Proper representation in trademark matters

Filing a trademark application with the United States Patent and Trademark Office (USPTO) starts a legal proceeding that is governed by U.S. law.  While an applicant may represent itself in this legal proceeding, we strongly recommend that foreign applicants, and any applicants who are unfamiliar with the trademark application process, hire an attorney with expertise in trademark matters to represent them and provide legal advice. 

Who is permitted to represent you in a trademark matter before the USPTO, such as a trademark application?


Under U.S. federal regulations, the only individuals who may represent an applicant or registrant in trademark matters before the USPTO are:

  • You, in a matter involving the trademark you own.
    • You may file on your own behalf and represent yourself in an application for registration of a mark that you own.
    • You may file a trademark application for a trademark owned by a partnership of which you are a partner, or by a corporation, limited liability company, or other legally formed organization of which you are an officer or the equivalent and which you are authorized to represent.
  • A private trademark attorney who is licensed in the United States and is authorized to practice before the USPTO.
     
  • Canadian agents or attorneys who are authorized by the USPTO to represent applicants located in Canada.

  • Certain trademark agents recognized to practice before the USPTO prior to January 1, 1957.

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.
  • Lead to the abandonment of your application.
  • Jeopardize the validity of any resulting registration.
     
Except as noted above, non-attorneys and foreign attorneys may not perform any of the following actions as a representative of another person in trademark matters before the USPTO:
 
  • Consulting with or giving advice to an applicant or registrant in contemplation of filing a trademark application or application-related document.
  • Preparing or prosecuting an application, response, post-registration maintenance document, or other related document.
  • Signing amendments to applications, responses to Office actions, petitions to the Director, requests to change the correspondence address, or requests for express abandonment.
  • Authorizing issuance of examiner’s amendments and priority actions.  
  • Conducting an appeal or an opposition, cancellation, or concurrent use proceeding before the Trademark Trial and Appeal Board.

The unauthorized practice of trademark law before the USPTO is a serious matter and we will take appropriate actions if unauthorized practice is occurring. These actions may include:

  • Rejecting application submissions that were improperly signed or authorized.
  • Excluding individuals and entities from acting as an attorney, correspondent, signatory, or domestic representative in all trademark matters before the USPTO.

For information on what you should do if the USPTO has excluded the party representing you, visit Applicants and Registrants Represented by Excluded Parties
 

Using a qualified private trademark attorney to file your trademark application


While a USPTO trademark examining attorney will try to help you through the examination process even if you do not hire an attorney, our 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 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 the USPTO examining attorney 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.

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 participating schools 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.
 

Signatures on trademark applications and associated documents


All documents submitted to the USPTO in connection with a trademark application or registration must be signed by a proper person. 

The proper person to sign depends on the nature of the submission. Certain submissions may be signed by anyone with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant, while others must be signed by the appointed attorney, or by the applicant if no attorney is appointed.  

All signatures must be personally entered by the individual person identified as the signatory.  Thus, another person may not sign the name of an attorney or other authorized signer.  Signatures “by the corporation” or “by the firm” are not permitted. 

Improperly signed submissions may delay or prolong the application process, may lead to the abandonment of your application, and may jeopardize the validity of any resulting registration.  If the USPTO determines that a submission is improperly signed, the submission will not be accepted and any arguments, evidence, or amendments set forth in the submission will not be considered or entered.
 

Verifications of Facts

A verification signature is submitted for the purpose of verifying facts in a document on behalf of an applicant. 

The signatures on the following submissions are considered to be verification signatures:

  • Trademark applications.
  • Allegations of use.
  • Requests for extension to file a statement of use.
  • Declarations in support of substitute specimens and claims of acquired distinctiveness.

Verification signatures may be signed by any of the following individuals: (1) a person with legal authority to bind the applicant; (2) a qualified attorney representing the applicant; or (3) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant.
 

Responses, Amendments, Changes of Correspondence, Express Abandonments, and Other Submissions

The signature requirements for responses to Office actions; amendments to applications; requests for reconsideration; requests to divide; requests to change the correspondence address; designations and revocations of domestic representatives; and requests for express abandonments are more specific about who must sign. For these submissions, if the applicant is represented by a qualified attorney, the attorney must sign.

If you are an individual applying for registration of a trademark that you own, and you are not represented by a qualified attorney, then you must sign these submissions; signatures by anyone other you are generally not acceptable.

If the applicant is a juristic entity (i.e., not an individual person) and is not represented by a qualified attorney, then someone with legal authority to bind the applicant must sign these submissions.  Therefore, if the applicant is a corporation, a corporate officer, such as a president or vice president, is presumed to have the legal authority to bind the applicant.  Likewise, a partner is presumed to have the appropriate legal authority to bind an applicant that is organized as a partnership. On the other hand, signatories identified by terminology such as “trademark administrator,” “business manager,” “owner’s designated agent,” or similar titles are presumed to be unauthorized signatories. 

Finally, if there is more than one applicant, and no qualified attorney has been appointed, then all applicants must sign these submissions.