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.
(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.
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. 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); TMEP §601.01(b).
An address that does not identify an actual street address or that functions as a mail forwarding address generally may not serve as 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(c)(i).
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 examiner 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 examiner will withdraw the requirement to appoint such an attorney. If the applicant or registrant responds by amending to an acceptable 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 presumptively unacceptable type of domicile address, such as an address that does not identify an actual street address or that functions as a mail forwarding address, the USPTO will follow the procedures in TMEP §601.01(c).
If the examining attorney or post-registration examiner 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 examiner 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.
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.
Examining attorneys and post-registration examiners normally will not question an otherwise acceptable U.S. street address of a foreign citizen or entity provided in an application or post-registration maintenance filing unless they receive specific guidance to question the address. 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 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 and the examining attorney or post-registration examiner receives specific guidance that the address should be questioned and that documentation may be necessary to support the U.S. street address, the examining attorney or post-registration examiner 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 examiner will withdraw the requirement for documentation supporting the U.S. street address. 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 examiner 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:
However, the above documentation will not support a U.S. address that is otherwise identified as an unacceptable type of domicile address. See TMEP §601.01(c)(i). Examining attorneys and post-registration examiners must not accept such documentation as satisfying a domicile address requirement when the address is an unacceptable type of domicile address.
Addresses that do not identify an actual street address or that function as a mail forwarding address are presumptively unacceptable as domicile addresses.
Such addresses include post-office (P.O.) boxes, "care of" (c/o) addresses, commercial mail receiving agency (CMRA) addresses, registered agent (RA) addresses, private mailboxes (PMB), Army Post Office (APO) addresses, Fleet Post Office (FPO) addresses, Diplomatic Post Office (DPO) addresses, and Highway Contract Route (HCR or HC) addresses. These addresses, along with virtual office and shared workspace addresses, can be a mailing address, but generally may not serve as domicile addresses because they do 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).
Examining attorneys and post-registration examiners are not required to confirm or research a listed domicile address in the initial application or maintenance filing, but they must require the applicant or registrant to provide an acceptable domicile address if:
Examining attorneys and post-registration examiners must also require a domicile address if an applicant or registrant fails to provide a street address entirely or provides a clearly invalid address (e.g., 123 Street Name, Your City, State, 12345).
Examining attorneys and post-registration examiners must require an acceptable domicile address even if the applicant or registrant provided a domicile address in the masked "Domicile Address" field. In such cases, an examining attorney or post-registration examiner 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.
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. In addition, although APO, FPO, and DPO addresses are presumptively unacceptable as a domicile address, such addresses are considered U.S. addresses even if located in a foreign country.
Domicile address may not be obtained by examiner’s amendment. Not all applicants understand that domicile address information entered by examiner’s amendment will become part of the public record. Therefore, examining attorneys may not obtain and enter an applicant’s domicile address by examiner’s amendment, even if the applicant indicates an understanding that domicile information entered in this manner will not be hidden or "masked."
When an applicant or registrant provides a new domicile address in response to a domicile address requirement, the examining attorney or post-registration examiner must conduct an internet search of the new domicile address unless it is apparent from the address itself that the new address is an unacceptable type of domicile address or is a foreign address. See TMEP §601.01(c)(i).
Examining attorneys may request assistance from the Trademark Law Library with this search. Post-registration examiners may request assistance by emailing the Post Registration internal mailbox. After completing a search, examining attorneys must upload a Note to the File indicating that they conducted a search. After registration, a Note to the File will be entered after the search is conducted.
The examining attorney or post-registration examiner must take the appropriate action set forth below, based on the relevant circumstances.
Acceptable domicile address based on the applicant’s or registrant’s entity type. If the new address is an acceptable type of domicile address based on the applicant’s or registrant’s entity type, it may be accepted. However, the examining attorney or post-registration examiner must raise any new issues resulting from the new domicile address (e.g., if a pro se applicant or registrant provides a foreign domicile address, then U.S. counsel is required if one was not already appointed (see TMEP §601.01(a))).
Unacceptable domicile address and no arguments or evidence submitted. If the new address is an unacceptable type of domicile address (see TMEP §601.01(c)(i)) and the applicant or registrant did not provide any arguments or evidence as to why the address complies with the requirement for a domicile address, the requirement must be maintained and/or made final, as appropriate.
Unacceptable domicile address and arguments or evidence submitted. If the new address is an unacceptable type of domicile address based on the applicant’s or registrant’s entity type and the applicant or registrant provides any arguments or evidence in the form of documentation, the examining attorney or post-registration examiner must follow the procedures set forth in TMEP §601.01(c)(iii).
Examining attorneys and post-registration examiners must evaluate any arguments, including any explanations, or evidence regarding a domicile address on a case-by-case basis, whether included in the initial application or maintenance filing, or in a response.
Any assertion that the domicile address is in fact the applicant’s or registrant’s principal place of business (for a juristic entity) or the place the person resides and that is intended to be the person’s principal home (for a natural person) must be made in a formal written response.
Only in rare cases may an otherwise unacceptable type of domicile address (see TMEP §601.01(c)(i)) be accepted based on the applicant’s or registrant’s arguments. If uncertain about whether the provided domicile address should be accepted, the examining attorney should consult their managing or senior attorney. Post-registration examiners should consult their lead.
If a juristic applicant or registrant submits documentation such as an annual report identifying its principal office or business address as a post-office box or a registered agent address, such documentation does not establish that the address is the applicant’s or registrant’s domicile address. Examining attorneys and post-registration examiners must not accept such documentation as satisfying a domicile address requirement when the address is an unacceptable type of domicile address. See TMEP §601.01(c)(i) for presumptively unacceptable types of domicile addresses.
When a requirement for an acceptable domicile address is maintained or made final, the requirement may be satisfied by providing a new, acceptable domicile address. See TMEP §601.01(c)(ii) for information about evaluating a domicile address provided in response to a domicile address requirement. Alternatively, the applicant or registrant may file a petition to the Director to waive the domicile address requirement because of an extraordinary situation. See TMEP §1708.01.
If the applicant or registrant responds to the requirement to provide an acceptable domicile address by stating that they filed a petition to the Director to waive the domicile address requirement, the examining attorney or post-registration examiner must follow the procedures set forth in TMEP §601.01(c)(v). See TMEP §716.02(l) for circumstances when action may be suspended by the examining attorney pending a decision on a petition to the Director to waive the domicile address requirement.
If the applicant or registrant asserts they have "no fixed physical address," the examining attorney or post-registration examiner must follow the procedures set forth in TMEP §601.01(c)(iv).
An otherwise unacceptable type of domicile address may not be accepted based on a detailed explanation that the applicant or registrant has "no fixed physical address." Such an explanation is not considered sufficient to satisfy the requirement for an acceptable domicile address. Because the applicant or registrant is essentially requesting a waiver of the domicile address rule, the appropriate mechanism for considering these explanations/arguments is a petition to the Director. See TMEP §1708.01 regarding petitions to the Director to waive the domicile address requirement.
"No fixed physical address" explanation in the initial application or maintenance filing. If the applicant or registrant provides an unacceptable type of domicile address and asserts it has "no fixed physical address" in the initial application or maintenance filing, a requirement for an acceptable domicile address must be issued. However, the "Domicile Address" field in the electronic forms allows a juristic applicant or registrant to provide the name, title, and domicile address of an individual with legal authority to bind the applicant or registrant when the entity itself has no fixed physical address. Therefore, if the address provided in this field is an acceptable domicile address type for an individual, the examining attorney or post-registration examiner will not issue a requirement for an acceptable domicile address.
"No fixed physical address" explanation in applications not yet approved for publication or maintenance filings not yet accepted and/or acknowledged as of August 30, 2023. If an applicant or registrant provides, or has provided, a statement that it has "no fixed physical address," and the application has not been approved for publication or the maintenance filing has not been accepted and/or acknowledged as of August 30, 2023, the explanation cannot be accepted and the requirement for a domicile address must be maintained and/or made final, as appropriate, in accordance with the following guidance:
"No fixed physical address" explanation in approved applications or accepted and/or acknowledged maintenance filings before August 30, 2023. It is not necessary to withdraw the application from publication if an application with a detailed explanation that the applicant has "no fixed physical address" was approved for publication before August 30, 2023. Similarly, it is not necessary to rescind an acceptance and/or acknowledgement of a maintenance filing with a detailed explanation that the registrant has "no fixed physical address" made before August 30, 2023. Additionally, if the application is withdrawn from publication for another reason, or the acceptance and/or acknowledgment of a maintenance filing is rescinded for another reason, examining attorneys and post-registration examiners are not required to raise a new domicile address requirement when a "no fixed physical address" explanation was previously accepted.
Companion applications not yet approved for publication or companion maintenance filings not yet accepted and/or acknowledged that contain an unacceptable domicile address, with or without an explanation, cannot be accepted merely because the same address was accepted in approved or published companion applications or accepted and/or acknowledged companion maintenance filings.
An applicant or registrant who asserts it has "no fixed physical address" is limited to the response options set forth below.
Individual applicant or registrant. An individual who has claimed not to have a permanent legal place of residence because they have "no fixed physical address" may satisfy the domicile address requirement by providing an acceptable domicile address in the "Domicile Address" field of a response form, such as when an applicant or registrant has subsequently obtained a permanent legal place of residence at a fixed physical address.
Juristic applicant or registrant. A juristic applicant or registrant that has claimed it has no fixed physical address may satisfy the domicile address requirement by providing: (1) a new acceptable domicile address such as when an applicant or registrant has subsequently obtained a fixed physical address that is the applicant’s or registrant’s principal place of business; or (2) the full name, title, and acceptable domicile address of a person with legal authority to bind the juristic applicant or registrant (e.g., one of the officers, if a corporation, or one of the partners, if a partnership) if the applicant or registrant does not have a fixed physical address for its principal place of business. The name, title, and domicile address may be included in the "Domicile Address" field to keep it hidden from public view. Alternatively, the applicant or registrant may provide the name, title, and address in the body of the response or the name and title in the response and the individual’s address in the "Domicile Address" field. Only information in the "Domicile Address" field is masked. See TMEP §601.01(e). The examining attorney or post-registration examiner may presume that the person identified directs and controls the entity’s activities if the person’s title indicates they have legal authority to bind the juristic applicant or registrant. See TMEP §611.06-06(h) for more information about persons who have legal authority to bind various types of entities.
Option to file a petition to waive the domicile address requirement. Alternatively, the applicant or registrant may file a petition to the Director to waive the domicile address requirement based on an extraordinary situation. See TMEP §1708.01. However, filing a petition to waive the requirement is not considered a response to an Office action. The applicant must still file a response to avoid abandonment of the application. See 37 C.F.R §2.146(g); TMEP §1705.06.
See TMEP §601.01(c)(v) regarding checking the record for a petition to the Director to waive the domicile address requirement and §716.02(l) for circumstances when action may be suspended by an examining attorney pending a decision on a petition to the Director to waive the domicile address requirement.
If a juristic applicant or registrant provides the name, title, and domicile address of an appropriate individual who has legal authority to bind the applicant or registrant, the new address must be searched to determine acceptability in accordance with the procedures set forth in TMEP §601.01(c)(ii).
However, if a juristic applicant indicates the new domicile address provided is that of an individual, but does not provide a full name and/or title, or provides a title that does not clearly indicate the individual has legal authority to bind the applicant (e.g., manager for a corporate entity), the domicile address requirement must be maintained, or made final if the application is otherwise in condition for final action, as appropriate. Similarly, if a juristic registrant indicates the new domicile address provided is that of an individual, but does not provide a full name and/or title, or provides a title that does not clearly indicate the individual has legal authority to bind the registrant, the domicile address requirement must be maintained in a subsequent post-registration action providing the petition option, if the maintenance filing is otherwise in condition for an action providing the petition option.
In all cases, the examining attorney or post-registration examiner must also raise any other issues resulting from the new domicile address (e.g., if the applicant or registrant provides a foreign domicile address for the individual, then the applicant or registrant must be represented by a qualified U.S. attorney (see TMEP §601.01(a))).
Protecting hidden or masked information. If an Office action is issued that questions the validity of the domicile address or the name and title of an individual named by the applicant or registrant, and the applicant or registrant provided this information in the hidden "Domicile Address" field, the examining attorney or post-registration examiner must not list the address or name in the Office action. The examining attorney or post-registration examiner may, however, reference the title if the title provided indicates the individual does not have legal authority to bind the applicant or registrant. If evidence is being attached to the Office action to support an 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.
Prior to issuing or maintaining a domicile address requirement, the examining attorney or post-registration examiner must check the record to ensure that a petition to the Director to waive the domicile address requirement has not been filed or granted. The petition will be uploaded into all referenced records. The examining attorney or post-registration examiner must carefully review the record for a notice of pending petitions. The final petition decision will also be uploaded to all relevant records. See TMEP §1708.01 regarding petitions to the Director to waive the domicile address requirement.
If a petition to the Director to waive the domicile address requirement has been granted, a requirement for a domicile address must not subsequently issue.
If an applicant or registrant asserts in a response that it has filed a petition to waive the domicile address requirement or was granted a waiver of the requirement, but a petition, Note to the File, or other notice of a pending petition does not appear in the record, the examining attorney or post-registration examiner must contact the Petitions Office to inquire whether a petition was filed or decided.
See TMEP §716.02(l) for circumstances when action may be suspended by the examining attorney pending a decision on a petition to the Director to waive the domicile address requirement.
Holding a post-registration filing. Post-registration examiners will hold action on a post-registration filing pending a petition decision. If a petition to the Director is pending after a continued domicile address requirement has been issued in a post-registration filing, and the filing appears to be otherwise in condition for acceptance and/or acknowledgement, the post-registration examiner should hold the filing pending a decision on the petition. Once the petition decision is issued, a petitions attorney or paralegal will notify the lead that a decision has issued and the post-registration examiner may proceed with appropriate action on the post-registration filing.
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(e) regarding how an applicant or registrant can hide such an address from public view.
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.
If an Office action is being issued that questions the validity of a domicile address that was hidden from public view, an examining attorney or post-registration examiner must 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.
If an attorney is recognized as a representative pursuant to § 2.17(b)(1), the Office will correspond only with that attorney, except as set forth in paragraphs (a)(2)(i) through (iv) of this section. A request to change the correspondence address does not revoke a power of attorney. The Office will not correspond with another attorney from a different firm and, except for service of a cancellation petition and notices of institution of expungement or reexamination proceedings, will not correspond directly with the applicant, registrant, or a party to a proceeding, unless:
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.
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.
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.
