If the USPTO suspects that a party, whether an individual or a firm, is engaging in unauthorized practice of trademark law or otherwise improper activities before the USPTO, the Commissioner for Trademarks may issue a show-cause order. A show-cause order requires the party to establish the legitimacy of their activities and to explain why they should not be excluded from acting on behalf of others before the USPTO. Depending on the party’s response, a show-cause order may be followed by an exclusion order, which formally excludes the party from serving as an attorney, correspondent, domestic representative, and/or signatory in trademark matters before the USPTO.
Once a party has been excluded, the USPTO will change the correspondence address for each affected application or registration file record to that of the applicant, registrant, or domestic representative, as appropriate, and will notify the affected applicant or registrant that:
- The excluded party is not entitled to practice before the USPTO in trademark matters and, therefore, may not represent the applicant or registrant.
- Any power of attorney granted to the excluded party is void ab initio, meaning it was invalid from the start of any action taken by the excluded party.
The excluded party 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.
All correspondence concerning the application or registration will be sent to the domestic representative if one has been appointed, or, alternatively, and in most circumstances, to the applicant or registrant at its address of record.
What to do if the USPTO excluded the party representing you
(1) Review your application/registration record
Go to the Trademark Status & Document Retrieval (TSDR) system and enter your serial number or registration number to retrieve the record for your application or registration.
(2) Review your contact information
Once you have retrieved your application/registration record in TSDR, select the “Status” tab and review the Attorney/Correspondence Information to confirm that the correspondence information is correct.
If the correspondence information is incorrect, correct it by filing a Change of Correspondence Address form. If necessary, you may also change the owner’s address information, using the Change of Owner’s Address form. Both forms are available at Correspondence and Attorney/Domestic Representative Forms.
(3) Determine if you are required to file anything
Select the “Documents” tab in TSDR and view the outgoing correspondence from the USPTO in the record to determine if you are required to file anything in connection with your application or registration, such as a response to an Office action, a statement of use, or a registration maintenance document.
If your application is still pending and you fail to file a required document before the deadline, your application will be abandoned. If your mark is already registered, and you fail to submit the required registration maintenance documents on time, your registration will expire or be cancelled. All required documents may be filed electronically by using the appropriate electronic form in the Trademark Electronic Application System (TEAS).
After your initial review of your application or registration record, continue to monitor the status of your application or registration, using the “Status” tab in TSDR.
- For applications, you should check the status every six months between the filing date of the application and issuance of a registration.
- If your mark is already registered and you have filed an affidavit of use or excusable nonuse under §8 or §71 of the Trademark Act, or a renewal application under §9 of the Act, you should check the status of the registration every six months until you receive notice that the affidavit or renewal application has been accepted.
For pending applications, contact the assigned examining attorney, whose contact information is provided in Office actions sent in connection with your application. In TSDR, Office actions are identified as “Offc Action Outgoing” in the “Documents” tab. For registrations, contact the assigned Post Registration specialist, whose contact information will be provided in any Office action sent in connection with registration maintenance filings, or the Office of Petitions at 571-272-8950.
For general questions about the trademark process, guidance on the type of information required in a particular electronic form, or information about which USPTO offices or employees to contact for particular issues, contact the Trademark Assistance Center at 571-272-9250, or toll-free at 1-800-786-9199. You can also email TrademarkAssistanceCenter@uspto.gov.
(4) Review all documents previously submitted on your behalf
If your application is still pending, and a registration has not yet issued, you should review any documents submitted on your behalf to confirm that it was signed by the appropriate party and that all the information in the document is correct. If you believe that any submitted document was improperly signed or contains incorrect information, you should contact the assigned examining attorney, who can answer questions about the process for resubmitting documents.
If your mark is already registered and registration maintenance documents have been submitted on your behalf, you should review the documents to confirm that they contain accurate information and are properly signed. If you have any questions about a registration maintenance document submitted on your behalf, you may contact the assigned Post Registration specialist whose contact information will be provided in any Office action sent in connection with registration maintenance filings, or the Office of Petitions at 571-272-8950.
For additional information on who may sign documents submitted to the USPTO in connection with trademark applications and registrations, see warning about unauthorized practice of law and TMEP §§611.03–611.04.
(5) Consider hiring a qualified attorney to represent you
Consider hiring a qualified attorney with expertise in trademark matters to represent you in the application process. While a USPTO trademark examining attorney will try to help you through the examination process even if you do not hire an attorney, USPTO attorneys are not permitted to give you legal advice.
A private trademark attorney who is licensed in the United States and is authorized to practice before the USPTO may:
- Help you avoid future costly legal problems by conducting a comprehensive search of federal registrations, state registrations, and "common law" unregistered trademarks before you file your application. Comprehensive searches are important because other trademark owners may have protected legal rights in trademarks similar to yours that are not federally registered. Therefore, those trademarks will not appear in our Trademark Electronic Search System database, but they could still ultimately prevent your use of your mark.
- Help you during the application process with several things that could seriously impact your trademark rights, such as determining the best way to describe your goods and services and preparing responses to refusals to register your mark that we may issue.
Assist you after your mark is registered by filing registration maintenance documents and by taking actions to help you police and enforce your trademark rights. While the USPTO registers trademarks, you, as the trademark owner, are fully responsible for any enforcement of your private trademark rights.
If you decide to hire an attorney, you should be aware that, under U.S. federal regulations, the only individuals who may represent an applicant or registrant in trademark matters before the USPTO, other than certain previously authorized trademark agents, are (1) attorneys who are licensed to practice in the United States and (2) Canadian agents or attorneys who are authorized by the USPTO to represent applicants located in Canada. Employing a foreign attorney or other individual who is not authorized to practice before the USPTO to represent you in connection with your trademark application may delay and prolong the trademark application examination process and could jeopardize the validity of any resulting registration.
The USPTO has established a Law School Clinic program in which participating law schools provide free legal services to trademark applicants in connection with trademark applications before the USPTO. Each school in the program has its own criteria for accepting clients. If you are interested, you should contact a participating school to inquire about becoming a client. For a list of schools participating in this program and additional information about the program, visit Law School Clinic Certification Program.
For more information on finding a qualified private attorney to assist you, visit Using Private Legal Services.
For more information on the unauthorized practice of trademark law and who may practice before the USPTO in trademark matters, see warning about unauthorized practice of law.
What to do when your application is abandoned
When an application is abandoned, it means that the application is no longer pending and, thus, a registration will not be issued. The USPTO may deem your application abandoned if you fail to submit a response to an Office action or fail to respond completely to an Office action; if you fail to respond to a suspension inquiry; or if you fail to file a statement of use. In addition, an application may be “expressly abandoned,” meaning that the applicant has requested that application be abandoned and that no further prosecution of the application will occur.
In some cases, you may file a petition to revive an abandoned application or request that an abandoned application be reinstated. More information about abandonment and the process of reviving or reinstating an abandoned application may be found at Abandoned Applications.
What to do if your registration expires or is cancelled
Once your mark is registered, you, as the registration owner, must file specific documents and pay the required fees at regular intervals to keep the registration "alive" or valid. Failure to file these documents or pay the required fees will result in the cancellation or expiration of your registration.
If you failed to timely respond to an Office action refusing to accept a §8 affidavit, §71 affidavit, or §9 renewal application due to an extraordinary situation, you may file a formal petition under 37 C.F.R. §§2.146(a)(5) and 2.148 to accept a late response. You may file the petition electronically using the Petition to the Director under Trademark Rule 2.146 form, available at Petition Forms. You must file the petition within two months of the issue date of the cancellation notice. If you did not receive the cancellation notice, or no cancellation notice was issued, you must file the petition must within two months of the date the Trademark database was updated to indicate that the registration expired or was cancelled.
If your registration expires or is cancelled, but you have proof that a USPTO error led to the cancellation or expiration, you may file a request to reinstate a cancelled or expired registration. You may file the request electronically using the Petition to the Director under Trademark Rule 2.146 form, available at Petition Forms. Although a petition fee is required in order to file the form, it will be refunded if USPTO error is found. For a list of examples of situations where the USPTO may reinstate a cancelled or expired registration, please see TMEP §1712.02(a).
For additional information about maintaining your trademark registration, visit Keeping Your Registration Alive.