37 C.F.R. §2.17 Recognition for representation.

(e) Foreign attorneys and agents. Recognition to practice before the Office in trademark matters is governed by §11.14(c) of this chapter.

37 C.F.R. §11.14(c) Foreigners.

1. (1) 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 a registered and active member in good standing before the trademark office of the country in which he or she resides and practices and possesses 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 trademark office of such country and the USPTO have reached an official understanding to allow substantially reciprocal privileges to those permitted to practice in trademark matters before the Office. Recognition under this paragraph (c) shall continue only during the period that the conditions specified in this paragraph (c) obtain.
2. (2) In any trademark matter where a foreign attorney or agent authorized under paragraph (c)(1) of this section is representing an applicant, registrant, or party to a proceeding, an attorney, as defined in § 11.1 and qualified to practice under paragraph (a) of this section, must also be appointed pursuant to § 2.17(b) and (c) of this chapter as the representative who will file documents with the Office and with whom the Office will correspond.

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 practice before the USPTO in trademark matters on behalf of an applicant or registrant. 5 U.S.C. §500(b), (d); 37 C.F.R. §§2.17(a), 11.14(a), (e). In very limited circumstances, foreign agents or attorneys that are registered and active members in good standing before the trademark office in the country in which they reside may file an application for reciprocal recognition to represent parties located in that country. 37 C.F.R. §11.14(c), (f). Foreign patent attorneys and agents may not practice before the USPTO in trademark matters. See 37 C.F.R. §11.14(c)(1).

A foreign attorney or agent may be recognized to represent parties located in the country in which the foreign attorney or agent resides and practices, only if:

1. (1) The foreign attorney or agent 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. (2) The foreign attorney or agent proves to the satisfaction of the OED Director that the foreign attorney or agent is a registered and active member in good standing before the trademark office of the country in which the foreign attorney or agent resides and practices and possesses good moral character and reputation;
3. (3) The trademark office of that foreign country allows substantially reciprocal privileges to those permitted to practice before the USPTO; and
4. (4) An attorney, as defined under 37 C.F.R. §11.1, is appointed pursuant to 37 C.F.R. §2.17(b) and (c) as the representative who will file documents with the USPTO and with whom the USPTO will correspond.

37 C.F.R. §§2.17(a), 11.14(c), (f).

The OED Director will grant recognition of an attorney in the form of a written communication. A foreign attorney or agent not previously 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. The application for reciprocal recognition must be filed and granted prior to practicing before the USPTO in trademark matters. Currently, a Canadian trademark attorney or agent who is registered and an active member 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 trademark attorneys and agents.

If a USPTO employee suspects that an individual who does not meet the requirements of 37 C.F.R. §11.14(c) is engaging in unauthorized practice by representing applicants or registrants in trademark matters, the employee should bring the matter to the attention of the Office of the Deputy Commissioner for Trademark Examination Policy.

Currently, Canadian trademark attorneys or agents who are registered and active members in good standing with the trademark branch of the Canadian Intellectual Property Office are the only foreign attorneys or agents who may be recognized by the USPTO Office of Enrollment and Discipline (OED) Director in the presentation and prosecution of trademark matters. In any trademark matter where such an attorney or agent has been recognized and is representing an applicant or registrant, a qualified U.S. attorney must be appointed as the applicant’s or registrant’s representative who will file documents with the USPTO and with whom the USPTO will correspond. 37 C.F.R. §11.14(c)(2). See TMEP §602.03 regarding recognition of foreign attorneys and agents in trademark matters.

To be recognized under 37 C.F.R. §11.14(c), the Canadian trademark attorney or agent must file a written application to the OED Director for reciprocal recognition 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).

Once recognized by OED, a Canadian trademark attorney or agent can only represent parties located in Canada. 37 C.F.R. §11.14(c)(1). Thus, a Canadian trademark attorney or agent cannot represent a party located in the United States or in another foreign country before the USPTO. For example, a Canadian trademark attorney or agent cannot represent a Canadian national who resides in California and has access to a mailing address in Canada.

A reciprocally recognized Canadian trademark attorney or agent may on behalf of clients located in Canada: prepare, sign, and file a new application; prepare and sign other application and registration-related submissions, including responses and other formal communications, although a qualified U.S. attorney must file such submissions; otherwise communicate informally by phone or email with an examining attorney or paralegal specialist on behalf of their client to discuss the application status, the contents of the examining attorney’s Office action, and possible responses to the Office action, but an appointed qualified U.S. attorney must authorize any examiner’s amendments; and receive courtesy copies of USPTO communications. See 37 C.F.R. §11.5(b)(3).

If a Canadian trademark attorney or agent is designated as representing an applicant or registrant in a trademark matter as another appointed attorney, the USPTO staff must verify that the attorney or agent is recognized by OED, even if the individual files a document through the trademark electronic filing system and indicates that the individual is an authorized Canadian trademark attorney or agent who has been granted recognition by OED. See TMEP §611.02(a) regarding signature radio buttons on electronic forms. OED maintains a combined list of recognized Canadian trademark attorneys or agents.

After verifying that the Canadian trademark attorney or agent is recognized by OED, the USPTO staff should enter an appropriate Note to the File (also referred to as a Public Note or Notation to 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.

A foreign attorney or agent who is not reciprocally recognized under 37 C.F.R. §11.14(c) by the USPTO (see TMEP §602.03) is not authorized to practice before the USPTO under 37 C.F.R. §11.14 and thus may not prepare an application, response, post-registration maintenance document, or other document to be filed in the USPTO, sign responses to Office actions, or communicate with the USPTO on behalf of any applicant or registrant. 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)(3); 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 improper party and follow the procedures in TMEP §§611.05–611.05(c).

In the case of an application under Trademark Act §66(a), 15 U.S.C. §1141f(a), known in the United States as a request for extension of protection, the applicant’s appointed representative, as communicated from the International Bureau of the World Intellectual Property Organization (IB), is not authorized to practice before the USPTO unless the person meets the requirements of 37 C.F.R §§11.14(a), (c), and (f). 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.