Chapter 600
Attorney, Representative, and Signature

601.01 USPTO Cannot Aid in Selection of an Attorney

The USPTO cannot aid in the selection of a qualified practitioner.   37 C.F.R. §2.11 .

If it is apparent that an applicant or registrant is unfamiliar with the procedures for prosecuting an application or maintaining a registration and needs more detailed or technical assistance than the USPTO staff is permitted to give, the USPTO staff may suggest that it may be desirable to employ an attorney who is familiar with trademark matters.  The following is an example of language that may be used in the Office action:

The applicant may wish to hire a trademark attorney because of the technicalities involved in the application.  The United States Patent and Trademark Office cannot aid in the selection of an attorney.   37 C.F.R. §2.11 .

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

If an applicant or registrant is represented by a qualified practitioner, the USPTO will conduct business only with the practitioner, unless that representation is terminated.   37 C.F.R. §2.18(a)(7) .  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 practitioner.  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.

An applicant or registrant may not authorize an examiner’s amendment or change of correspondence address, and the USPTO will not accept responses or amendments signed by the applicant or registrant if there is a qualified practitioner of record. See 37 C.F.R. §2.18(a)(7) .  See TMEP §§611–611.06(h) regarding signature of documents filed in the USPTO.

An applicant or registrant may revoke the authority of a qualified practitioner to represent the applicant or registrant. 37 C.F.R. §2.19(a)(1) . An applicant or registrant who wishes to revoke the power of attorney should be encouraged to file the revocation through the Trademark Electronic Application System (“TEAS”).  See TMEP §606 regarding revocation of power of attorney.

See TMEP §604.03 regarding changes of attorney, TMEP §604.02 regarding the duration of recognition as a representative, and  TBMP §§114–114.08 regarding representation of parties to proceedings before the Board.

602.01 Attorneys Licensed to Practice in the United States

An attorney who is a member in good standing of the bar of the highest court of a state in the United States (which includes the District of Columbia and any Commonwealth or territory of the United States) may practice before the USPTO in trademark matters. 37 C.F.R. §§2.17(a) , 11.1 (definitions of Attorney and State), 11.14(a) .  No application for recognition to practice before the USPTO is necessary.  The USPTO does not give an examination for eligibility or maintain a register of United States attorneys entitled to practice in trademark cases.  An attorney meeting the requirements of 37 C.F.R. §11.14 who files a power of attorney pursuant to 37 C.F.R. §2.17(c) ,appears in person, or signs a document on behalf of an applicant or registrant will be accepted as the representative of the applicant or registrant.   37 C.F.R. §2.17(b) . A qualified practitioner may also be recognized as the applicant’s representative if the practitioner is identified as the attorney of record in the application, even when the application is signed by the applicant. 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.  Generally, attorneys who have not specifically been mentioned in a power of attorney may discuss but not conclude business with the USPTO over the telephone.  However, if an attorney from the same United States 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 37 C.F.R. §2.18(a)(7) .

602.02 Non-Attorneys

Non-attorneys are not permitted to practice 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) .

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  

Generally, only an attorney as defined in 37 C.F.R. §11.1 may represent an applicant or registrant before the USPTO.  5 U.S.C. §§500(b), and (d); 37 C.F.R. §§2.17(a) , 11.14(a) , (e) .  In very limited circumstances, Canadian agents or attorneys registered or in good standing before the Canadian Intellectual Property Office may file an application for reciprocal recognition to represent parties located in Canada. 37 C.F.R. §§2.17(e) , 11.14(c) , (f) . See TMEP §602.03(a) regarding Canadian attorneys and agents.

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 registered or in good standing before the patent or trademark office of the country in which he or she resides and practices and is possessed of good moral character and reputation; and
• (3)  The patent or trademark office of that foreign country allows substantially reciprocal privileges to those permitted to practice before the USPTO.

37 C.F.R. §§11.14(c) , (f) .  The application for reciprocal recognition must be filed and granted prior to practicing before the USPTO in trademark matters.  A foreign attorney or agent may not practice before the USPTO in trademark matters prior to being recognized by the OED Director.  Practice before the USPTO in trademark matters includes preparing and prosecuting applications for trademark registration and otherwise representing a party to a proceeding before the USPTO.   37 C.F.R. §11.5(b)(2) .  The OED Director grants recognition only in the form of a written communication.  A foreign attorney or agent not 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.

Currently, a Canadian attorney or agent who is registered or 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 attorneys and agents.

604.01 Three Ways To Be Recognized as a Representative

To be recognized as a representative, a qualified practitioner 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 in person on behalf of an applicant or registrant who is not already represented by a qualified practitioner 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) or registered as a patent agent pursuant to 37 C.F.R. §11.6(c) may not be recognized as a representative.

Generally, as long as no other qualified practitioner from a different firm has been previously appointed, it is not necessary for a qualified practitioner to file a power of attorney or obtain special authorization in a trademark case.  A qualified practitioner who appears in person or signs a document on behalf of an applicant or registrant will be accepted as the representative of the applicant or registrant.   37 C.F.R. §2.17(b)(2) . (A qualified practitioner may also be recognized as the applicant’s representative if the practitioner is identified as the attorney of record in the application, even when the application is signed by the applicant.). Neither a telephone call nor an e-mail from a qualified practitioner satisfies the “appearance” requirements of 37 C.F.R. §2.17(b) . However, after issuance of an Office action to a pro se applicant and prior to response, a qualified practitioner may satisfy the appearance requirement by submitting a signed document into the record stating that the practitioner represents the applicant and requesting that the Office records be updated to indicate that he or she is the attorney of record.

An individual not meeting the requirements of 37 C.F.R. §2.17(b) 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 practitioner as the representative of an applicant or registrant, the USPTO will communicate and conduct business only with that practitioner or with another qualified practitioner from the same United States firm.  The USPTO will not conduct business directly with the applicant or registrant, or with a qualified practitioner from a different firm, unless the applicant or registrant files a new power of attorney or revokes the previous power, or the previously recognized practitioner files a request to withdraw.   37 C.F.R. §§2.17(c)(2) , 2.18(a)(7) , 2.19 .  See TMEP §§ 604.02 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 Duration of Recognition

Pending Applications. For purposes of recognition as a representative, the USPTO considers a power of attorney filed while an application is pending 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 a power of attorney filed 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 practitioner who transmits one of these documents even absent a new power of attorney or revocation of a previous power.

The USPTO also considers a power of attorney filed after registration to end when the registration is cancelled or expired or when ownership changes.   37 C.F.R. §2.17(g)(2) .  Therefore, the USPTO will not enter a request to withdraw as attorney or revocation of a power of attorney filed in connection with a cancelled or expired registration, unless it is accompanied by a petition to reinstate the registration.  See TMEP §605.04 regarding powers of attorney filed after registration.

Change of Ownership. For purposes of recognition as a representative, the USPTO considers a power of attorney filed 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 practitioner appears on behalf of the new owner, the USPTO will communicate and conduct business with that practitioner even absent a new power of attorney or revocation of the previous power.  If the previously recognized practitioner 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 practitioner.  The previously recognized practitioner does not have to file a new power of attorney 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 a power of attorney to end for purposes of recognition as a representative, the USPTO will not automatically change the attorney and correspondence address in its Trademark database, because it is possible that the previously recognized practitioner still represents the applicant or registrant and wants to continue receiving correspondence.  The USPTO will continue to recognize the previously recognized practitioner if he or she appears or signs a document on behalf of the applicant or registrant.  However, if a new qualified practitioner appears in person or signs a document, the Office will recognize the new qualified practitioner pursuant to 37 C.F.R. §2.17(b) , and correspond with him or her, without requiring a new power of attorney or revocation of the previous power.  See TMEP §§609.02–609.02(f) regarding changes of correspondence address.

These practices also apply where a qualified practitioner is recognized by appearing in person or signing or filing a document on behalf of the party whom he or she represents.   37 C.F.R. §2.17(b) ; TMEP §604.01 .

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

604.03 Change of Attorney

Once the USPTO recognizes a qualified practitioner as the representative of an applicant or registrant, a new qualified practitioner 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 practitioner; or (3) the previously recognized practitioner files a request to withdraw.   37 C.F.R. §§2.18(a)(7) , 2.19(b) .  Until such action is taken, the new qualified practitioner 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.

If an applicant or registrant is already represented by a qualified practitioner, and a new qualified practitioner from a different firm wishes to take action with respect to the application or registration, the new practitioner must file a revocation of the previous power of attorney or new power of attorney naming the new qualified practitioner, 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 practitioner.   37 C.F.R. §2.18(a)(7) .  The new practitioner may not sign the revocation of the previous power him or herself.  See 37 C.F.R. §2.17(c) and TMEP §605.01 regarding requirements for power of attorney, and TMEP §606 regarding revocation of power of attorney.

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

For purposes of recognition as a representative of an applicant or registrant, the USPTO considers a power of attorney filed while an application is pending to end with respect to a particular application when the mark is registered, when the application is abandoned, or when ownership changes.   37 C.F.R. §2.17(g)(1) .  The USPTO considers a power of attorney filed after registration to end when the registration is cancelled or expired or when ownership changes. 37 C.F.R. §2.17(g)(2) . If the power is filed in connection with an affidavit under §8, §12(c), §15, or §71, a §9 renewal application, or a §7 request, the power is deemed to end upon acceptance or final rejection of the filing.   Id.   TMEP §604.02 .  In these situations, it is not necessary to file a new power of attorney or revocation of the previous power before a new qualified practitioner may take action.  See TMEP §605.04 regarding the processing of powers of attorney filed after registration.

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

605.01 Requirements for Power of Attorney

A power of attorney must:  (1) designate by name at least one individual qualified practitioner; 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.

If a power specifies only the name of a law firm, the USPTO will treat it as a correspondence address rather than a power of attorney.  See TMEP §§609–609.04 regarding the correspondence address.

A qualified practitioner cannot 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).

However, the filing of a power of attorney is not mandatory in a trademark case.  Thus, if a power of attorney is signed by an improper person (e.g., by the named attorney) and no other qualified practitioner has been previously appointed, the USPTO generally will not require a properly signed power.  If the improperly signed power of attorney is accompanied by a document that is signed by a qualified practitioner or includes the name and address of a qualified practitioner, the USPTO may recognize that qualified practitioner under 37 C.F.R. §2.17(b) , separate and apart from the improperly signed power.  See TMEP §604.01 regarding the three ways that a qualified practitioner may be recognized as a representative, TMEP §609.01 regarding establishment of the correspondence address in a new application, and TMEP §609.02(a) regarding the limited situations in which the USPTO will change the correspondence address to that of a qualified practitioner absent a written request to change the correspondence address.

However, if an applicant or registrant is already represented by a qualified practitioner, and a new qualified practitioner wishes to take action with respect to the application or registration, the new qualified practitioner must file a new power of attorney 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 practitioner.   37 C.F.R. §2.18(a)(7) .  See TMEP §604.03 regarding change of attorney, TMEP §606 regarding revocation of power of attorney, and TMEP §611.06 regarding persons with legal authority to bind juristic entities.

If two or more qualified practitioners are named in a power of attorney and one practitioner changes firms, any of the named practitioners can sign and submit a notice of change of correspondence address setting 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 practitioner changes firms.  See TMEP §§609.02–609.02(f) regarding changes of correspondence address.

To expedite processing, the USPTO recommends that powers of attorney be filed through TEAS, at http://www.uspto.gov .  When powers of attorney are filed through TEAS, the data is automatically entered into the USPTO’s automated records.

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

Using TEAS, at http://www.uspto.gov , an applicant or registrant may appoint a qualified practitioner to represent the owner for all existing applications or registrations that have the identical owner and qualified practitioner.   37 C.F.R. §2.17(d)(1) .  A power of attorney relating to future applications cannot be filed through TEAS.

An applicant or registrant may file a power of attorney on paperthat relates to more than one trademark application or registration, or to all existing and future applications and registrations.  Someone relying on such a power of attorney must:  (1) include a copy of the previously filed power of attorney; or (2) refer to the previously filed power of attorney, specifying:  the filing date of the power; the application serial number (if known), registration number, or inter partes proceeding number for which the original power of attorney was filed; and the name of the party who signed the power of attorney; or, if the application serial number is not known, submit a copy of the application or a copy of the mark, and specify the filing date.   37 C.F.R. §2.17(d)(2) .  If the applicant or registrant meets these requirements, the USPTO will accept the power of attorney.

605.03 Associate Powers of Attorney

Once the applicant or registrant has designated a qualified practitioner, the practitioner may sign an associate power of attorney, appointing another qualified practitioner -- including one from a different law firm -- as an additional person authorized to represent the applicant or registrant.   37 C.F.R. §2.17(c)(2) ). Note, however, that appointment of an associate attorney from a different law firm does not change the correspondence address from that of the practitioner designated by the applicant or registrant. 37 C.F.R. §2.18(a)(7) ; see 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 practitioner whose power has been revoked.   37 C.F.R. §2.17(c)(2) .

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 USPTO.   37 C.F.R. §2.17(c)(2) .

605.04 Power of Attorney Filed After Registration

To expedite processing, the USPTO recommends that powers of attorney be filed through TEAS, at http://www.uspto.gov .  When powers of attorney are filed through TEAS, the data is automatically entered into the USPTO’s automated records.

When a new power of attorney is filed on paper after registration, the USPTO scans an image of the document into its automated records, but does not change the attorney information unless the registrant concurrently takes a separate action, such as filing an affidavit under §8.

For purposes of recognition as a representative, the USPTO considers a power of attorney filed while an application is pending to end with registration, when the application is abandoned, or when ownership changes.   37 C.F.R. §2.17(g)(1) .  If the power is filed in connection with an affidavit under §8, §12(c), §15, or §71, a §9 renewal application, or a §7 request, the power is deemed to end upon acceptance or final rejection of the filing.   37 C.F.R. §2.17(g)(2) .   TMEP §604.02 .

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

608.01 Actions by Unauthorized Persons Not Permitted

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

When an applicant or registrant is represented by a qualified practitioner, the USPTO encourages the practice of direct communication with the appointed practitioner.  Although paralegals and legal assistants may relay information between the examining attorney and the appointed practitioner, they are not authorized to conduct business before the USPTO.  For example, paralegals and legal assistants cannot authorize issuance of examiner’s amendments or priority actions, even if only conveying the appointed practitioner’s approval by indicating that the appointed practitioner has approved the amendment or action.

Once the USPTO recognizes a qualified practitioner as representing an applicant or registrant, a new qualified practitioner from a different firm is not permitted to represent the applicant or registrant until the applicant or registrant revokes the power of attorney of the previously recognized practitioner, or the previously recognized practitioner withdraws.   TMEP §604.03 .

An individual who is not authorized under 37 C.F.R. §11.14 may transmit and receive correspondence.  Such an individual may also sign a verification on behalf of an applicant or registrant, 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 a practitioner or non-practitioner, 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 Administrator for Trademark Policy and Procedure in 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

Occasionally, the Director of the USPTO suspends or excludes a particular individual from practice before the USPTO.   35 U.S.C. §32 ;  37 C.F.R. §11.56 . A suspended or excluded individual is not a qualified practitioner 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 Official Gazette and the decision is posted in the FOIA Reading Room https://e-foia.uspto.gov/Foia/OEDReadingRoom.jsp .

In addition, the USPTO may discover that a person 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. In these cases, the Commissioner for Trademarks may exclude the party from participating as a signatory, correspondent, or domestic representative on behalf of others in any trademark matters before the USPTO. See 35 U.S.C. §§2 , 3(b)(2)(A) , 32 . Exclusion orders 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 Administrator for Trademark Policy and Procedure (“Administrator”) 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 domestic representative if appropriate, or, alternatively, to the applicant or registrant at its address of record.

The USPTO will change the correspondence address to that of the applicant, registrant, or domestic representative, 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) and 11.14 . If the examining attorney or Post Registration staff receives a response to an Office action signed by an excluded or suspended party, he or she 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 alleging 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 alleging use, §1109.02 regarding statements of use, and §1705.07 regarding petitions.

USPTO employees must also notify the Administrator 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.  

609.01 Establishing the Correspondence Address

When a trademark application is filed, the USPTO enters into its Trademark database an address (consisting of a name, street address or post office box, city, state and postal code, foreign country (if applicable), and an e-mail address if provided) where correspondence from the USPTO will be sent.  This often differs from the applicant’s address.

The USPTO may send official communications concerning an application by e-mail only if the applicant or the applicant’s qualified practitioner authorizes e-mail communications.   See TMEP §304.03 .

The USPTO uses the following guidelines in entering the correspondence address in a new application:

• If the application is transmitted by a qualified practitioner, includes a power of attorney designating a qualified practitioner, or includes the name and address of a qualified practitioner, the USPTO will send correspondence to the practitioner;
• If an application is not being prosecuted by a qualified practitioner, but the applicant designates in writing a correspondence address other than its own address, the USPTO will send correspondence to that address if appropriate;
• If an application is not being prosecuted by a qualified practitioner and the applicant has not designated a correspondence address, but a domestic representative has been appointed, the USPTO will send correspondence to the domestic representative if appropriate; or
• If the application is not being prosecuted by a qualified practitioner, no domestic representative has been appointed, and the applicant has not designated a different address for correspondence, the USPTO will send correspondence directly to the applicant at its address of record.

37 C.F.R. §§2.18(a)–2.18(a)(5) .

The USPTO uses these same guidelines to reestablish the correspondence address when a registrant files an affidavit under §8, §12(c), §15, or §71 of the Trademark Act, a §9 renewal application, or a §7 request.   37 C.F.R. §§2.18(c)–2.18(c)(2) .  The USPTO will update its Trademark database to indicate the name of the qualified practitioner who filed the affidavit, renewal application, or §7 request.  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 a qualified practitioner who transmits one of these documents even absent a new power of attorney or revocation of the previous power.  See TMEP §604.02 regarding the duration of recognition as a representative.

The USPTO will not undertake double correspondence with the applicant or registrant and the applicant’s or registrant’s qualified practitioner, or with more than one qualified practitioner.   37 C.F.R. §2.18(a)(6) . However, if the applicant or the applicant’s qualified practitioner authorizes the USPTO to send official communications by e-mail, the applicant or the applicant’s qualified practitioner may designate one primary e-mail address and up to four secondary e-mail addresses for duplicate courtesy copies of the correspondence. See TMEP §403 regarding treatment of outgoing e-mail correspondence that is returned as undeliverable.

If an application or other document is signed by a qualified practitioner, but the submission does not contain a separate address for that practitioner, the USPTO will correspond with the qualified practitioner in care of the correspondence address of record and direct such correspondence to the practitioner’s attention.  If an Office action is required, the USPTO will ask the practitioner to either specify his or her address for correspondence or affirmatively state that the USPTO should continue to address correspondence to his or her attention in care of the previously submitted correspondence address. If the practitioner does not respond to the request, the USPTO will continue to send correspondence to the attention of the practitioner at the correspondence address of record.

See TBMP §§117–117.08 for information about correspondence in Board proceedings, TMEP §609.01(a) regarding correspondence in §66(a) applications, TMEP §609.02–609.02(f) for information about changing the correspondence address, and TMEP §609.04 regarding correspondence with parties who are not domiciled in the United States.

609.02 Changing the Correspondence Address  

Once the correspondence address is established, the USPTO will generally send correspondence to that address until a written request to change the address is submitted, signed by the practitioner whom the USPTO has recognized, or, if the applicant or registrant is not represented by a qualified practitioner, 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. §§2.18(b)(2) and 2.193(e)(9)–2.193(e)(9)(ii) .

The mere transmittal of a response to an Office action bearing a new address does not effect a change in a correspondence address, except when a new owner takes an action in an application or registration (e.g., files a response to an Office action or statement of use) after recordation of a change of ownership, as discussed in TMEP §609.02(f) .  

The USPTO will not undertake double correspondence with the applicant or registrant and the applicant’s or registrant’s qualified practitioner, or with more than one qualified practitioner.   37 C.F.R. §2.18(a)(6) . However, if the applicant or the applicant’s qualified practitioner authorizes the USPTO to send official communications by e-mail, the applicant or the applicant’s qualified practitioner may designate one primary e-mail address and up to four secondary e-mail addresses for duplicate courtesy copies of the correspondence. See TMEP §403 regarding treatment of outgoing e-mail correspondence that is returned as undeliverable.

A written request to change the correspondence address does not revoke a power of attorney.   37 C.F.R. §§2.18(a)(7) and 2.19(a)(3) .  See TMEP §606 regarding revocation.

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

609.03 Applicant Has Duty to Maintain Current and Accurate Correspondence Address

The owner of an application or registration has a duty to maintain a current and accurate correspondence address.  If the correspondence address changes, the USPTO must be promptly notified in writing, preferably through TEAS.   See 37 C.F.R. §2.18(b)(1) .  This also applies to e-mail addresses, if the applicant or registrant has authorized the USPTO to send correspondence by e-mail ( see TMEP §304.03 ).  

609.04 Correspondence with Parties Not Domiciled in the United States

If an applicant or registrant has not clearly stated a preferred correspondence address, the USPTO will process correspondence as follows:

• If an applicant or registrant has appointed a qualified practitioner ( see TMEP §§602–602.03(e) ), the USPTO will send correspondence to that practitioner.
• If the applicant or registrant is not represented by a qualified practitioner, and the applicant or registrant has appointed a domestic representative, the USPTO will send correspondence to the domestic representative if appropriate, unless the applicant or registrant designates in writing another correspondence address.  However, the domestic representative is not authorized to prosecute an application or represent a party in a proceeding before the USPTO, unless the domestic representative is a qualified practitioner who has been recognized by the USPTO as the representative of the applicant or registrant.  See TMEP §610 regarding domestic representatives.
• If the applicant or registrant is not represented by a qualified practitioner ( see 37 C.F.R. §11.14), and the applicant or registrant does not designate a domestic representative, the USPTO will send correspondence directly to the applicant or registrant at its foreign address, unless the applicant or registrant designates in writing another correspondence address. See 37 C.F.R. §2.18(a)(5) .

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

611.01 Signature and Certificate

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 practitioner, and must ensure that all documents are properly signed.

Verifications of facts on behalf of an applicant or registrant must be personally signed by someone meeting the requirements of 37 C.F.R. §2.193(e)(1) .   See TMEP §§ 611.03(a) and 804.04 .

Other documents must be personally 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 practitioner.  This includes amendments, responses to Office actions, petitions to the Director under 37 C.F.R. §2.146 ,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 practitioner, the practitioner must sign. 37 C.F.R. §§2.193(e)(2)(i) , 2.193(e)(5)(i) , 2.193(e)(9)(i) , and 11.18(a) .  This applies to both in-house and outside counsel.  If the applicant or registrant is not represented by a qualified practitioner, the document 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 a qualified practitioner, all must sign.   37 C.F.R. §2.193(e)(2)(ii) , 2.193(e)(5)(ii) , 2.193(e)(9)(ii) , and 11.14(e) .

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

611.03 Proper Person to Sign

This section provides guidelines as to the proper person to sign various documents.  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 practitioner 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.

611.04 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 , 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 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 state in the United States who is practicing abroad (e.g., Mary Smith, member of New York State Bar, with offices in Nassau, Bahamas).
• Person signing for a foreign corporation identifies him/herself as “general counsel” or “in-house counsel” AND 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 United States law firm or as “general counsel” or “in-house counsel” of a United States applicant, and thus is recognized as the attorney of record ( see TMEP §§604.01 ).
• Person signing is a different attorney from the same United States-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 ( see TMEP §602.03(a) ).
• Person signing identifies him/herself as an “officer” of a 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.
• Person signing in 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 an address or firm or otherwise indicate that he or she is a member in good standing of the bar of the highest court of a state in the United States (which includes the District of Columbia and any Commonwealth or territory of the United States).
• Person signing identifies him/herself as “attorney-in-fact.”
• Person signing in an application or registration owned by a foreign entity identifies him/herself as “in house counsel” or “general counsel,” with no other indication of officer status or recognition to practice in the United States or before the USPTO per 37 C.F.R. §§11.14(a) or (c) .
• 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 attorney from a different firm, when the applicant or registrant had previously appointed a qualified practitioner and no new power of attorney or revocation of the previously appointed power has been made of record.

611.05 Processing Documents Signed by Someone Other Than the Applicant or the Applicant’s Designated Attorney  

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 .  

When it appears that a response to an Office action is signed by an improper party, the USPTO staff must treat the response as incomplete.   See TMEP §611.05(a) .

When it appears that a document 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 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 document, unless the applicant or registrant either:  (1) establishes the signatory’s authority; or (2) submits a properly signed document.

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

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.