Who May Respond to Office Actions (ROA) from the USPTO in Trademark Matters?

Only someone who has legal authority to act and sign for the applicant if it is not the applicant. Where an applicant is not represented by an attorney, the response must be signed by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner).  See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06 et seq., 712.01.  In the case of joint applicants, all must sign.  37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a).

Where an applicant is represented by an attorney, the attorney must sign the response.  37 C.F.R. §2.193(e)(2)(i); TMEP §§611.03(b), 712.01.  The only attorneys who may sign responses and otherwise practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and (2) Canadian agents/attorneys who represent applicants located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO.  See 37 C.F.R. §§2.17(e), 2.62(b), 11.1, 11.5(b)(2), 11.14(a), (c); TMEP §§602, 712.01.  Attorneys who fail to meet these requirements, as well as non-attorneys, are generally not permitted to represent applicants in trademark matters before the USPTO; and thus, they may not sign responses.  See 5 U.S.C. §500(b), (d); 37 C.F.R. §11.14(a)-(c), (e); TMEP §§602, 602.02, 608.01.

Where an applicant is represented by an attorney, and then later retains a different attorney from a different firm, the newly retained attorney may not sign responses until applicant files a new power and/or revocation of attorney.  See 37 C.F.R. §2.18(a)(7); TMEP §604.03.



TMEP 602 Persons Authorized to Practice Before USPTO in Trademark Matters

from Trademark Manual of Examining Procedure (TMEP) -April 2013


TMEP 602 Persons Authorized to Practice Before USPTO in Trademark Matters

37 C.F.R. §2.17(a)  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. §11.14  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.  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 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, 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 patent or trademark office of such country allows substantially reciprocal privileges to those permitted to practice in trademark matters before the Office.  Recognition under this paragraph shall continue only during the period that the conditions specified in this paragraph obtain.

    (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) 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.  Any individual may appear in a trademark or other non-patent matter in his or her own behalf.  Any individual may appear in a trademark matter for:

    (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.


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 a member in good standing of the bar of the highest court of a state in the United States);

    A Canadian patent agent who is registered with the USPTO’s Office of Enrollment and Discipline (“OED”) and in good standing as a patent agent under 37 C.F.R. §11.6(c) for the limited purpose of representing parties located in Canada;

    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(f); 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.


TMEP 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 may practice before the USPTO in trademark matters.  37 C.F.R. §§2.17(a), 11.1 (definition of attorney), 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).


TMEP 602.02   Non-Attorneys

37 C.F.R. §2.17(f)  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. §11.14(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.


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.


TMEP 602.03   Foreign Attorneys and Agents  

37 C.F.R. §11.14(c)  Foreigners.

 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 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, 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 patent or trademark office of such country allows substantially reciprocal privileges to those permitted to practice in trademark matters before the Office.  Recognition under this paragraph shall continue only during the period that the conditions specified in this paragraph obtain.


37 C.F.R. §11.14 (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.


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.


TMEP 602.03(a)   Canadian Attorneys and Agents

37 C.F.R. §2.17(e)  Canadian attorneys and agents.

    (1) A Canadian patent agent who is registered and in good standing as a patent agent under §11.6(c) may represent parties located in Canada before the Office in trademark matters.

    (2) A Canadian attorney or agent who is registered or in good standing with the Canadian Intellectual Property Office, but not registered as a patent agent under §11.6(c), may represent parties located in Canada if he or she has been authorized to do so by the Director of the Office of Enrollment and Discipline, pursuant to §11.14(f) of this chapter.


A Canadian attorney or agent may represent parties located in Canada only if:

    (1) He or she is registered with the USPTO and in good standing as a patent agent under 37 C.F.R. §11.6(c); or

    (2)   He or she files an application for and is granted recognition by the OED Director under 37 C.F.R. §11.14(c).  To be recognized under 37 C.F.R. §11.14(c), an individual must file a written application 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).  


37 C.F.R. §2.17(e).

Once recognized by OED, a Canadian attorney or agent can only represent parties located in Canada.  37 C.F.R. §2.17(e)(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.


If a Canadian attorney or agent is designated or acts as a representative of a party in a trademark matter, the USPTO staff must verify that the attorney or agent is recognized by OED, even if the individual files a document through TEAS and checks a box indicating that he or she is an authorized Canadian attorney or agent who has been granted recognition by OED.  See TMEP §611.02(a) regarding TEAS checkoff boxes. OED maintains a combined list of recognized Canadian trademark attorneys or agents and registered Canadian patent agents, which is available only on the USPTO’s internal computer network.


After verifying that the Canadian 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.


If a USPTO employee suspects that an individual who does not meet the requirements of 37 C.F.R. §§11.6(c) or 11.14(c) 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 (“Administrator”).


TMEP 602.03(b)   Foreign Attorneys and Agents from Countries Other than Canada

A foreign attorney or agent who resides and practices in a foreign country other than Canada and who is not a member in good standing of the bar of the highest court of a state in the United States may not practice before the USPTO unless he or she establishes that he or she meets the requirements of 37 C.F.R. §11.14.  5 U.S.C. §§500(b), (d).  Any such attorney or agent who attempts to represent a party in a trademark matter should be advised that he or she must file a written application for reciprocal recognition with OED and pay the fee required by 37 C.F.R. §1.21(a)(1)(i); that the application must be filed and granted prior to representing a party before the USPTO; and that the application must include proof that the attorney or agent is in good standing with the foreign patent or trademark office in the country in which the attorney or agent resides, that the attorney or agent is possessed of good moral character and reputation, and that the USPTO Director has recognized that the foreign patent or trademark office provides substantially reciprocal rights to United States attorneys.  37 C.F.R. §§11.14(c), (f).


TMEP 602.03(c)   Documents Filed by Foreign Attorneys and Agents

A foreign attorney or agent who is not authorized to practice before the USPTO under 37 C.F.R. §11.14 may receive correspondence from the USPTO and transmit it to the applicant or registrant.  However, a foreign attorney or agent cannot prepare an application, response, or other document to be filed in the USPTO, sign responses to Office actions, or authorize issuance of examiner’s amendments and priority actions.  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 unauthorized party and follow the procedures in TMEP §§611.05–611.05(c)


TMEP 602.03(d)   Representatives of Holders of International Registrations

In the case of an application under Trademark Act §66(a), 15 U.S.C. §1141f(a), or a registered extension of protection, the applicant’s appointed representative as communicated from the International Bureau of the World Intellectual Property Organization (“IB”) is considered the correspondence address of record only.  If an individual with an address outside the United States is identified as applicant’s appointed representative for purposes of correspondence, the individual will not be recognized by the USPTO as applicant's attorney or qualified practitioner without further clarification of his or her qualifications under 37 C.F.R. §11.14.  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.


TMEP 602.03(e)   Identification of Foreign Attorney in Original Application

If a new application identifies an attorney or agent with an address outside the United States (e.g., if a foreign address is set forth in the “attorney” section of a TEAS form) and the examining attorney must issue an Office action regarding any refusals and/or requirements, the Office action must include an advisory that unless the individual meets the requirements of 37 C.F.R. §11.14, he or she is not authorized to practice before the USPTO in trademark matters and may not represent the applicant in the particular trademark application, and that any power of attorney to the individual is void ab initio.  The Office action should be sent to the correspondence address of record as established in the original application.  If the identified individual can establish that he or she is a qualified attorney (e.g., a member in good standing of the bar of the highest court of a U.S. state) who has an address outside the United States, he or she is a qualified practitioner under 37 C.F.R. §§11.1, 11.14(a),(c).


If an Office action is not necessary (i.e., the application is otherwise eligible for approval for publication or registration on the Supplemental Register), the USPTO staff must ensure that the USPTO database does not include the identified individual in the “Attorney” field.  The correspondence address should remain unchanged.


See TMEP §609.04 regarding correspondence with parties not domiciled in the United States.


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