney may be recognized by the USPTO by submitting a signed document or being identified as the representative in a document submitted on behalf of an applicant or registrant who is not already represented by a qualified U.S. attorney. See 37 C.F.R. §2.17(b)(1)(ii) - (iii) , (b)(2) .

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.

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.

# 604.02 Attorney Bar Information Required

#### 37 C.F.R.

(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.

A qualified U.S. attorney will be required to provide his or her bar information to represent an applicant or registrant at the USPTO. 37 C.F.R. §2.17(b)(3) .

See TMEP §602.01(a) for more information regarding attorney bar information in addition to other attorney identification information.

# 604.03 Duration of Recognition

#### 37 C.F.R. Duration of recognition.

- (1) The Office considers recognition as to a pending application to end when the mark registers, when ownership changes, or when the application is abandoned.
- (2) The Office considers recognition obtained after registration to end when the mark is cancelled or expired, or when ownership changes. If a practitioner was recognized as the representative in connection with an affidavit under section 8, 12(c), 15, or 71 of the Act, renewal application under section 9 of the Act, or request for amendment or correction under section 7 of the Act, recognition is deemed to end upon acceptance or final rejection of the filing.

Pending Applications. For purposes of recognition as a representative, the USPTO considers recognition as a qualified U.S. attorney in a pending application to end when the mark is registered, when ownership changes, or when the application is abandoned. 37 C.F.R. §2.17(g)(1) .

Post Registration. For purposes of recognition as a representative by the Post Registration Section of the Office, the USPTO considers recognition established in connection with an affidavit under 15 U.S.C. §1058 , §1062(c) , §1065 , or §1141k (affidavit under §8, §12(c), §15, or §71), a renewal application under 15 U.S.C. §1059 (§9 renewal application), or a request for amendment or correction under 15 U.S.C. §1057 (§7 request) to end upon acceptance or final rejection of the filing. 37 C.F.R. §2.17(g)(2) .

Due to the length of time that may elapse between the filing of these documents (which could be 10 years or more), the USPTO will recognize a qualified U.S. attorney who signs or is identified as the registrant's attorney in one of these documents even absent a new power of attorney and/or revocation of a previous power.

Example 1: A qualified U.S. attorney (Attorney A) signs or is identified as the registrant’s attorney in an affidavit under §8, and the USPTO issues an Office action in connection with the affidavit. If another qualified U.S. attorney from a different firm (Attorney B) wants to respond to the Office action, Attorney B must file a new power of attorney and/or revocation of the previous power, signed by the registrant or someone with legal authority to bind the registrant (e.g., a corporate officer or general partner of a partnership), before the USPTO will act on the response or correspond with Attorney B.

Example 2: A qualified U.S. attorney (Attorney A) signs or is identified as the registrant’s attorney in an affidavit under §8, and the USPTO accepts the affidavit. If another qualified U.S. attorney from a different firm (Attorney B) later files a §7 request, the USPTO will recognize and correspond with Attorney B regardless of whether a new power of attorney and/or revocation of the previous power is filed.

Example 3: A qualified U.S. attorney (Attorney A) signs or is identified as the registrant’s attorney in an affidavit under §8, and the USPTO issues an Office action in connection with the affidavit. If another qualified U.S. attorney from a different firm (Attorney B) wants to file a §7 request before the USPTO accepts or issues a final rejection of the §8 affidavit, Attorney B must file a new power of attorney and/or revocation of the previous power, signed by the registrant or someone with legal authority to bind the registrant (e.g., a corporate officer or general partner of a partnership), before the USPTO will act on the §7 request or correspond with Attorney B.

The USPTO also considers recognition of a qualified U.S. attorney to end when the registration is cancelled or expired, or when ownership changes. 37 C.F.R. §2.17(g)(2) . See TMEP §605.04 regarding powers of attorney filed after registration.

Change of Ownership. For purposes of recognition as a representative, the USPTO considers recognition of an attorney in connection with an application or registration to end when ownership changes. 37 C.F.R. §2.17(g) . After a change in ownership has been recorded, if a new qualified U.S. attorney appears or signs a document on behalf of the new owner, the USPTO will communicate and conduct business with that attorney even absent a new power of attorney and/or revocation of the previous power. 37 C.F.R. §2.17(b)(1)(ii) - (iii) . If the previously recognized U.S. attorney appears on behalf of the new owner (which might occur when the new owner is a related company), the USPTO will continue to conduct business and correspond with that attorney. The previously recognized U.S. attorney does not have to file a new power of attorney and/or revocation of the previous power signed by the new owner. See TMEP §609.02(f) regarding correspondence after recordation of a change of ownership.

Effect on Attorney and Correspondence Information in USPTO Records. In the situations discussed above, when the USPTO deems recognition of a representative has ended, the USPTO will not automatically change the attorney and correspondence address in the Trademark database, because it is possible that the previously recognized U.S. attorney still represents the applicant or registrant and wants to continue receiving correspondence. The USPTO will continue to recognize the previously recognized U.S. attorney if he or she appears or signs a document on behalf of the applicant or registrant. 37 C.F.R. §2.17(b)(1)(ii)-(iii) . However, if a new qualified U.S. attorney appears or signs a document, the USPTO will recognize the new attorney pursuant to 37 C.F.R. §2.17(b)(1)(ii)-(iii) , and correspond with him or her without requiring a new power of attorney and/or revocation of the previous power. See TMEP §§609.02–609.02(f) regarding changes of correspondence address.

Board Proceedings. See TBMP §§114–114.08 regarding representation of parties to Board proceedings, and TBMP §§117–117.02 regarding correspondence in Board proceedings.

# 604.04 Change of Attorney

Once the USPTO recognizes a qualified U.S. attorney as the representative of 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 U.S. attorney has been deemed to end pursuant to 37 C.F.R. §2.17(g) ; or
- (4) the previously recognized U.S. attorney withdraws or has been suspended or excluded from practicing in trademark matters before the USPTO.

37 C.F.R. §2.18(a)(2) , 11.15 . Until such action is taken, the new qualified U.S. attorney cannot sign responses to Office actions, authorize issuance of examiner’s amendments or priority actions, expressly abandon an application, authorize a change of correspondence address, or otherwise represent the applicant or registrant. See 37 C.F.R. §2.17(a) .

If an applicant or registrant is already represented by a qualified U.S. attorney, and a new qualified U.S. attorney from a different firm wishes to take action with respect to the application or registration, the new attorney must file a revocation of the previous power of attorney and/or a new power of attorney naming the new qualified U.S. 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), before the USPTO will accept filings by or correspond with the new attorney. See 37 C.F.R. §2.18(a)(2) . The new attorney may not sign the revocation of the previous power. See 37 C.F.R. §2.17(c) and TMEP §605.01 regarding requirements for power of attorney, §606 regarding revocation of power of attorney, and §607 regarding withdrawal of attorney of record

Absent a revocation and/or new power, if the new qualified U.S. attorney signs a response, amendment, or request to change the correspondence address, the USPTO will treat this as a document filed by an improper party and follow the procedures in TMEP §§611.05–611.05(c) .

See TMEP §604.03 regarding duration of recognition of an attorney or registrant.

See TBMP §§114–114.08 regarding representation of parties to Board proceedings, and TBMP §§117–117.02 regarding correspondence in Board proceedings.

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# 605 Powers of Attorney

# 605.01 Requirements for Power of Attorney

#### 37 C.F.R. Requirements for power of attorney.

A power of attorney must:

- (1) Designate by name at least one practitioner meeting the requirements of §11.14 of this chapter; and
- (2) Be signed by the individual applicant, registrant, or party to a proceeding pending before the Office, or by someone with legal authority to bind the applicant, registrant, or party (e.g., a corporate officer or general partner of a partnership). In the case of joint applicants or joint registrants, all must sign. Once the applicant, registrant, or party has designated a practitioner(s) qualified to practice under §11.14 of this chapter, that practitioner may sign an associate power of attorney appointing another qualified practitioner(s) as an additional person(s) authorized to represent the applicant, registrant, or party. If the applicant, registrant, or party revokes the original power of attorney (§2.19(a)), the revocation discharges any associate power signed by the practitioner whose power has been revoked. If the practitioner who signed an associate power withdraws (§2.19(b)), the withdrawal discharges any associate power signed by the withdrawing practitioner upon acceptance of the request for withdrawal by the Office.

A power of attorney must: (1) designate by name at least one individual qualified U.S. attorney; and (2) be 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). In the case of joint applicants or registrants, all must sign. 37 C.F.R. §§2.17(c) , 2.193(e)(3) . See TMEP §611.01(c) regarding signature of documents transmitted electronically.

A qualified U.S. attorney is not permitted to sign an original power of attorney on behalf of his or her client. An original power of attorney, other than one associating an additional attorney with an already recognized attorney ( see TMEP §605.03 ), must be 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). 37 C.F.R. §2.17(c)(2) .

The filing of a power of attorney is not mandatory in a trademark case. The USPTO will not require a separately signed power of attorney to recognize a qualified U.S. attorney as the applicant’s or registrant’s representative if an attorney signs a document or is identified as a representative in a document submitted to the USPTO on behalf of an otherwise unrepresented applicant or registrant. See 37 C.F.R. §2.17(b)(2) . The USPTO may require additional information or proof of the attorney’s authority or competence to represent the applicant or registrant before the USPTO. 37 C.F.R. §2.17(b)(2)-(3) .

See TMEP §604.01 regarding the three ways a qualified U.S. attorney may be recognized as a representative, §609.01 regarding establishment of the correspondence address in a new application, and §609.02(a) regarding the limited situations in which the USPTO will change the correspondence address to that of a qualified U.S. attorney absent a written request to change the correspondence address.

However, if an applicant or registrant is already represented by a qualified U.S. attorney, and a new qualified U.S. attorney wishes to take action with respect to the application or registration, the new qualified U.S. attorney must file a new power of attorney and/or revocation of the previous power, 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), before the USPTO will accept filings by or correspond with the new qualified U.S. attorney. 37 C.F.R. §2.18(a)(2)(i) . See TMEP §604.04 regarding change of attorney, §606 regarding revocation of power of attorney, and §611.06 regarding persons with legal authority to bind juristic entities.

If two or more qualified U.S. attorneys are named in a power of attorney and one attorney changes firms, any of the named attorneys can sign and submit a request to change the correspondence address to set forth a new address, even if the new address is at a new firm. It is not necessary to submit a new power signed by the applicant or registrant when a named attorney changes firms. See TMEP §§609.02–609.02(f) regarding changes of correspondence address.

# 605.02 Power of Attorney Relating to More than One Application or Registration

#### 37 C.F.R. Power of attorney relating to multiple applications or registrations.

The owner of an application or registration may appoint a practitioner(s) qualified to practice under §11.14 of this chapter to represent the owner for all existing applications or registrations that have the identical owner name.

An applicant or registrant may appoint a qualified U.S. attorney to represent the owner for all existing applications or registrations that have the identical owner and qualified attorney. 37 C.F.R. §2.17(d) .

# 605.03 Associate Powers of Attorney

#### 37 C.F.R.

Once the applicant, registrant, or party has designated a practitioner(s) qualified to practice under §11.14 of this chapter, that practitioner may sign an associate power of attorney appointing another qualified practitioner(s) as an additional person(s) authorized to represent the applicant, registrant, or party. If the applicant, registrant, or party revokes the original power of attorney (§2.19(a)), the revocation discharges any associate power signed by the practitioner whose power has been revoked. If the practitioner who signed an associate power withdraws (§2.19(b)), the withdrawal discharges any associate power signed by the withdrawing practitioner upon acceptance of the request for withdrawal by the Office.

#### 37 C.F.R. Proper person to sign

Documents filed in connection with a trademark application or registration must be signed as specified in paragraphs (e)(1) through (9) of this section:

***

- (3) Powers of attorney and revocations of powers of attorney. Powers of attorney and revocations of powers of attorney must be signed by the individual applicant, registrant or party to a proceeding pending before the Office, or by someone with legal authority to bind the applicant, registrant, or party (e.g., a corporate officer or general partner of a partnership). In the case of joint applicants, registrants, or parties, all must sign. Once the applicant, registrant or party has designated a qualified practitioner(s), the named practitioner may sign an associate power of attorney appointing another qualified practitioner(s) as an additional person(s) authorized to prosecute the application or registration. If the applicant, registrant, or party revokes the original power of attorney, the revocation discharges any associate power signed by the practitioner whose power has been revoked. If the practitioner who signed an associate power withdraws, the withdrawal discharges any associate power signed by the withdrawing practitioner upon acceptance of the request for withdrawal by the Office.

Once the applicant or registrant has designated a qualified U.S. attorney, the attorney may sign an associate power of attorney, appointing another qualified attorney -- including one from a different law firm -- as an additional person authorized to represent the applicant or registrant. Note, however, that appointment of an associate attorney from a different law firm does not change the correspondence address from that of the attorney designated by the applicant or registrant. See 37 C.F.R. §2.18(a)(2) ; TMEP §§609 , 609.01-609.02(b) .

If the applicant or registrant revokes the original power of attorney, the revocation also discharges any associate power signed by the attorney whose power has been revoked. 37 C.F.R. §2.17(c)(2) .

If the attorney who signed an associate power withdraws, the withdrawal discharges any associate power signed by the withdrawing attorney upon acceptance of the request for withdrawal by the USPTO. 37 C.F.R. §2.17(c)(2) .

# 605.04 Power of Attorney Filed After Registration

For purposes of recognition as a representative, the USPTO considers recognition as to a pending application to end with registration, when the application is abandoned, or when ownership changes. 37 C.F.R. §2.17(g)(1) . If recognition is established in connection with an affidavit under §8, §12(c), §15, or §71, a §9 renewal application, or a §7 request, the recognition is deemed to end upon acceptance or final rejection of the filing. 37 C.F.R. §2.17(g)(2) . TMEP §604.03 .

See also TMEP §1612 regarding powers of attorney filed after registration, and §609.02(e) regarding changing the correspondence address after registration.

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# 606 Revocation of Power of Attorney

#### 37 C.F.R. Revocation.

- (1) Authority to represent an applicant, registrant or party to a proceeding before the Office may be revoked at any stage in the proceedings of a trademark case, upon written notification 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). In the case of joint applicants or joint registrants, all must sign.
- (2) When a power of attorney is revoked, the Office will communicate directly with the applicant, registrant, or party to the proceeding, or with the new attorney or domestic representative if appropriate.
- (3) A request to change the correspondence address does not revoke a power of attorney.
- (4) A new power of attorney that meets the requirements of §2.17(c) will be treated as a revocation of the previous power.

Once a qualified U.S. attorney has been recognized as the representative of an applicant or registrant, the applicant or registrant may revoke the power of attorney by filing a written revocation.

Signature. The revocation must be personally signed by the individual applicant or registrant or by someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership). In the case of joint applicants or registrants, all must sign. 37 C.F.R §§2.19(a)(1) , 2.193(e)(3) . In-house counsel may only sign a revocation if he or she also has legal authority to bind the juristic applicant or registrant (e.g., the in-house counsel is a corporate officer or general partner of a partnership).

In addition, the current attorney of record may not sign a revocation of power of attorney, revoking his or her own authority to represent the applicant or registrant. Instead, the attorney may sign and file a request to withdraw as attorney of record ( see TMEP §607 ), or file a revocation signed by the applicant or registrant or by someone with legal authority to bind a juristic applicant or registrant.

A new qualified U.S. attorney generally cannot sign a revocation of the previous power of attorney, unless the new attorney is also someone with legal authority to bind the juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership). A new qualified U.S. attorney may submit a revocation and/or new appointment of power of attorney personally signed by the applicant or registrant through TEAS. See TMEP §611.01(c) regarding electronic signatures. A new qualified U.S. attorney may not sign the revocation form. 37 C.F.R §2.19(a)(1) .

Effect on Correspondence Address. If the applicant or registrant files a new power of attorney with the revocation of the previous power of attorney, the address in the new power of attorney becomes the correspondence address of record. If the applicant or registrant files a revocation without a new power of attorney, correspondence will then be sent directly to the applicant or registrant. See TMEP §§609.02 , 609.02(a) .

New Power Treated as Revocation. If the applicant or registrant files a new power of attorney naming a new qualified U.S. attorney as its representative, this will be treated as a revocation of any previous power of attorney, even if the applicant or registrant does not specifically revoke the previous power. 37 C.F.R. §2.19(a)(4) . The appointment also revokes recognition of any previously recognized associate power of attorney. 37 C.F.R. §2.17(c)(2) .

Processing Revocations Filed After Registration. For purposes of recognition as a representative, the USPTO considers recognition of a qualified U.S. attorney in a pending application to end with registration. 37 C.F.R. §2.17(g)(1) . If the recognition is established in connection with an affidavit under §8, §12(c), §15, or §71, a §9 renewal application, or a §7 request, the recognition is deemed to end upon acceptance or final rejection of the filing. 37 C.F.R. §2.17(g)(2) ; TMEP §604.03 .

Board Proceedings. See TBMP §116.01 regarding revocation of authority to represent parties to Board proceedings.

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# 607 Withdrawal of Attorney of Record

#### 37 C.F.R. Revocation or withdrawal of attorney.

* * * * *

(b) Withdrawal of attorney. If the requirements of § 11.116 of this chapter are met, a practitioner authorized to represent an applicant, registrant, or party to a proceeding in a trademark case may withdraw upon application to and approval by the Director or, when applicable, upon motion granted by the Trademark Trial and Appeal Board. The practitioner should file the request to withdraw soon after the practitioner notifies the client of his/her intent to withdraw. The request must include the following:

- (1) The application serial number, registration number, or proceeding number;
- (2) A statement of the reason(s) for the request to withdraw; and
- (3) Either
  - (i) A statement that the practitioner has given notice to the client that the practitioner is withdrawing from employment and will be filing the necessary documents with the Office; that the client was given notice of the withdrawal at least two months before the expiration of the response period, if applicable; that the practitioner has delivered to the client all documents and property in the practitioner’s file concerning the application, registration or proceeding to which the client is entitled; and that the practitioner has notified the client of any responses that may be due, and of the deadline for response; or
  - (ii) If more than one qualified practitioner is of record, a statement that representation by co counsel is ongoing.

#### 37 C.F.R. Declining or terminating representation.

(a) Except as stated in paragraph (c) of this section, a practitioner shall not represent a client, or where representation has commenced, shall withdraw from the representation of a client if:

- (1) The representation will result in violation of the USPTO Rules of Professional Conduct or other law;
- (2) The practitioner’s physical or mental condition materially impairs the practitioner’s ability to represent the client; or
- (3) The practitioner is discharged.

(b) Except as stated in paragraph (c) of this section, a practitioner may withdraw from representing a client if:

- (1) Withdrawal can be accomplished without material adverse effect on the interests of the client;
- (2) The client persists in a course of action involving the practitioner’s services that the practitioner reasonably believes is criminal or fraudulent;
- (3) The client has used the practitioner’s services to perpetrate a crime or fraud;
- (4) A client insists upon taking action that the practitioner considers repugnant or with which the practitioner has a fundamental disagreement;
- (5) The client fails substantially to fulfill an obligation to the practitioner regarding the practitioner’s services and has been given reasonable warning that the practitioner will withdraw unless the obligation is fulfilled;
- (6) The representation will result in an unreasonable financial burden on the practitioner or has been rendered unreasonably difficult by the client; or
- (7) Other good cause for withdrawal exists.

(c) A practitioner must comply with applicable law requiring notice to or permission of a tribunal when terminating a representation. When ordered to do so by a tribunal, a practitioner shall continue representation notwithstanding good cause for terminating the representation.

(d) Upon termination of representation, a practitioner shall take steps to the extent reasonably practicable to protect a client’s interests, such as giving reasonable notice to the client, allowing time for employment of other counsel, surrendering papers and property to which the client is entitled and refunding any advance payment of fee or expense that has not been earned or incurred. The practitioner may retain papers relating to the client to the extent permitted by other law.

An attorney may permissively withdraw from representation for reasons noted in 37 C.F.R. §11.116(b) , such as where the client insists upon taking action with which the practitioner has a fundamental disagreement or the representation will result in an unreasonable financial burden on the practitioner.

An attorney is required to withdraw from representation for reasons noted in 37 C.F.R. §11.116(a) , such as where the representation violates the USPTO Rules of Professional Conduct or other law or the practitioner is discharged by the applicant or registrant.

The requirements for withdrawing as an attorney are set forth in 37 C.F.R. §11.116 . To withdraw from representation in trademark matters, the attorney must comply with the permission and notification requirements set forth in Trademark Rule 2.19(b), 37 C.F.R. §2.19(b) . See 37 C.F.R. §11.116(c) (stating that the “practitioner must comply with applicable law requiring notice to or permission of a tribunal when terminating a representation”); see also 37 C.F.R. §11.1 (defining “tribunal” to include “the Office”). These requirements apply to all requests to withdraw, whether the withdrawal is mandatory or permissive. The USPTO also applies these requirements to a qualified U.S. attorney who was recognized by signing a document or being identified as the representative in a document submitted on behalf of a previously unrepresented applicant or registrant. See 37 C.F.R. §2.17(b)(1)(ii) - (iii) ; TMEP §604.01 .

May Not Prejudice Applicant or Registrant. A qualified U.S. attorney may not withdraw in a way that would prejudice the applicant or registrant. 37 C.F.R. §11.116(b)(1) ; In re Legendary, Inc., 26 USPQ2d 1478 (Comm’r Pats. 1992) (denying the attorney’s request to withdraw where the request was filed on the last day of the period for response to an Office action and attorney stated neither that the applicant was given due notice of the attorney’s withdrawal from employment, nor that the attorney had delivered all documents and property in his file concerning the prosecution of the application to the applicant).

TEAS form. Requests to withdraw must be filed using the TEAS Request for Withdrawal as Attorney of Record/Update of USPTO’s Database After Power of Attorney Ends form. The TEAS form incorporates the requirements listed below.

Requirements for Request. A request to withdraw must include the following:

- (1) A statement of the reason(s) for the request to withdraw;
- (2) The application serial number or registration number; and
- (3) Either of the following;
  - A statement that the attorney has given notice to the client that the attorney is withdrawing from employment and will be filing the necessary documents with the USPTO; that the client was given notice of the withdrawal, at least two months before the expiration of the response period, if applicable; that the attorney has delivered to the client all documents and property in the attorney’s file concerning the application or registration to which the client is entitled; and that the attorney has notified the client of any responses or other filings that may be due, and of the deadline for the response or filing ( see 37 C.F.R. §11.116(d) ). In re Slack , 54 USPQ2d 1504 (Comm’r Pats. 2000); or
  - If there is more than one qualified U.S. attorney of record, a statement that representation by co-counsel is ongoing.

37 C.F.R. §2.19(b) .

The requirement for a statement that the client was given notice of the withdrawal at least two months before the expiration of any outstanding response period does not apply where the attorney states that his or her representation was terminated by the applicant or registrant when less than two months remained in the response period.

The request to withdraw should be filed soon after the attorney notifies the applicant or registrant of his or her intent to withdraw. 37 C.F.R. §2.19(b) .

These requirements apply to all requests to withdraw, whether withdrawal is mandatory or permissive. The USPTO also applies these requirements where a qualified U.S. attorney was recognized by signing a document or being identified as the representative in a document submitted on behalf of a previously unrepresented applicant or registrant. See 37 C.F.R. §2.17(b)(1)(ii)-(iii) ; TMEP §604.01 .

Requests Filed After Registration. For purposes of recognition as a representative, the USPTO considers recognition to end with registration. 37 C.F.R. §2.17(g)(1) . If the recognition is established in connection with an affidavit under §8, §12(c), §15, or §71, a §9 renewal application, or a §7 request, the recognition is deemed to end upon acceptance or final rejection of the filing. 37 C.F.R. §2.17(g)(2) ; TMEP §604.03 . Accordingly, no request to withdraw is needed after recognition ends, but if one is filed and granted, it will be entered into the registration record.

Requests Filed in Abandoned Application. For purposes of recognition as a representative, the USPTO considers recognition as a qualified U.S. attorney in a pending application to end when the application is abandoned. 37 C.F.R. §2.17(g)(1) . Accordingly, no request to withdraw is needed, but if one is filed and granted, it will be entered into the application record.

Processing Paper Requests. For permitted paper filings ( see TMEP §301.01 ), a request to withdraw filed before registration will be handled by the appropriate managing attorney, or, if a notice of allowance has issued and the application is awaiting the filing of a statement of use, by the supervisor of the ITU/Divisional Unit. After registration, a paper request for permission to withdraw will be handled by the supervisor of the Post Registration Section.

The managing attorney or supervisor will approve or deny the request, notify the applicant or registrant and the attorney of the approval or denial of the request, and place a copy of this notification in the record. If the request is approved, the managing attorney or supervisor should ensure that the correspondence address is changed in the USPTO’s Trademark database. It is the responsibility of the managing attorneys or supervisors to establish procedures that permit withdrawal requests to be given priority and acted on promptly.

For a permitted paper request for permission to withdraw filed after registration ( see TMEP §301.01 ), the USPTO will scan an image of the request into the Trademark database but will not update the attorney information unless the registrant concurrently takes a separate action, such as filing an affidavit under §8. TMEP §1612 .

If the attorney who seeks to withdraw is also the domestic representative, the managing attorney or supervisor should inquire as to whether the attorney intends to withdraw as domestic representative. This inquiry should be made by telephone or email, if possible. If the attorney withdraws as domestic representative, the managing attorney or supervisor must ensure that the “Domestic Representative” field in the USPTO’s Trademark database is updated.

Board Proceedings. See TBMP §§116.02–116.05 regarding withdrawal as the representative of a party to a Board proceeding.

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# 608 Unauthorized Practice

# 608.01 Actions by Unauthorized Persons Not Permitted

#### 37 C.F.R. 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.

# 608.02 Individuals Excluded, Suspended, or Unauthorized to Practice Before the USPTO

The Director of the USPTO may suspend or exclude a practitioner from practice before the USPTO. 35 U.S.C. §32 ; 37 C.F.R. §§11.20 , 11.56 . A suspended or excluded practitioner is not a qualified U.S. attorney and may not practice before the USPTO. See 37 C.F.R. §§2.17(a) , 11.14 , 11.58 ; TMEP §602 . Notice of the suspension or exclusion is published in the Trademark Official Gazette and the decision is posted in the FOIA Reading Room on the USPTO website.

In addition, under 35 U.S.C. §3(b)(2)(A) , the Commissioner for Trademarks possesses the authority to manage and direct all aspects of the activities of the USPTO that affect the administration of trademark operations. Accordingly, if the USPTO discovers that a party who does not meet the requirements of 37 C.F.R. §11.14 is engaged in the deliberate or widespread unauthorized practice of representing applicants and registrants before the USPTO or violates the USPTO Rules of Professional Conduct (see 37 C.F.R. pt. 11, subpt. D ), the Commissioner for Trademarks may sanction the party under 37 C.F.R §11.18(c) and may refer the party to the Office of Enrollment and Discipline for additional investigation. Sanctions may include striking an offending document, excluding a party from participating as a signatory, correspondent, or domestic representative on behalf of others in any trademark matters before the USPTO, requiring a party to be represented by a qualified U.S. attorney, terminating trademark proceedings involving the party, or any other action deemed appropriate by the Commissioner under the circumstances. See 35 U.S.C. §§2 , 3(b)(2)(A) , 32 ; 37 C.F.R. §11.18 . Exclusion orders and other sanctions issued by the Commissioner for Trademarks are listed at https://www.uspto.gov/trademark/trademark-updates-and-announcements/orders-issued-commissioner-trademarks .

When an individual has been suspended or excluded from practice before the USPTO, the Office of the Deputy Commissioner for Trademark Examination Policy will notify the USPTO staff accordingly. In addition, as appropriate, the USPTO may notify the affected applicants and registrants that:

- (1) The individual is not entitled to practice before the USPTO in trademark matters and, therefore, may not represent the applicant or registrant;
- (2) Any power of attorney is void ab initio ;
- (3) The individual may not sign responses to Office actions, authorize examiner’s amendments or priority actions, conduct interviews with USPTO employees, or otherwise represent an applicant, registrant, or party to a proceeding before the Office; and
- (4) All correspondence concerning the application or registration will be sent to the applicant or registrant at its address of record.

The USPTO will change the correspondence address to that of the applicant or registrant, as appropriate.

Generally, if an Office action was sent to the correspondence address of record before the relevant party’s suspension or exclusion and the action remains outstanding, the USPTO will not send the applicant or registrant a supplemental action restating the refusals or requirements. See TMEP §717.02 regarding non-receipt of Office actions.

When the Director of the USPTO or Commissioner for Trademarks has suspended or excluded a particular individual from practice before the USPTO, the USPTO will treat any submission signed by such individual as improperly signed and/or non-responsive. 37 C.F.R. §§2.17(a) , 11.14 .

If the applicant or registrant is required to be represented by a qualified U.S. attorney under 37 C.F.R. §2.11(a) and the USPTO receives a response to an Office action signed by an excluded or suspended attorney, the examining attorney or post registration specialist must issue a new non-final Office action, addressed to the applicant or registrant, requiring the applicant or registrant to appoint a new qualified U.S. attorney and to perfect the response pursuant to 37 C.F.R. §2.62(a) . See TMEP §§713 , 714.05(a) .

If the applicant or registrant is not required to appoint a qualified U.S. attorney under 37 C.F.R. §2.11(a), and the USPTO receives a response to an Office action signed by an excluded or suspended attorney, the examining attorney or post registration specialist must prepare a notice of incomplete response, addressed to the applicant or registrant, granting the applicant or registrant 30 days, or to the end of the response period set forth in the previous Office action, whichever is longer, to perfect the response, pursuant to 37 C.F.R. §2.65(a)(2) . See TMEP §§611.05–611.05(c) , 712.03 , and 718.03(b) for further information.

Other submissions that will be treated as improperly signed and/or non-responsive include amendments to allege use, petitions to revive or to the Director, or responses to deficiency or inquiry letters issued by USPTO specialists, paralegals, or staff attorneys. See TMEP §1104.01(a) regarding amendments to allege use, §1109.02 regarding statements of use, and §1705.07 regarding petitions.

USPTO employees must also notify the Office of the Deputy Commissioner for Trademark Examination Policy of the receipt of a document signed by an excluded or suspended individual, or any party who appears to be engaged in the deliberate or widespread unauthorized practice of law before the USPTO.

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# 609 Correspondence, with Whom Held

#### 37 C.F.R. Correspondence, with whom held.

- (a) Establishing the correspondent. The Office will send correspondence as follows:
  - (1) If the applicant, registrant, or party to a proceeding is not represented by an attorney qualified to practice before the Office under § 11.14(a) of this chapter, the Office will send correspondence to the applicant, registrant, or party to the proceeding.
  - (2) If an attorney is recognized as a representative pursuant to § 2.17(b)(1), the Office will correspond only with that attorney. A request to change the correspondence address does not revoke a power of attorney. Except for service of a cancellation petition, the Office will not correspond directly with the applicant, registrant, or a party to a proceeding, or with another attorney from a different firm, unless:
    - (i) The applicant or registrant files a revocation of the power of attorney under § 2.19(a) and/or a new power of attorney that meets the requirements of § 2.17(c);
    - (ii) The attorney has been suspended or excluded from practicing in trademark matters before the USPTO; or
    - (iii) Recognition of the attorney has ended pursuant to § 2.17(g).
- (b) Ex parte matters. Only one correspondence address may be designated in an ex parte matter.
- (c) Maintaining and changing the correspondence addresses. The applicant, registrant, or party to a proceeding must maintain current and accurate correspondence addresses, as required by § 2.23, for itself and its attorney, if one is designated. If any of these addresses change, a request to change the address, signed in accordance with § 2.193(e)(9), must be promptly filed.
- (d) Post registration filings under sections 7, 8, 9, 12(c), 15, and 71 of the Act. Even if there is no new power of attorney or written request to change the correspondence address, the Office will change the correspondence address upon the examination of an affidavit under section 8, 12(c), 15, or 71 of the Act, renewal application under section 9 of the Act, or request for amendment or correction under section 7 of the Act, if a new address is provided, in accordance with paragraph (a) of this section.

#### 37 C.F.R. Requirement to correspond electronically with the Office and duty to monitor status.

- (a) Unless stated otherwise in this chapter, all trademark correspondence must be submitted through TEAS.
- (b) Applicants, registrants, and parties to a proceeding must provide and maintain a valid email address for correspondence.
- (c) If the applicant or registrant is a national of a country that has acceded to the Trademark Law Treaty, but not to the Singapore Treaty on the Law of Trademarks, the requirements of paragraphs (a) and (b) of this section do not apply.

. . . .

See TBMP §§117–117.08 for information about correspondence in Board proceedings.

# 609.01 Establishing the Correspondence Address

The correspondent in an application or registration is the appointed qualified U.S. attorney, if any. If a qualified U.S. attorney is not appointed, the correspondent is the applicant or registrant. See 37 C.F.R. §2.18(a) .

All applicants, registrants, and their appointed attorneys are required to provide and maintain a valid email address for receipt of correspondence from the USPTO, unless an exception applies. See 37 C.F.R. §§2.21(a)(1) , 2.23(b)-(c) , 2.32(a)(2) , and 7.4(b) .

The USPTO will send formal correspondence to applicants, registrants, or their appointed attorney via the provided email address, unless the applicant or registrant is exempt from the requirement to provide an email address. 37 C.F.R. §2.23(b)-(c) .

- - If the applicant or registrant is represented by a qualified U.S. attorney , the USPTO will correspond only with that attorney. 37 C.F.R. §2.18(a)(2) . For applications filed under Trademark Act Section 1 and/or Section 44, the attorney’s name, postal address, email address, and bar information must be provided with the initial application. 37 C.F.R. §§2.21(a)(2) , 2.32(a)(4) . The applicant or registrant must maintain a current and accurate correspondence address for his or her attorney. 37 C.F.R. §§2.18(c) , 2.23(b) .
  - If the applicant or registrant is not represented by a qualified U.S. attorney , the USPTO will correspond directly with the applicant or registrant. 37 C.F.R. §2.18(a)(1) . For applications filed under Trademark Act Section 1 and/or Section 44, the applicant’s name, mailing address, domicile address, and email address must be provided in the initial application. 37 C.F.R. §§2.21(a)(1) , 2.22(a)(1) , 2.23(b) , 2.32(a)(2) . Further, applicants and registrants must maintain current and accurate correspondence addresses for themselves. 37 C.F.R. §§2.18(c) , 2.23(b) , 2.189 .

See TMEP §609.01(a) regarding correspondence in §66(a) applications.

The correspondence address in the TEAS forms is not editable, but rather is automatically populated with the information contained in the Attorney Information section, if the applicant or registrant is represented by a qualified U.S. attorney, or with the owner information, if the applicant or registrant is not represented.

In accordance with these guidelines, the USPTO will update the Trademark database to indicate a new email address for correspondence if one is provided in an affidavit under Trademark Act §8, §12(c), §15, or §71, a §9 renewal application, or a §7 request. 37 C.F.R. §2.18(d) . Due to the length of time that may elapse between the filing of these documents (which could be ten years or more), the USPTO will recognize as correspondent a qualified U.S. attorney who files via TEAS one of these documents, even absent a new power of attorney or revocation of the previous power, where the attorney correspondence address is properly provided in the “Attorney Information” section and the attorney signs the filing. See id. See TMEP §604.03 regarding the duration of recognition as a representative.

Generally, the USPTO will not undertake double correspondence with the applicant or registrant and the applicant’s or registrant’s qualified U.S. attorney, or with more than one qualified attorney. 37 C.F.R. §2.18(b) . However, the applicant or registrant or the applicant’s or registrant's qualified attorney may designate one primary email address and up to four secondary email addresses for duplicate courtesy copies of the correspondence. See TMEP §403 regarding treatment of outgoing correspondence that is returned as undeliverable.

Permitted paper filing. The USPTO will follow the same procedures listed above to establish the correspondence address for a permitted paper filing. See TMEP §301.01 regarding the limited exceptions when paper submissions may be submitted.

See TBMP §§117–117.08 for information about correspondence in Board proceedings and TMEP §§609.02–609.02(f) for information about changing the correspondence address.

# 609.01(a) Correspondence in Section 66(a) Applications and Registrations

The USPTO will send the first Office action in an application under Trademark Act §66(a) to the International Bureau (IB). The IB will then send it to the applicant’s designated representative, or if no representative is designated, directly to the applicant.

If the applicant’s domicile address is located outside the United States or its territories, the first Office action will include a requirement for the applicant to appoint an attorney authorized to practice before the USPTO under 37 C.F.R. §11.14(a) and to provide the attorney’s name, postal and email addresses, and bar information, as the USPTO presumes that all applicants filing under §66(a) are not represented in the initial application, regardless of whether there is a designated representative in that application. See 37 C.F.R. §§2.11(a) , 37 C.F.R. §2.17(b)(3) , 7.25(a) ; TMEP §§602.03(c) , 1904.01(i) .

Additionally, the first Office action will include a requirement for the applicant’s email address; which is not currently included in the application form that the IB transmits to the USPTO. See 37 C.F.R. §2.32(a)(2) . Although the applicant’s email address is not required for a §66(a) application to receive a filing date, the applicant is required to provide a valid email address for receiving USPTO correspondence as one of the requirements for a complete application. 37 C.F.R. §§2.23(b) , 2.32(a)(2) ; see 37 C.F.R. §2.21(a)(1) (the rule setting forth the requirements for receiving a filing date applies only to applications based on Trademark Act Section 1 or Section 44). See TMEP §601 regarding the requirement for representation dependent on domicile, §601.01(a) regarding applicants with a non-U.S. domicile, and §803.05(b) regarding applicant’s email address as a required element of an application.

If, however, a §66(a) application is otherwise in condition for approval for publication upon first action, the examining attorney may approve the application for publication and should not require the applicant to appoint an attorney authorized to practice before the USPTO or to provide an email address. See TMEP §§803.05(b) 1904.02(h) .

After the first Office action, if the applicant has appointed a qualified U.S. attorney, such attorney will be the correspondent in the application and will receive all USPTO communications. 37 C.F.R. §2.18(a)(2) . An applicant must provide the attorney’s name, postal address, email address, and bar information. 37 C.F.R. §2.32(a)(4) . The applicant must also maintain current and accurate correspondence addresses for itself and its attorney. 37 C.F.R. §2.18(c) .

If after the first action the applicant has not appointed a qualified U.S. attorney, the USPTO will send subsequent correspondence to the applicant, who is also required to maintain a valid address for correspondence. 37 C.F.R. §§2.18(a)(1) , (c) and 2.23(b)-(c) . The requirement to appoint an attorney authorized to practice before the USPTO under 37 C.F.R. §11.14(a) and to provide the attorney’s name, postal address, email address, and bar information will be maintained or made final, as appropriate.

See TMEP §609.01 regarding establishing the correspondence address generally and §1904.02(h) regarding Office actions in §66(a) applications.

The USPTO will accept a properly signed request to change the applicant’s or registrant’s email address in a §66(a) application or a registered extension of protection of an international registration to the United States, and will send correspondence to the new address, if appropriate. See TMEP §609.02 regarding changing the correspondence address. A request to change the applicant’s or registrant’s mailing address must be filed with the IB, not the USPTO. An applicant or registrant can update its domicile address with the USPTO by completing the TEAS Change of Address or Representation form. See TMEP §§803.05(a) , 1612.01(b) .

To change the representative designated in the international registration (to which the IB sends correspondence), a request to record a change of the name or address of the representative designated in the international registration must be filed with the IB; it cannot be filed through the USPTO. Forms for changing the name or address of the designated representative are available on the IB website at https://www.wipo.int/madrid/en/forms .

See TMEP §§1906.01–1906.01(i) regarding requests to record changes with the IB, and §§602.03–602.03(c) regarding foreign attorneys.

# 609.02 Changing the Correspondence Address

Once the correspondence address is established, the USPTO will send correspondence to that address, if appropriate, until a written request to change the address is submitted, properly signed and transmitted by a qualified U.S. attorney whom the USPTO has recognized, or, if the applicant or registrant is not required to be nor is represented by a qualified U.S. attorney, properly signed and transmitted 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). 37 C.F.R. §§2.11(a) , 2.18(a) , 2.193(e)(9) .

If the applicant or registrant is represented by a qualified U.S. attorney, or is domiciled outside of the United States or its territories and is required to be represented by a qualified U.S. attorney, neither the applicant nor the registrant may request to change the owner address that prepopulates the correspondence address. See 37 C.F.R. §2.18(a)(2) ; TMEP §609.01 . See TMEP §601 regarding the requirement for representation dependent on domicile.

The USPTO will not undertake double correspondence with the applicant or registrant and the applicant’s or registrant’s qualified U.S. attorney, or with more than one qualified attorney. 37 C.F.R. §2.18(b) . However, the applicant or registrant, or its qualified U.S. attorney if one is recognized, may designate one primary email address and up to four secondary email addresses for duplicate courtesy copies of the correspondence. See TMEP §403 regarding treatment of outgoing email correspondence that is returned as undeliverable.

See also TBMP §§117–117.08 for information about correspondence in Board proceedings.

# 609.02(a) When the Correspondence Address May be Changed Without Using the TEAS Change of Address or Representation Form

Generally, a request to change the address for correspondence must be in writing and filed using the TEAS Change Address or Representation (CAR) form. See TMEP §609.02(b) . However, the USPTO will also construe the following as a written request to change the address for correspondence:

- (1) TEAS filings. If a qualified U.S. attorney appears by being identified in the “Attorney Information” section in a TEAS form as the representative on behalf of an applicant or registrant who is not already represented by another qualified U.S. attorney from a different firm, the USPTO will construe this as including a request to change the correspondence address to that of the attorney (however, the filing of an “associate power of attorney” or similar document does not change the correspondence address); or

  If a response to an Office action bearing a new address for the owner, or for the attorney of record if one is appointed, is submitted via TEAS, the USPTO will change the correspondence address to reflect this new address.

- (2) Permitted paper filings. If an applicant or registrant files a properly signed power of attorney ( see TMEP §605.01 ) designating a qualified U.S. attorney, the USPTO will change the correspondence address to that of the attorney named in the power, even if the applicant or registrant does not file a separate request to change the address. See TMEP §301.01 regarding the limited exceptions when paper submissions may be submitted.

37 C.F.R §§2.18(a)(2) , 2.19(a)(2) .

In these situations, the USPTO will change the correspondence address without the need to file the TEAS CAR form. In all other situations, a properly signed written request to change the correspondence address is required. 37 C.F.R. §2.18(c) , 2.193(e)(9) . See TMEP §609.02(b) regarding the requirements for a request to change the correspondence address.

See also TBMP §§117–117.08 for information about correspondence in Board proceedings.

# 609.02(b) Requirements for Request to Change Correspondence Address

A request to change the correspondence address must be made in writing and be properly signed. See 37 C.F.R. §§2.18(c) , 37 C.F.R. §2.193(e)(9) . Generally, the request must be filed using the TEAS Change Address or Representation (CAR) form. 37 C.F.R. §2.23(a) ; TMEP §301 . See TMEP §609.02(a) for situations where the correspondence address may be changed without using the TEAS CAR form. The TEAS CAR form may generally be used to change the correspondence address for any application or registration that is currently active. The CAR form will not be available when an inter partes proceeding has been initiated against the subject application or registration, or when an ex parte appeal from a decision of an examining attorney has been instituted and jurisdiction has not been restored to the examining attorney. In such cases, a request to change the correspondence address must be filed via the Electronic System for Trademark Trials and Appeals.

A request to change the correspondence address cannot be entered by examiner’s amendment. See 37 C.F.R. §2.18(c) .

Once the USPTO recognizes a qualified U.S. attorney as the representative of an applicant or registrant, only that attorney or another qualified attorney from the same U.S. firm may sign a request to change the correspondence address, unless the applicant or registrant files a revocation of the previous power and/or a new power of attorney, or the previously recognized attorney files a request to withdraw. 37 C.F.R. §§2.18(a)(2) , (c) , 2.193(e)(3) , (e)(9)(i) .

If the applicant or registrant is not required to be represented and/or is not represented by a qualified U.S. attorney, the request to change the correspondence address must be 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). In the case of joint applicants or registrants, all must sign. See 37 C.F.R §§2.18(a)(1) , (c) , 2.193(e)(9)(ii) , TMEP §611.02 . See TMEP §609.01 regarding establishing the correspondence address and §609.02 regarding changing the correspondence address.

If two or more qualified U.S. attorneys are properly appointed, any of the named attorneys can sign and submit a request to change the correspondence address to set forth a new address, even if the new address is at a new firm. See 37 C.F.R. §2.193(e)(9)(i) . It is not necessary to submit a new appointment signed by the applicant or registrant when a named attorney(s) changes firms.

See TBMP §§117–117.08 for information about correspondence in Board proceedings.

# 609.02(c) Processing Requests to Change the Correspondence Address Before Registration

Once the correspondence address is established for a particular application, the USPTO will generally not change it unless there is a properly signed written request to do so, submitted via the TEAS Change Address or Representation form. See TMEP §609.02(b) for information about the requirements for a request to change the correspondence address, and §609.02(a) for discussion of situations in which a request to change the correspondence address is presumed.

# 609.02(d) Changing the Correspondence Address in Multiple Applications or Registrations

The TEAS Change Address or Representation form can be used to change the primary email address for correspondence in more than one application or registration by changing the attorney email address, if represented, or the owner email address, if unrepresented. An applicant, registrant, or qualified U.S. attorney may submit up to 300 application serial numbers or registration numbers at one time. Requests to change the address for more than 300 applications/registrations should not be submitted in a single TEAS form.

# 609.02(e) Changing the Correspondence Address After Registration

The USPTO reestablishes the correspondence address upon the examination of an affidavit under Trademark Act §8, §12(c), §15, or §71, a §9 renewal application, or a §7 request, even if there is no new power of attorney and/or separate request to change the correspondence address. 37 C.F.R. §2.18(d) ; TMEP §609.01 . The USPTO will update the Trademark database to indicate the name and address of the qualified U.S. attorney identified in the affidavit, renewal application, or §7 request, and update the correspondence address to that of the qualified attorney. 37 C.F.R. §§2.17(g)(2) , 2.18(d) . See TMEP §604.03 regarding the duration of recognition as a representative.

If the registrant is not represented by a qualified U.S. attorney, the USPTO will update the Trademark database to indicate the registrant’s address as shown in the affidavit, renewal application, or §7 request as the correspondence address of record.

Once the USPTO establishes a correspondence address upon examination of an affidavit, renewal application, or §7 request, a written request to change the address is required to effect a change of address during the pendency of that filing. See TMEP §§609.02(a) and (b) regarding changing the correspondence address.

Owners of registrations must maintain current and accurate correspondence addresses for themselves and their attorneys, if an attorney is designated. 37 C.F.R. §§2.18(c) , 2.23(b) . If any of these addresses change, a request to change the address must be promptly filed. 37 C.F.R. §2.18(c) .

To confirm that a request to change the correspondence address was received and entered into the Trademark database, the registrant may check TSDR online at https://tsdr.uspto.gov .

See TBMP §§117–117.08 for information about correspondence in Board proceedings and TMEP §604.04 regarding change of attorney.

# 609.02(f) Correspondence After Recordation of Change of Ownership

The USPTO considers the recognition of a qualified U.S. attorney to end when ownership changes. 37 C.F.R. §2.17(g)(1) ; TMEP §604.03 . Additionally, the USPTO will only communicate with the applicant or registrant, if unrepresented, or the applicant’s/registrant’s attorney, if represented, at the correspondence address listed in the Trademark database. See 37 C.F.R. §2.18(a)(1) - (2) .

Recordation with the Assignment Services Branch of an assignment (or other document changing title) that includes a new owner and/or attorney address does not automatically update the correspondence address in the USPTO's Trademark database. TMEP §503.01(b) . To ensure that the Trademark database is updated to reflect the correct correspondence address, new owners must file a separate request through TEAS using the Change Address or Representation (CAR) form, or on paper if permitted ( see TMEP §301.01 ), to change the correspondence address. Id.

If the new owner does not file a separate request through TEAS using the CAR form, but instead files a properly signed TEAS communication (e.g., a response to an Office action or statement of use) bearing a new owner’s or attorney’s correspondence address in the proper TEAS fields, the USPTO will update the Trademark database to reflect the address of the new owner or the new owner’s qualified U.S. attorney, if applicable, even if the new owner does not specifically request a change of the correspondence address. In this situation, the USPTO will reestablish the correspondence address, using the guidelines set forth in TMEP §609.01 . If the new owner is not represented by a qualified U.S. attorney, the correspondence address will be changed to reflect the address of the applicant or registrant, as set forth in the written communication. However, based on the new correspondence address, the new owner may be required to appoint a qualified U.S. attorney to represent it at the USPTO. See TMEP §601 regarding the requirement for representation by a qualified U.S. attorney, as determined by the domicile of the mark owner.

If a new qualified U.S. attorney signs a document or is identified as a representative in a document submitted to the USPTO on behalf of the new owner, the USPTO will recognize the new attorney even absent a new power of attorney and/or revocation of the previous power. 37 C.F.R. §2.17(b)(1)(ii) - (iii) ; see TMEP §604.03 . However, if the previously recognized qualified U.S. attorney appears on behalf of the new owner (which might occur when the new owner is a related company), the USPTO will continue to conduct business and correspond with that attorney. The previously recognized attorney does not have to file a new power of attorney signed by the new owner.

See also TBMP §§117–117.08 regarding correspondence in Board proceedings and TMEP §§505–505.02 regarding requests to update ownership information after recordation of a change of ownership.

# 609.03 Applicant and Registrant Have Duty to Maintain Current and Accurate Correspondence Address

#### 37 C.F.R.

Maintaining and changing the correspondence addresses. The applicant, registrant, or party to a proceeding must maintain current and accurate correspondence addresses, as required by §2.23, for itself and its attorney, if one is designated. If any of these addresses change, a request to change the address, signed in accordance with § 2.193(e)(9), must be promptly filed.

#### 37 C.F.R.

Applicants, registrants, and parties to a proceeding must provide and maintain a valid email address for correspondence.

The owner of an application or registration has a duty to maintain a current and accurate correspondence address. 37 C.F.R §§2.18(c) , 2.23(b) . If the correspondence address changes, the USPTO must be promptly notified. See 37 C.F.R §2.18(c) .

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# 610 Designation of Domestic Representative by Parties Not Domiciled in the United States

#### 37 C.F.R. Designation and revocation of domestic representative by foreign applicant.

- (a) An applicant or registrant that is not domiciled in the United States may designate a domestic representative (i.e., a person residing in the United States on whom notices or process in proceedings affecting the mark may be served).
- (b) The designation, or a request to change or revoke a designation, must set forth the name, email address, and postal address of the domestic representative and be signed pursuant to § 2.193(e)(8).
- (c) The mere designation of a domestic representative does not authorize the person designated to represent the applicant or registrant.

Designation of Domestic Representative. An applicant, registrant, or party to a proceeding before the USPTO that is not domiciled in the United States may file a document designating the name, email address, and postal address of a person residing in the United States on whom may be served notices or process in proceedings affecting the mark. 15 U.S.C. §§1051(e) , 1058(f) , 1059(c) , 1060(b) , 1141h(d) ; 37 C.F.R. §2.24(a) - (b) . If the applicant, registrant, or party does not designate a domestic representative, the USPTO will not require a designation.

Once a domestic representative is appointed, an applicant or registrant may revoke such a designation of domestic representative. A domestic representative may also withdraw as a domestic representative. To revoke the designation or to withdraw as such a representative, an applicant, registrant, or domestic representative may use the TEAS Change Address or Representative (CAR) form.

May Be Natural or Juristic Person. The person designated as a domestic representative may be a natural person or a juristic person as defined in 15 U.S.C. §1127 .

Not the Same as Power of Attorney. The designation of a domestic representative is not the same as a power of attorney. The designation serves a different purpose, namely, to provide a contact and address for service of process. The mere designation of a domestic representative does not authorize the person designated to practice before the USPTO (e.g., to prepare or prosecute the application, or represent a party in a proceeding before the USPTO). 37 C.F.R. §§2.24(c) , 11.5(b)(2) . Similarly, a power of attorney does not serve as a designation of a domestic representative, unless the power of attorney specifically states that the attorney is also the domestic representative on whom may be served notices or process in proceedings affecting the mark.

Requirements. A designation of domestic representative must include the name, email address, and postal address of the person designated and a clear statement that the party intends to designate this person as a domestic representative upon whom notices or process affecting the mark may be served. See 37 C.F.R. §2.24(b) . A domestic representative may be designated in the initial application for registration or in a separate designation using the TEAS CAR form or TEAS post registration forms.

See TMEP §611.03(h) regarding the proper person to sign the designation or revocation of domestic representative, or a withdrawal of domestic representative.

Duration. An appointment of domestic representative remains in effect unless specifically revoked, withdrawn from, or supplanted by appointment of a new domestic representative.

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# 611 Signature on Correspondence Filed in the United States Patent and Trademark Office

# 611.01 Signature and Certificate

# 611.01(a) Signature as Certificate

#### 37 C.F.R. Signature as certification.

The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any document by any person, whether a practitioner or non-practitioner, constitutes a certification under §11.18(b) of this chapter. Violations of §11.18(b) of this chapter may jeopardize the validity of the application or registration, and may result in the imposition of sanctions under §11.18(c) of this chapter. Any practitioner violating §11.18(b) of this chapter may also be subject to disciplinary action. See §11.18(d) and § 11.804 of this chapter.

#### 37 C.F.R. Signature and certificate for correspondence filed in the Office.

- (a) For all documents filed in the Office in patent, trademark, and other non-patent matters, and all documents filed with a hearing officer in a disciplinary proceeding, except for correspondence that is required to be signed by the applicant or party, each piece of correspondence filed by a practitioner in the Office must bear a signature, personally signed or inserted by such practitioner, in compliance with §1.4(d)(1), §1.4(d)(2), or §2.193(a) of this chapter.
- (b) By presenting to the Office or hearing officer in a disciplinary proceeding (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that—
- (1) All statements made therein of the party’s own knowledge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, or knowingly and willfully makes or uses any false writing or document knowing the same to contain any false, fictitious, or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001 and any other applicable criminal statute, and violations of the provisions of this section may jeopardize the probative value of the paper; and
- (2) To the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances,
- (i) The paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of any proceeding before the Office;
- (ii) The other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;
- (iii) The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and
- (iv) The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.
- (c) Violations of any of paragraphs (b)(2)(i) through (iv) of this section are, after notice and reasonable opportunity to respond, subject to such sanctions or actions as deemed appropriate by the USPTO Director, which may include, but are not limited to, any combination of--
- (1) Striking the offending paper;
- (2) Referring a practitioner’s conduct to the Director of Enrollment and Discipline for appropriate action;
- (3) Precluding a party or practitioner from submitting a paper, or presenting or contesting an issue;
- (4) Affecting the weight given to the offending paper; or
- (5) Terminating the proceedings in the Office.
- (d) Any practitioner violating the provisions of this section may also be subject to disciplinary action.

# 611.01(b) Requirements for Signature

All correspondence that requires a signature must bear either a handwritten signature personally signed in permanent ink by the person named as the signatory, or an “electronic signature” that meets the requirements of 37 C.F.R. §2.193(c) , personally entered by the signatory. 37 C.F.R §2.193(a) . The USPTO will accept a signature that meets the requirements of 37 C.F.R. §2.193(c) on all correspondence, whether included in a permitted paper submission ( see TMEP §301.01 or in a submission through TEAS or the Electronic System for Trademark Trials and Appeals (ESTTA). 37 C.F.R. §2.193(a)(2) . See TMEP §611.01(c) regarding the signature of documents filed electronically.

All documents must be personally signed or bear an electronic signature that was personally entered by the named signatory. 37 C.F.R. §2.193(a)(1) , (c)(1) . Another person (e.g., paralegal, legal assistant, secretary) may not sign or enter the name of an attorney or other authorized signatory. See In re Dermahose Inc. , 82 USPQ2d 1793 (TTAB 2007) ; In re Cowan, 18 USPQ2d 1407 (Comm’r Pats. 1990).

The first and last name, and the title or position, of the person who signs a document must be set forth immediately below or adjacent to the signature. 37 C.F.R. §2.193(d) . If the signatory’s name is not provided in full or set forth in a document, the USPTO will require that the signatory’s first and last name be stated for the record. This information can be entered through a Note to the File in the record.

Documents must be signed by a proper party. See TMEP §611.02 and §§611.03–611.03(i) for further information.

See TBMP §106.02 regarding signature of documents filed in Board proceedings, and §106.03 regarding the form of submissions in Board proceedings.

# 611.01(c) Signature of Documents Filed Electronically

#### 37 C.F.R. Trademark correspondence and signature requirements.

...

- (c) Requirements for electronic signature. A person signing a document electronically must:
- (1) Personally enter any combination of letters, numbers, spaces and/or punctuation marks that the signer has adopted as a signature, placed between two forward slash (“/”) symbols in the signature block on the electronic submission; or
- (2) Sign the document using some other form of electronic signature specified by the Director.
- (d) Signatory must be identified. The first and last name, and the title or position, of the person who signs a document in connection with a trademark application, registration, or proceeding before the Trademark Trial and Appeal Board must be set forth immediately below or adjacent to the signature.

In a document filed in connection with a trademark application, registration, or proceeding before the Trademark Trial and Appeal Board through TEAS or ESTTA, the party filing the document does not apply a conventional signature. Instead, the filer does one of the following:

- (1) The signatory personally enters any combination of letters, numbers, spaces, and/or punctuation marks that the signer has adopted as a signature, placed between two forward slash (“/”) symbols. 37 C.F.R. §2.193(c)(1) . Examples of acceptable signatures include / john doe/, / drl/, / s/, and / 544-4925/. The signatory’s first and last name and his or her title or position must be set forth immediately beneath or adjacent to the signature. 37 C.F.R. §2.193(d) ;
- (2) The document is filled out online, printed in text form, and sent to the signatory. The signatory personally signs the printed document in the traditional pen-and-ink manner. The signatory’s first and last name and his or her title or position must be set forth immediately beneath or adjacent to the signature. 37 C.F.R. §2.193(d) . The signature portion, along with a declaration under 37 C.F.R. §2.20 , if required, is scanned to create a .jpg or .pdf image file and attached to the document for electronic submission; or
- (3) The document is completed online, and emailed to the signatory for electronic signature from within TEAS. The signatory personally signs the document and it is automatically returned via TEAS to the party who requested the signature.

The USPTO will also accept a signature that meets the requirements of paragraph (1) above on documents that are permitted to be filed on paper. 37 C.F.R. §2.193(a)(2) .

All documents must be properly signed. 37 C.F.R. §2.193(a) , 11.18(a) . The person(s) identified as the signatory must personally sign the printed form or personally enter his or her electronic signature, either directly on the TEAS form or in the emailed form. 37 C.F.R. §2.193(a) , (d) . Another person (e.g., paralegal, legal assistant, or secretary) may not sign or enter the name of a qualified U.S. attorney or other authorized signatory. See In re Dermahose Inc ., 82 USPQ2d 1793 (TTAB 2007) ; In re Cowan, 18 USPQ2d 1407 (Comm’r Pats. 1990). Just as signing the name of another person on paper does not serve as the signature of the person whose name is written, typing the electronic signature of another person is not a valid signature by that person.

The Trademark Trial and Appeal Board has held that an electronic signature on an electronic transmission through ESTTA pertains to all the attachments to the transmission. PPG Indus., Inc. v. Guardian Indus. Corp. , 73 USPQ2d 1926 (TTAB 2005) .

See TBMP §106.02 regarding signature of documents filed in Board proceedings, and §106.03 regarding the form of submissions in Board proceedings.

# 611.02 Signatures by Authorized Parties Required

All documents filed in the USPTO must be properly signed. The USPTO staff must review the application or registration record to determine whether the applicant or registrant is represented by a qualified U.S. attorney, and must ensure that all documents are properly signed.

Two types of signatures may be required when filing documents with the USPTO: (1) a verification signature and/or (2) a submission signature.

Verification signature. Verifications of facts on behalf of an applicant or registrant must be sworn to, made under oath or in an affidavit, or supported by a declaration, and properly signed by someone meeting the requirements of 37 C.F.R. §2.193(e)(1) . See 37 C.F.R. §2.2(n) ; TMEP §§611.03(a) , 804.04 .

Submission signature. Most other submissions must be properly signed by the applicant or registrant, someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership), or by a qualified U.S. attorney. This includes amendments, responses to Office actions, petitions to the Director under 37 C.F.R. §2.146 or §2.147 ,letters of express abandonment, requests to divide, and requests to change the correspondence address.

Generally, if the applicant or registrant is represented by a qualified U.S. attorney, the attorney must sign the submission. 37 C.F.R. §§2.193(a) , (e)(2)(i) , (e)(5)(i) , (e)(9)(i) , 11.18(a) . This applies to both in-house and outside counsel. If the applicant or registrant is not represented by a qualified U.S. attorney, the submission must be 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). In the case of joint applicants or registrants who are not represented by such an attorney, all must sign. 37 C.F.R. §2.193(a) , (e)(2)(ii) , (e)(5)(ii) , (e)(9)(ii) .

See TMEP §§611.03–611.03(i) for guidelines as to the proper person to sign specific documents, §§611.06–611.06(h) for guidelines on persons with legal authority to bind various types of legal entities, and §611.04 for examples of authorized and potentially unauthorized parties.

# 611.02(a) TEAS Signature Radio Buttons

On most TEAS forms, the person signing the submission must confirm that he or she is authorized to sign the document by clicking one of three buttons indicating that he or she is:

- (1) An owner/holder (or a person with legal authority to bind the owner or holder) who has not previously been represented in this matter, or was previously represented by a qualified U.S. attorney who has withdrawn or whose power has been revoked;
- (2) An authorized U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory) who is the owner’s or holder’s current attorney, or an associate thereof, and that if the owner or holder was previously represented by a different U.S.-licensed attorney associated with a different company/firm, the previous power has been revoked, the previously appointed attorney has withdrawn, a new power of attorney has been filed appointing the current attorney as either the attorney or an associate attorney; or
- (3) An authorized Canadian trademark attorney/agent who has been appointed to represent the owner or holder and has been granted reciprocal recognition under 37 C.F.R §11.14(c)(1) by the USPTO’s Office of Enrollment and Discipline and is an authorized signatory based on 37 C.F.R §11.14(c)(2) .

The USPTO will accept these statements unless there is conflicting information in the record or the USPTO is otherwise made aware of conflicting information.

Example: If, as part of the submitted attorney information, an attorney lists a foreign address and checks the box indicating that he or she is an active member in good standing of the bar of the highest court of a U.S. state, the USPTO will accept this statement, as long as there is no conflicting information in the record.

Example: If an attorney indicates that the applicant was previously unrepresented, or that the applicant was previously represented by another attorney who has withdrawn or whose power has been revoked, when, in fact, there is another attorney of record whose power has not been revoked, the USPTO must inquire into the signatory’s authority to sign, because there is inconsistent information in the record.

Example: If the signatory selects the owner/holder radio button, indicating that he or she is a person with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership), but sets forth a title that the USPTO would not normally accept (e.g., accountant, paralegal, or trademark administrator), the USPTO will inquire into the signatory’s authority to sign, because there is inconsistent information in the record.

Example: If, instead of selecting the “authorized U.S.-licensed attorney” radio button, the attorney selects one of the other radio buttons (i.e., indicating that the owner/holder is not represented by an attorney, or that the attorney is an authorized Canadian trademark attorney or agent, representing a Canadian applicant), an issue of signatory authority arises, and the USPTO will inquire into the signatory’s authority to sign, because there is inconsistent information in the record.

Exception: If the signatory indicates that he or she is a Canadian trademark attorney or agent who has been granted reciprocal recognition by OED, and there is a qualified U.S.-licensed attorney designated, the USPTO staff must still check the OED list to verify this information. See TMEP §602.03(a) for further information about Canadian trademark attorneys and agents.

See TMEP §611.05(a) and §712.03 regarding issuance of a notice of incomplete response where there is a question as to a signatory’s authority to sign.

# 611.03 Proper Person to Sign

This section provides guidelines as to the proper person to sign verifications and various other submissions. Unless otherwise specified by law, the following guidelines should be followed.

Note that if an application or registration owner who is not represented by a qualified U.S. attorney becomes deceased or legally incapacitated, only a party authorized under the relevant state law regarding wills or intestate succession may sign a document required to be signed by the owner. For example, if the owner’s estate has not been settled, the executor may be an authorized party under the relevant state law. In such situations, the document must state that the owner is deceased or legally incapacitated and that the signatory is authorized to sign under the relevant state law.

# 611.03(a) Verification

A verification must be sworn to or supported by a declaration signed by the owner of the application or registration or a person properly authorized to verify facts on behalf of the owner. See 37 C.F.R. §2.2(n) . A person who is properly authorized to verify facts on behalf of an owner is:

- A person with legal authority to bind the owner (e.g., a corporate officer or general partner of a partnership);
- A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; or
- A qualified U.S. attorney who has a power of attorney from the owner.

See 37 C.F.R. §2.193(e)(1) .

Generally, the USPTO does not question the authority of the person who signs an affidavit or declaration verifying facts, unless there is an inconsistency in the record as to the signatory’s authority to sign. See TMEP §804.04 .

The broad definition of a “person properly authorized to sign on behalf of an owner” in 37 C.F.R. §2.193(e)(1) applies only to verifications of facts, such as applications for trademark registration, petitions to revive under 37 C.F.R. §2.66 , affidavits under §8 or §71 of the Trademark Act, amendments to allege use under 37 C.F.R. §2.76 , statements of use under 37 C.F.R. §2.88 , and declarations in support of substitute specimens or claims of acquired distinctiveness. See TMEP §§611.03(d) , 804 , 904.07(a) , 1104.10(b)(ii) , 1109.11(a) , 1212.07 , 1604.08(a) , 1613.08(a) .

It does not apply to, for example, powers of attorney, revocations of powers of attorney, responses to Office actions, amendments to applications, letters of express abandonment, petitions to the Director under 37 C.F.R. §2.146 or §2.147 , consent agreements, or changes of correspondence address. See TMEP §§611.03(b) - (c) , (e) - (i) .

For example, the “Trademark Administrator” of the applicant, who has firsthand knowledge of the facts alleged in the application, may sign the verified statement in support of the application, but unless he or she has legal authority to bind the applicant (e.g., is a corporate officer or general partner of a partnership), or is a qualified U.S. attorney, he or she may not sign responses to Office actions or authorize examiner’s amendments.

# 611.03(b) Responses, Amendments to Applications, Requests for Express Abandonment, Requests for Reconsideration of Final Actions, and Requests to Divide

Responses, amendments to applications, requests for express abandonment, requests for reconsideration of final actions, and requests to divide must be signed in accordance with the following guidelines:

- If the applicant or registrant is represented by a qualified U.S. attorney, the attorney must sign the submission.
- If the applicant or registrant is not represented by a qualified U.S. attorney, the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant must sign the submission. In the case of joint applicants or registrants who are not represented by a qualified U.S. attorney, all must sign the submission.

See 37 C.F.R. §§2.11(a) , 2.62(b) , 2.68(a) , 2.74(b) , 2.87(f) , 2.163(b) , 2.171(b)(1) , 2.184(b)(2) , 2.193(e)(2) . See TMEP §611.06-611.06(h) for guidelines on persons with legal authority to bind various types of juristic entities and §§602-602.03(e) regarding persons who are qualified to represent others before the USPTO in trademark cases.

A person who is authorized to sign a verification per TMEP §611.03(a) is not entitled to sign responses to Office actions unless he or she also satisfies the signature guidelines above.

See TMEP §714.03 regarding when final action is appropriate after a pro se applicant required to have a qualified U.S. attorney files a response.

# 611.03(c) Powers of Attorney and Revocations of Powers of Attorney

Powers of attorney and revocations of powers of attorney must be signed by the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant. In the case of joint applicants or registrants, all must sign. 37 C.F.R. §§2.17(c)(2) , 2.19(a)(1) , 2.193(e)(3) .

Associate powers of attorney. Once the applicant or registrant has designated a qualified U.S. attorney, the named attorney may sign an associate power of attorney appointing another qualified U.S. attorney as an additional person(s) authorized to prosecute the application or registration. 37 C.F.R. §2.17(c)(2) ; see TMEP §§605.01 , 605.03 , 606 .

# 611.03(d) Petitions to Revive

A petition to revive under 37 C.F.R. §2.66 must be signed by someone with firsthand knowledge of the facts regarding unintentional delay. 37 C.F.R. §§2.66(b)(2) , (c)(2) , 2.193(e)(4) ; TMEP §1714.01(e) . See TMEP §611.03(a) regarding who can sign a verification.

However, any response to an Office action accompanying the petition must be signed in accordance with TMEP §611.03(b) .

# 611.03(e) Petitions to the Director

A petition to the Director under 37 C.F.R. §2.146 or §2.147 must be signed in accordance with the following guidelines:

- If the petitioner is represented by a qualified U.S. attorney, the attorney must sign the petition.
- If the petitioner is not represented by a qualified U.S. attorney, the individual petitioner or someone with legal authority to bind a juristic petitioner must sign. In the case of joint petitioners who are not represented by a qualified U.S. attorney, all must sign.

37 C.F.R. §§2.11(a) , 2.146(c) , 2.147(a)(2)(iii) , (b)(2)(i) , (c) , 2.193(e)(5) , 11.14(e) ; TMEP §§1705.07 , 1709.01(b)-1709.03 .

See TMEP §§611.06 - 611.06(h) for guidelines on persons with legal authority to bind various types of juristic entities and §§602-602.03(e) regarding persons who are qualified to represent others before the USPTO in trademark cases.

Petitions to the Director include a verified statement of the facts necessitating the petition; this statement must also be properly signed. 37 C.F.R. §§2.146(c) , 2.147(a)(2)(iii) , (b)(2)(i) , (c) . See TMEP §611.03(a) regarding who can sign a verification.

# 611.03(f) Amendment, Correction, or Surrender of Registration

All requests for amendment, correction, or surrender of a registration must be properly signed (i.e., include a submission signature) in accordance with the following guidelines:

- If the owner is represented by a qualified U.S. attorney, the attorney must sign.
- If the owner is not represented by a qualified U.S. attorney, the individual owner or someone with legal authority to bind a juristic owner must sign. In the case of joint owners who are not represented by a qualified U.S. attorney, all must sign.

37 C.F.R. §§2.11(a) , 2.172 , 2.173(b)(2) , 2.193(e)(6) .

Requests for amendment or correction due to the registration owner’s mistake must also include a verification signature in accordance with TMEP §611.03(a) . 37 C.F.R. §§2.173(b)(2) , 2.175(b)(2) .

See TMEP §§611.06-611.06(h) for guidelines on persons with legal authority to bind various types of juristic entities and §§602-602.03(e) regarding persons who are qualified to represent others before the USPTO in trademark cases.

# 611.03(g) Renewal Applications

A renewal application must be signed by the registrant or the registrant’s representative. 37 C.F.R. §§2.183(a) , 2.193(e)(7) . See TMEP §1606.06 and §1606.07 regarding filing and execution of renewal applications.

# 611.03(h) Designations and Revocations of Domestic Representative

Designation. The designation of a domestic representative must be signed in accordance with the following guidelines:

- If the applicant or registrant is represented by a qualified U.S. attorney, the attorney must sign; or
- If the applicant or registrant is not represented by a qualified U.S. attorney, the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant must sign. In the case of joint applicants or registrants who are not represented by a qualified U.S. attorney, all must sign.

37 C.F.R. §§2.11(a) , 2.24(b) , 2.193(e)(8) .

Revocation. A revocation of domestic representative must be signed following the same guidelines for when a designation of a domestic representative is filed. 37 C.F.R. §§2.11 , 2.24(b) , 2.193(e)(8) .

Withdrawal. A withdrawal of domestic representative must be signed by an individual domestic representative or by someone legally authorized to bind a juristic domestic representative.

See TMEP §610 regarding the designation of a domestic representative by parties not domiciled in the United States.

See TMEP §§611.06-611.06(h) for guidelines on persons with legal authority to bind various types of juristic entities and §§602-602.03(e) regarding persons who are qualified to represent others before the USPTO in trademark cases.

# 611.03(i) Requests to Change Correspondence Address in an Application or Registration

A request to change the correspondence address in an application or registration must be signed in accordance with the following guidelines:

- If the applicant or registrant is represented by a qualified U.S. attorney, the attorney must sign; or
- If the applicant or registrant is not required to be nor is represented by a qualified U.S. attorney, the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant must sign. See TMEP §609.02 . In the case of joint applicants or joint registrants who are not represented by a qualified U.S. attorney, all must sign.

See 37 C.F.R. §§2.11(a) , 2.18(c) , 2.193(e)(9) ; TMEP §609.02(b) .

See TMEP §§611.06-611.06(h) for guidelines on persons with legal authority to bind various types of juristic entities and §§602-602.03(e) regarding persons who are qualified to represent others before the USPTO in trademark cases.

# 611.04 Examples of Authorized and Potentially Unauthorized Signatories

Set forth below is a list of examples of parties who are authorized and potentially unauthorized to sign responses, petitions to the Director under 37 C.F.R. §§2.146 or 2.147 , amendments, requests for express abandonment, and other documents that must be signed by the applicant or registrant, or by someone with legal authority to bind the applicant or registrant. This list is not exhaustive.

Authorized Parties. In the following situations, a signatory is presumed to be authorized to represent an applicant or registrant:

- Person identifies him/herself as an officer of a pro se applicant or registrant (e.g., “President,” “Vice President,” “Treasurer,” “Secretary”) of a domestic corporation or the equivalent for another type of domestic business entity (e.g., “Partner” for a partnership, “Member” or “Principal” for a Limited Liability Company).
- Person signing for a previously pro se applicant or registrant identifies him/herself as an attorney in good standing of the bar of the highest court of any U.S. state or its territories who is practicing abroad (e.g., Mary Smith, active member in good standing of the New York State Bar since 1988, with offices in Nassau, Bahamas).
- Person signing for a foreign corporation identifies him/herself as a qualified U.S. attorney serving as “general counsel” or “in-house counsel” AND as a “corporate officer” or another corporate officer position (e.g., “Secretary,” “Treasurer,” or “Vice President”).
- Person signing for a previously pro se applicant or registrant identifies him/herself as an attorney with a U.S. law firm or as “general counsel” or “in-house counsel” of a U.S. applicant, who is in good standing of the bar of the highest court of any state in the United States or its territories, and lists his or her attorney bar information ( see TMEP §602.01(a) ), and thus is recognized as the attorney of record ( see TMEP §604.01 ).
- Person signing is a different attorney from the same U.S.-based firm as the current attorney of record.
- Person signing on behalf of a Canadian applicant or registrant is a Canadian trademark attorney or agent whom OED has recognized as qualified to represent parties located in Canada and where the applicant or registrant has also recognized a qualified U.S. attorney ( see TMEP §602.03(a) ).
- Person signing identifies him/herself as an “officer” of a domestic pro se corporate applicant.

Potentially Unauthorized Parties. In the following situations, a signatory is presumed to be unauthorized to represent an applicant or registrant:

- Person signing provides no title or position (e.g., applicant is Jack Smith, an individual citizen of the United States, and Mary Jones signs the response; or applicant is ABC Corporation, and Bill Miller, President, signs the original application, but Dave Wilson, with no listed title or position, signs the response).
- Person signing appears to be a foreign attorney (e.g., “solicitor” or “barrister” for a foreign entity), or is a foreign law consultant with a law firm in the United States.
- Person signing identifies him/herself as a non-attorney representing applicant or registrant in some other capacity (e.g., accountant, paralegal, trademark administrator, business manager, personal assistant, or legal secretary).
- Person signing provides the address of a foreign firm but does not indicate that he or she is a qualified U.S. attorney who is practicing abroad.
- Person signing an application or registration owned by a foreign entity identifies him/herself as “attorney for applicant,” “attorney at law,” or similar language, but does not specify that he or she is a member in good standing of the bar of the highest court of a U.S. state (which includes the District of Columbia, a U.S Commonwealth, or a U.S. territory).
- Person signing identifies him/herself as “attorney-in-fact.”
- Person signing on behalf of a foreign-domiciled entity is identified as “in house counsel” or “general counsel,” with no other indication of recognition to practice before the USPTO.
- Person signing identifies him/herself as “representative of,” “agent for,” or “representing” applicant or registrant, with no other explanation.
- Person signing identifies him/herself as an “authorized signatory” but provides no other indication of the nature of the signer’s relationship to applicant or registrant.
- Person signing is a new qualified U.S. attorney from a different firm, when the applicant or registrant had previously appointed a qualified U.S. attorney and no new power of attorney or revocation of the previously appointed power has been made of record.

# 611.05 Processing Documents Signed by an Improper Party

When examining a document filed in connection with a trademark application or registration, the USPTO staff must ensure that all documents are signed by a proper party. See TMEP §611.02 .

Responses in examination. When it appears that a response to an Office action is signed by an improper party, the examining attorney must generally treat the response as incomplete and follow the procedures in TMEP §611.05(a)-(c) . The response may not be ratified by an examiner’s amendment. See TMEP §611.03(b) regarding who can sign a response. The examining attorney must ensure that the record establishes a proper party signed the response.

For a response to an Office action signed by an applicant who was required to appoint a qualified U.S. attorney but did not do so, the examining attorney will issue a final Office action, if appropriate, reiterating the requirement to appoint a qualified U.S. attorney and indicating all issues that are made final. See TMEP §601.01(a) regarding amendments to an application by an applicant required to appoint a U.S. attorney.

Responses in post registration. When it appears that a response to an Office action is signed by an improper party, the post registration staff must treat the response as incomplete and follow the procedures in TMEP §611.05(a)-(c) . See TMEP §611.03(b) regarding who can sign a response.

For a response to an Office action signed by a registrant who has been required to appoint a qualified U.S. attorney but did not do so, the post registration specialist will issue a second Office action reiterating the requirement to appoint a qualified U.S. attorney.

Other submissions. If a submission other than a response to an Office action (e.g., a proposed amendment to an application that is not responsive to an Office action, a petition to the Director under 37 C.F.R. §2.146 or §2.147 , or an express abandonment) is signed by an improper party, the USPTO will notify the applicant or registrant that no action will be taken on the submission, unless the applicant or registrant either: (1) establishes the signatory’s authority; or (2) provides a properly signed submission.

See TBMP §106.02 for information about signature of documents filed in Board proceedings.

# 611.05(a) Notice of Incomplete Response when Authority of Person Signing Response Is Unclear

If it appears that a response to an examining attorney’s Office action is signed by an improper party, and the applicant is not required to be represented by a qualified U.S. attorney, the examining attorney must treat the response as an incomplete response, and grant the applicant 30 days, or to the end of the response period set forth in the previous Office action, whichever is longer, to perfect the response, pursuant to 37 C.F.R. §2.65(a)(2) . See TMEP §718.03(b) . The applicant must submit a response properly signed in accordance with the guidelines in TMEP §611.03(b) . These same principles and procedures apply to responses to Office actions issued by other USPTO employees (e.g., staff in the Post Registration Section, ITU/Divisional Unit, or Office of Petitions).

See also TMEP §712.03 .

# 611.05(b) Replying to a Notice of Incomplete Response

If the individual whose name appears beneath the signature is an authorized signer, and the applicant is not represented by a qualified U.S. attorney or required to be represented by a qualified U.S. attorney, he or she may simply telephone or send an email message to clarify the record, and the USPTO staff will make an appropriate Note to the File in the record, review the previously submitted response, and take the appropriate action.

A proper reply to a notice of incomplete response must state the nature of the relationship of the signer to the applicant or registrant. If the signer has legal authority to bind the applicant or registrant, the person should so state, and must set forth his or her title or position. If the signer is a qualified U.S. attorney who may practice before the USPTO pursuant to 37 C.F.R. §11.14(a) ,the attorney should identify himself or herself as such an attorney and must provide the required bar information and statement of good standing. See TMEP §§602.01 , 602.01(a) . If the signer meets the requirements of 37 C.F.R. §§11.14(b) or (c) , the person should explain how he or she meets these requirements.

In a pending application, if the person who signed the response is not an authorized signer, the applicant is not represented by a qualified U.S. attorney or required to be represented by a qualified U.S. attorney, and all proposed amendments in the improperly signed response can be resolved by an examiner’s amendment, then the individual applicant or a person with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership) may telephone the examining attorney to authorize such an amendment. Otherwise, when the person who signed the response is not an authorized signer, the applicant must timely submit a properly signed response. See TMEP §§611.03(b) , 611.06–611.06(h) , and 712.01 regarding the proper party to sign a response to an Office action.

See TMEP §604.04 regarding changes of attorney.

# 611.05(c) Unsatisfactory Response or Failure to Respond

Pending Applications. If there is an unsatisfactory response or no response is received to the notice of incomplete response issued in connection with the application, the USPTO will abandon the application for incomplete response. See TMEP §718.03(a) for procedures for holding an application abandoned for failure to respond completely.

Post Registration. If there is an unsatisfactory response or no response is received to the notice of incomplete response issued in connection with an affidavit of use or excusable nonuse under §8 or §71, or a §9 renewal application, the USPTO will notify the registrant that the affidavit or renewal application remains unacceptable, and that the registration will be cancelled and/or expired in due course. In the case of a §7 request, the USPTO will notify the registrant that the request for amendment or correction is abandoned.

# 611.06 Guidelines on Persons with Legal Authority to Bind Certain Juristic Entities

When a document must be signed by a person with “legal authority to bind a juristic entity,” the signatory must be someone who has the authority to bind that entity to any obligation and/or agreement whatsoever, and not solely with regard to trademark matters.

See TMEP §611.02 regarding signature by authorized parties being required for application- or registration-related submissions, §§611.03-611.03(i) regarding who can sign specific application- or registration-related submissions, and §611.03(a) regarding who can sign a verification.

# 611.06(a) Joint Owners

Joint owners are individual parties and not a single entity. Where a document must be signed by someone with legal authority to bind joint owners, the document must be signed by all the owners. See 37 C.F.R. §§2.193(e)(2)(ii) , (e)(3) , (e)(5)(ii) , (e)(6) , (e)(8) , (e)(9)(ii) .

# 611.06(b) Signature by Partnership

Where a document must be signed by someone with legal authority to bind a partnership, a general partner must sign. Signature by all the general partners is not necessary. If the partnership comprises general partners who are juristic entities (e.g., the general partners are corporations), someone with legal authority to bind that type of juristic entity must sign.

In appropriate cases, a document filed by a partnership may be signed by an official other than a general partner, if the record contains an explanation or documentation indicating that the person signing the document has legal authority to bind the partnership.

# 611.06(c) Signature by Joint Venture

Where a document must be signed by someone with legal authority to bind a joint venture, each party to the venture must sign. Although a joint venture has many attributes of a partnership, it is a special partnership, which is very limited in nature and scope. Generally, signature by each party to the joint venture is necessary.

In appropriate cases, a document filed by a joint venture may be signed by a general manager or other official rather than by each of the joint venturers, if the applicant or registrant states that the person who signed has legal authority to bind the joint venture under relevant state law.

# 611.06(d) Signature by Corporation

Where a document must be signed by someone with legal authority to bind a corporation, a corporate officer must sign. An officer is a person who holds an office established in the articles of incorporation or corporate bylaws.

The usual titles for officers are President, Vice-President, Secretary, Treasurer, Chief Executive Officer, Chief Operating Officer, and Chief Financial Officer. In some organizations, the Treasurer is called a Comptroller or Controller, and these terms are acceptable. In Maine and Massachusetts the term “Clerk” identifies an officer of a corporation.

Modifications of these basic titles are acceptable if they include the officer title. Titles such as Vice-President for Sales, Executive Vice-President, Assistant Treasurer, Executive Secretary, and Administrative Secretary are acceptable.

The signature of the “Chairman” or “Chairman of the Board of Directors” is also acceptable, but not the signature of an individual director (e.g., the Vice-Chairman of the Board). The terms “Executive Secretary” and “Administrative Secretary” are acceptable because they include the officer-title “Secretary.”

Some titles are generally not accepted because they usually do not identify officers. For instance, a General Manager, or any other type of manager, is usually merely an employee, not an officer.

If the applicant or registrant states that the person who signed the response is authorized to bind the applicant or registrant under the articles of incorporation or bylaws, the USPTO will accept the signature.

A corporation cannot delegate authority to sign to someone who is not a corporate officer. In re Textron, Inc., 183 USPQ 301 (Comm'r Pats. 1974). Therefore, documents purporting to authorize representation, even if signed by officers, will not be accepted as establishing authority of a person who does not have authority to legally bind the corporation under its bylaws or articles of incorporation.

When the applicant or registrant is a corporation, a statement that the signatory is an “officer” or “duly authorized officer” of the corporation is acceptable. However, it is unacceptable to state that the person who signed the verification is an “authorized signatory.”

# 611.06(e) Signature by Foreign Companies and Corporations

There are significant differences between the legal entities established under the laws of the United States and legal entities established and recognized under the laws of foreign countries, and the titles and duties of officers of foreign corporations and companies often differ from those in the United States. In the case of foreign entities that are in the nature of corporations, the USPTO will accept the signature of a person considered to be equivalent to an officer under the law of the foreign country. Indication of a title identifying the signer as a type of officer – such as “Legal Officer” or “Information Officer” – is also sufficient.

In foreign countries, a person who holds the title “Manager” or “Director” is normally an officer or the equivalent of an officer.

The term “Procurist” is used in a number of countries to indicate an officer. For British companies, the terms “Registrar” and “Confidential Clerk” are the equivalent of officers.

If the applicant or registrant states that the person who signed the response holds a position that is the equivalent of an officer of a U.S. corporation, the USPTO will accept the signature.

Simply stating that a person has been granted authority to act on behalf of the applicant or registrant is insufficient. Documents purporting to authorize representation, even if signed by officers, will not be accepted as establishing the authority of a person who is not the equivalent of an officer. The applicant or registrant must state that the signatory has authority to legally bind the applicant or registrant under its bylaws or articles of incorporation.

See TMEP §611.04 regarding examples of acceptable signatories for foreign corporations and §611.06(g) regarding acceptable signatories for foreign limited liability companies.

# 611.06(f) Signature by Unincorporated Association

For organizations that are less formally organized than corporations (e.g., fraternal societies, unions, unincorporated associations, and governmental bodies), the titles for officers are less standardized. These organizations frequently use more individualistic terms for titles than the terms customarily used by corporations, and the officer positions themselves may not be as clearly or as formally provided for as is the case with corporations. Regardless of how unfamiliar the title is or how informal the position seems to be, the USPTO will accept the signature if the applicant or registrant states on the record that the signer has, within the framework of the particular organization, authority equivalent to that of an officer to act on behalf of the organization (i.e., has authority to legally bind the applicant or registrant under its bylaws or articles of formation). Some titles that have been accepted are Director, National Director, National Commander, Permanent Chairman, International Sponsor, Supreme Ruler, Royal Impresario, and Chairman of the Steering Committee.

# 611.06(g) Signature by Limited Liability Company

A limited liability company (“LLC”) has attributes of both a corporation and a partnership. See TMEP §803.03(h) . Generally, a signatory identified as “manager,” “member,” “principal,” or “owner” may be presumed to have the authority to sign on behalf of a domestic or foreign limited liability company. In addition, anyone with a corporate-officer-type title, such as "President" or "Chief Executive Officer," may sign.

# 611.06(h) Signature by Limited Liability Partnership

A limited liability partnership (“LLP”) has attributes of both a partnership and a corporation. See TMEP §803.03(k) . Laws vary to some extent as to the authority conferred on various partners associated with the limited liability partnership. Generally, all partners are recognized as having general agency authority to bind the partnership in the ordinary course of business. Therefore, anyone identified as a partner may sign.

Many states provide for the filing of a Statement of Partnership Authority which specifically names partners having authority and/or limits the authority of certain individuals. If an individual who is not a named partner of the LLP has been recognized as having authority to bind the LLP, that person may sign, and must indicate his or her position as an individual designated in the LLP’s Statement of Partnership Authority.

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