Changes in Requirements for Signature of Documents, Recognition of Representatives, and Establishing and Changing the Correspondence Address in Trademark Cases, 54898-54912 [E9-25460]

Agencies

• DEPARTMENT OF COMMERCE
• United States Patent and Trademark Office
• Patent and Trademark Office

[Federal Register Volume 74, Number 205 (Monday, October 26, 2009)]
[Rules and Regulations]
[Pages 54898-54912]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: E9-25460]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Parts 2 and 11

[Docket No. PTO-T-2008-0021]
RIN 0651-AC26


Changes in Requirements for Signature of Documents, Recognition 
of Representatives, and Establishing and Changing the Correspondence 
Address in Trademark Cases

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule

-----------------------------------------------------------------------.


SUMMARY: The United States Patent and Trademark Office (``Office'') is 
revising the Trademark Rules of Practice to set forth the requirements 
for signature of documents filed in the Office, recognition of 
representatives, and establishing and changing the correspondence 
address in trademark cases.

DATES: This rule is effective December 28, 2009.

SUPPLEMENTARY INFORMATION: As noted above, the Office is revising the 
Trademark Rules of Practice (37 CFR Part 2) to set forth the 
requirements for signature of documents filed in the Office, 
recognition of representatives, and establishing and changing the 
correspondence address in trademark cases. The purpose of the rule is 
to codify and clarify current practice. Practice before the Trademark 
Trial and Appeal Board (``TTAB'') is largely unaffected by the rule.
    References below to ``the Act'' or ``the Trademark Act'' refer to 
the Trademark Act of 1946, 15 U.S.C. 1051 et seq., as amended. 
References to ``TMEP'' or ``Trademark Manual of Examining Procedure'' 
refer to the 5th edition, September 2007. References to the ``TBMP'' or 
``Trademark Trial and Appeal Board Manual of Procedure'' refer to the 
2nd edition, Rev. 1, March

[[Page 54899]]

12, 2004. References to a ``party to a proceeding'' refer to a party to 
a proceeding before the TTAB, e.g., an opposer, cancellation 
petitioner, or party to an interference or concurrent use proceeding.
    On August 14, 2008, the Office published a final rule that, inter 
alia, removed Sec. Sec.  10.14 and 10.18 of this chapter and replaced 
them with new Sec. Sec.  11.14 and 11.18; added a definition of 
``attorney'' to Sec.  11.1 of this chapter; added Sec.  11.14(f), 
setting forth the requirements and establishing a fee for filing a 
request for reciprocal recognition under Sec.  11.14(c) of this 
chapter; and changed cross-references in several of the rules in parts 
2 and 7 of this chapter, effective September 15, 2008.

See Changes to Representation of Others Before the United States Patent 
and Trademark Office, 73 FR 47650 (Aug. 14, 2008).
    The cross-references in this notice have been changed accordingly.
    The Office has recently published another final rule, Miscellaneous 
Changes to Trademark Rules of Practice, RIN 0651-AB89, 73 FR 67759 
(November 17, 2008). The changes made therein are reflected in 
Sec. Sec.  2.62, 2.74, 2.87, 2.146(c), 2.153, 2.163, 2.167, 
2.171(b)(1), and 2.184 below.

Overview of Office Practice

Persons Authorized To Represent Others

    Under 37 CFR 11.14 of this chapter, only the following individuals 
may represent an applicant, registrant, or party to a proceeding before 
the Office in a trademark case:
     An attorney as defined in Sec.  11.1 of this chapter, 
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 and in good 
standing as a patent agent under Sec.  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 the Office of Enrollment and Discipline 
of the United States Patent and Trademark Office (``OED Director'') to 
represent parties located in Canada, pursuant to Sec.  11.14(f) of this 
chapter; or
     An individual who is not an attorney but was recognized to 
practice before the Office in trademark cases under this chapter prior 
to January 1, 1957.

See Trademark Manual of Examining Procedure (``TMEP'') sections 602 and 
602.06 et seq.
    An individual who does not meet the requirements of Sec.  11.14 of 
this chapter cannot: Prepare documents to be filed in the Office; sign 
amendments, responses to Office actions, petitions to the Director 
under Sec.  2.146, letters of express abandonment, or notices of change 
of correspondence address for applications or registrations; authorize 
issuance of examiner's amendments and priority actions; or otherwise 
represent an applicant, registrant, or party to a proceeding in the 
Office. 5 U.S.C. 500(d); 37 CFR 11.14(e); TMEP sections 602.03 and 
605.02.

Recognition of Representative

    To be recognized as a representative, a practitioner qualified to 
practice under Sec.  11.14 of this chapter (``qualified practitioner'') 
may:
     File a power of attorney signed by the applicant, 
registrant, or party to a proceeding in a trademark case, or by someone 
with legal authority to bind the applicant, registrant, or party (e.g., 
a corporate officer or general partner of a partnership);
     Sign a document on behalf of an applicant, registrant, or 
party to a proceeding who is not already represented by a qualified 
practitioner from a different firm; or
     Appear in person on behalf of an applicant, registrant, or 
party to a proceeding who is not already represented by a qualified 
practitioner from a different firm.

37 CFR 2.17(c); TMEP sections 602.01 and 602.07.
    Once the Office has recognized a qualified practitioner as the 
representative of an applicant or registrant, the Office will 
communicate and conduct business only with that practitioner, or with 
another qualified practitioner from the same firm. The Office will not 
conduct business directly with the applicant or registrant, or with 
another qualified practitioner from a different firm, unless the 
applicant or registrant files a new power of attorney or revocation of 
the previous power. TMEP sections 601.02, 602.07, and 603.02(a). A 
motion to withdraw is generally required when a qualified practitioner 
recognized by the TTAB will no longer be representing a party to a 
proceeding. Trademark Trial and Appeal Board Manual of Procedure 
(``TBMP'') section 513.
    For purposes of recognition as a representative, the Office 
considers a power of attorney to end when the mark is registered, when 
ownership changes, or when the application is abandoned. TMEP section 
602.01. An appointment of domestic representative, however, remains in 
effect unless specifically revoked or supplanted by appointment of a 
new domestic representative.
    After a change in ownership has been recorded, if a new qualified 
practitioner appears on behalf of the new owner, the Office 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 Office 
will continue to conduct business and correspond with that 
practitioner.

Establishing the Correspondence Address for Application or Registration

    Upon receipt of a new application, the Office enters the 
correspondence address in accordance with the following guidelines:
     If the application is transmitted by a qualified 
practitioner, or includes a power of attorney designating a qualified 
practitioner, the Office 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 Office 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 Office 
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 Office will send correspondence directly to the applicant at its 
address of record.

37 CFR 2.18; TMEP section 603.01.
    The Office reestablishes the correspondence address in accordance 
with these guidelines upon the examination of an affidavit under 
section 8, 12(c), 15, or 71 of the Trademark Act, renewal application 
under section 9 of the Act, or request for amendment or correction of a 
registration under section 7 of the Act. TMEP section 603.02(c). Due to 
the length of time that may elapse between registration and filings 
under sections 7, 8, 9, 12(c), 15, and 71 of the Act (which could be 10 
years or more), the Office will recognize a qualified practitioner who 
transmits such a filing even absent a new power of attorney or 
revocation of a previous power.

[[Page 54900]]

Changing the Correspondence Address in an Application or Registration

    Once the correspondence address is established as discussed above, 
the Office will generally send correspondence to that address until a 
written request to change the address is submitted, signed by the 
practitioner whom the Office has recognized, or by the applicant or 
registrant or someone with legal authority to bind the applicant or 
registrant (e.g., a corporate officer or general partner of a 
partnership) if the applicant or registrant is not represented by a 
qualified practitioner. 37 CFR 2.18(b); TMEP sections 601.02, 602.07, 
and 603.02(a).
    Once the Office recognizes a qualified practitioner as the 
representative of an applicant or registrant, only that practitioner or 
another qualified practitioner from the same firm may sign a request to 
change the address, unless the applicant or registrant files a new 
power of attorney or revocation of the previous power, or the 
recognized practitioner files a request to withdraw. TMEP sections 
603.02(a) and 605.02.
    If a qualified practitioner transmits documents on behalf of an 
applicant or registrant who is not already represented by another 
qualified practitioner from a different firm, the Office will construe 
this as including a request to change the correspondence address to 
that of the practitioner. TMEP section 603.02(a).

Documents Must Be Properly Signed

    Because an individual who is not authorized under Sec.  11.14 may 
not represent an applicant, registrant, or party to a proceeding before 
the Office, the Office will not act on documents that are not properly 
signed. TMEP sections 602.03 and 605.02. When it is unclear whether a 
proper person has signed a response to an Office action, the Office 
will notify the applicant or registrant that the response is 
incomplete. See TMEP sections 605.05(a) and 712.03 regarding notices of 
incomplete response. When it is unclear whether a proper person has 
signed a document other than a response to an Office action, the Office 
will notify the applicant or registrant that no action will be taken on 
the document unless the applicant or registrant either establishes the 
signatory's authority or submits a properly signed document. See TMEP 
section 605.05.

Unauthorized Practice

    When the Office learns that a person who is not qualified under 
Sec.  11.14 is acting as the representative of an applicant, 
registrant, or party to a proceeding, the Office will notify the 
affected applicant, registrant, or party that the individual is not 
entitled to practice before the Office in trademark matters and 
therefore may not represent the applicant, registrant, or party; that 
any power of attorney is void ab initio; that the individual may not 
sign responses to Office actions; and that all correspondence will be 
sent to the domestic representative if appropriate or, alternatively, 
to the applicant, registrant, or party at its address of record. If the 
Office receives a response signed by such an unqualified person, the 
response will be treated as incomplete. This same practice is followed 
when the Office learns that a practitioner has been suspended or 
excluded from practice before the Office.

Rule Changes

Terminology

    Comment: One commenter asserts that the terms ``registrant,'' 
``owner,'' ``owner of a mark'' and ``owner of the registration'' are 
used interchangeably throughout the rules, and requests clarification.
    Response: These terms are not interchangeable. ``Registrant'' is 
broader than ``owner,'' as it embraces the legal representatives, 
predecessors, successors and assigns of the current owner, pursuant to 
section 45 of the Trademark Act.
    In rules that govern the representation of others and the 
establishment of the correspondence address, the Office has used the 
broader term ``registrant,'' to encompass all parties who could be 
represented or receive correspondence in connection with an 
application, registration, or proceeding in the Office. In rules that 
govern the proper party to sign and file affidavits under sections 8 
and 15 of the Act, and requests for correction, amendment or surrender 
under section 7 of the Act, the more specific term ``owner'' is used. 
In Sec.  2.184, which governs renewal applications, the term 
``registrant'' is used for consistency with section 9 of the Act. 
Section 9, as amended by the Trademark Law Treaty Implementation Act, 
does not require that a renewal application be filed in the name of the 
owner of the registration. Therefore, if a renewal applicant is not the 
owner of record, the Office does not require that the renewal applicant 
show continuity of title from the original registrant before granting 
renewal. See TMEP section 1606.06.

Discussion of Specific Rules

    A proposed rule was published in the Federal Register on June 12, 
2008, at 73 FR 33345, and in the Official Gazette on July 8, 2008. The 
Office received comments from one law firm and one organization. These 
comments are posted on the Office's Web site at https://www.uspto.gov/web/offices/pac/dapp/opla/comments/tm_comments2008aug20a/index.htm, 
and are addressed below.
    Where appropriate, the Office has reworded and/or reorganized the 
rules for clarity, and added headings to facilitate navigation through 
the rules.
    Section 2.17(a) is redesignated as Sec.  2.17(b)(2).
    Section 2.17(b) is redesignated as Sec.  2.17(f).
    Section 2.17(c) is redesignated as Sec.  2.17(b), and revised to 
provide that the Office will recognize a qualified practitioner who 
signs a document or appears in person in a trademark case only if the 
applicant or registrant is not already represented by a qualified 
practitioner from a different firm. This is consistent with TMEP 
sections 602.01 and 602.07.
    Section 2.17(c) sets forth the requirements for powers of attorney. 
A power must: (1) Designate by name at least one practitioner qualified 
to practice under 37 CFR Sec.  11.14; and (2) be signed by the 
individual applicant, registrant, or party to a proceeding pending 
before the Office, or by someone with legal authority to bind the 
applicant, registrant, or party (e.g., a corporate officer or general 
partner of a partnership). Once an applicant, registrant, or party to a 
proceeding has designated a qualified practitioner(s), that 
practitioner may sign an associate power of attorney appointing another 
qualified practitioner(s) as an additional person(s) authorized to 
represent the applicant, registrant, or party to a proceeding. This is 
consistent with TMEP sections 602.01 and 602.01(b).
    Section 2.17(c)(2) provides further that if the applicant, 
registrant, or party revokes an original power of attorney, the 
revocation discharges any associate power signed by the practitioner 
whose power has been revoked; and that 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 Office.
    Comment: One comment noted that the proposed rule did not address 
unrepresented joint applicants.
    Response: Section 2.17(c)(2) now states that in the case of joint 
applicants

[[Page 54901]]

or joint registrants, all must sign the power of attorney. This is 
consistent with Sec.  2.193(e)(3).
    Section 2.17(d) is amended to provide that the owner of an 
application or registration may appoint an attorney through the 
Trademark Electronic Application System (``TEAS'') for up to twenty 
applications or registrations per TEAS form that have the identical 
owner and attorney. This is consistent with TMEP section 602.01(a).
    Section 2.17(e) sets forth the circumstances under which a Canadian 
attorney or agent may represent parties located in Canada. A Canadian 
patent agent who is registered with the Office and in good standing as 
a patent agent under Sec.  11.6(c) may represent parties located in 
Canada before the Office in trademark matters. 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 Sec.  11.6(c), may represent parties located in Canada if he or 
she has been authorized to do so by the OED Director. Before 
undertaking to represent an applicant, registrant, or party before the 
Office, and before filing a paper with the Office, a Canadian attorney 
or agent who is not registered with the Office and in good standing as 
a patent agent under Sec.  11.6(c) must file an application for and be 
granted reciprocal recognition to practice before the Office in 
trademark cases, pursuant to Sec.  11.14(f) of this chapter. The 
application for reciprocal recognition must include the fee required by 
Sec.  1.21(a)(1)(i) of this chapter, and proof that the attorney or 
agent satisfies the requirements of 35 U.S.C. 32 and 37 CFR 11.14(c). 
See notice at 73 FR 47650 (Aug. 14, 2008). The OED Director must grant 
the request for reciprocal recognition before representation is 
undertaken and before the Canadian attorney or agent files an 
application or other document in the Office.
    Once recognized by OED, the Canadian attorney or agent may only 
represent parties who are located in Canada. He or she cannot represent 
Canadian nationals who are not located in Canada. Thus, for example, a 
Canadian attorney or agent may not represent a Canadian national who 
resides in California and has access to a mailing address in Canada.
    Section 2.17(g)(1) is added to provide that the Office considers a 
power of attorney to end with respect to a pending application when the 
mark is registered, when ownership changes, or when the application is 
abandoned. This is consistent with TMEP section 602.01.
    Section 2.17(g)(2) provides that the Office considers a power of 
attorney filed after registration to end when the registration is 
cancelled or expired, or when ownership changes. If the power was filed 
in connection with an affidavit under section 8, 12(c), 15 or 71 of the 
Trademark Act, renewal application under section 9 of the Act, or 
request for amendment or correction under section 7 of the Act, the 
power is deemed to end upon acceptance or final rejection of the 
filing.
    Section 2.18 is reorganized to clarify the procedures for 
establishing and changing a correspondence address.
    Section 2.18(a)(2) provides that if a qualified practitioner 
transmits a document(s) on behalf of an applicant or registrant, the 
Office will send correspondence to the practitioner transmitting the 
document(s) only if the applicant or registrant is not already 
represented by another qualified practitioner from a different firm. 
This is consistent with TMEP sections 602.07, 603.01, and 603.02(a).
    Section 2.18(a)(6) provides that the Office will send 
correspondence to only one address in an ex parte matter. This is 
consistent with current Sec.  2.18(b).
    Comment: If correspondence is being sent electronically, there 
would appear to be no reason why the Office cannot send correspondence 
to more than one e-mail address. The TTAB sends correspondence to more 
than one e-mail address, as requested by the parties who file papers 
with the TTAB.
    Response: The Office has revised Sec.  2.18(a)(6) to indicate that 
it applies only to ex parte matters. Sending e-mail correspondence to 
more than one address in an ex parte matter would create confusion. It 
is important that the Office, as well as any interested third parties, 
have one specific address to which correspondence concerning an 
application or registration can be sent. It is also important that an 
applicant, registrant, or party to a proceeding know where to look for 
official correspondence and who is responsible for handling incoming 
communications.
    Section 2.18(a)(7) provides that once the Office has recognized a 
qualified practitioner as the representative of an applicant or 
registrant, the Office will communicate and conduct business only with 
that practitioner, or with another qualified practitioner from the same 
firm. The Office will not conduct business directly with the applicant 
or registrant, or with another qualified practitioner from a different 
firm, unless the applicant or registrant files a revocation of the 
power of attorney under Sec.  2.19(a) and/or a new power of attorney 
that meets the requirements of Sec.  2.17(c). The rule provides further 
that a written request to change the correspondence address does not 
revoke a power of attorney. This is consistent with TMEP sections 
601.02, 602.07, and 603.02(a).
    Comment: One comment suggests that the Office emphasize that where 
practitioners change law firms, the filing of a change of 
correspondence address does not revoke any prior powers of attorney or 
associate power of attorney. The commenter recommends that the rule 
``provide for practitioners to file a revocation/power of attorney when 
changing firms to ensure practitioners from the previous firm will not 
still be authorized to represent the client.'' Further, since the 
choice of counsel is determined by the applicant, the commenter 
recommends ``that the rule [provide] for approval by the applicant of 
the change in the power of attorney.'' The commenter notes that the 
revocation will automatically update the correspondence address. 
Further, this places the burden on the practitioner.
    Response: Sections 2.18(a)(7) and 2.19(a)(3) explicitly provide 
that a request to change the correspondence address does not revoke a 
power of attorney. When more than one qualified practitioner is of 
record and one of them changes firms, there is no need to obtain a new 
power of attorney or revocation of the previous power, signed by the 
client, in every case. If there is ongoing representation by co-counsel 
at the original firm, the departing attorney should file a request or, 
if applicable, motion with the TTAB, to withdraw, pursuant to Sec.  
2.19(b). When more than one qualified practitioner is of record and one 
or more of them changes firms, the burden is already on the 
practitioners to determine who is responsible for handling pending 
matters, obtain any necessary powers of attorney or revocations from 
the client, and file the necessary documents in the Office. Rules 
2.17(c)(2), 2.18(a)(7) and 2.19(a) require a new power of attorney or 
revocation of the previous power, signed by the client, in order to 
effect a change in representation, or to send correspondence to a 
different firm. When a power is revoked or a practitioner withdraws, 
this discharges any associate power signed by the practitioner who 
withdraws or whose power has been revoked.
    Comment: One commenter suggests that a revocation or new power of 
attorney should be required only when a power of attorney is of record 
for the previously recognized practitioner, and not where the previous 
practitioner was recognized by appearing in person or filing a paper on 
behalf of the party that

[[Page 54902]]

he or she represents. ``We urge the PTO not to adopt a requirement that 
an applicant/registrant must file a revocation of power of attorney in 
instances when it has not granted a power of attorney in the first 
place.''
    Response: Section 2.17 has long provided three ways in which a 
practitioner can be recognized as a representative. There is no logical 
basis for treating the termination of such recognition differently 
based on the manner in which the representative was recognized.
    Comment: One comment notes that, until recently, the Office would 
accept a simple ``change of address of correspondence'' instruction 
from a qualified practitioner as sufficient to change the address to 
which it directed correspondence. It is unclear why this procedure was 
abandoned. The commenter urges the Office to permit either the 
applicant/registrant or the new qualified practitioner to sign and file 
a request for ``Change of Address for Correspondence,'' instead of a 
new power of attorney or revocation of the previous power.
    Response: When a qualified practitioner represents an applicant or 
registrant, a new practitioner from a different firm could never 
properly authorize a change of correspondence address. Prior to 2006, 
the Office would accept a change of correspondence address signed by an 
applicant or registrant who was represented by a qualified 
practitioner, even if no new power of attorney or revocation of the 
previous power was filed. However, to ensure that the record is clear 
as to who is authorized to represent applicants and registrants, and to 
prevent unauthorized parties from taking actions in connection with 
applications and registrations, the better practice is to require a new 
power of attorney or revocation of the previous power to change the 
address to which official correspondence is sent. Since the Madrid 
Protocol was implemented in 2003, an increasing number of persons who 
are not qualified under Sec.  11.14 of this chapter (e.g., foreign 
attorneys) have attempted to represent applicants and registrants. 
There have also been several cases in which adverse or unauthorized 
parties have attempted to divert correspondence and/or take 
inappropriate actions such as express abandonments of applications. 
Therefore, the Office seeks to ensure that a proper party signs all 
communications and that the record is clear as to who is authorized to 
conduct business.
    Section 2.18(b)(1) provides that when a physical or e-mail 
correspondence address changes, the applicant, registrant, or party to 
a proceeding must file a written request to change the correspondence 
address. The request should be promptly filed. This is consistent with 
TMEP section 603.03.
    New Sec.  2.18(b)(2) provides that a request to change the 
correspondence address must be made in writing, signed by the 
applicant, registrant, or party to a proceeding, someone with legal 
authority to bind the applicant, registrant, or party (e.g., a 
corporate officer or general partner of a partnership), or a qualified 
practitioner, in accordance with Sec.  2.193(e)(9). This is consistent 
with current Sec.  2.18(b) and TMEP sections 603.02 and 603.02(a).
    Section 2.18(b)(3) provides that if an applicant or registrant 
files a new power of attorney that meets the requirements of Sec.  
2.17(c), the Office will change the correspondence address to that of 
the practitioner named in the power.
    Section 2.18(b)(4) provides that if a qualified practitioner 
transmits a document(s) on behalf of an applicant, registrant, or party 
to a proceeding who is not already represented by another qualified 
practitioner, the Office will construe this as including a request to 
change the correspondence address to that of the practitioner, and will 
send correspondence to the practitioner. This is consistent with TMEP 
section 603.02(a).
    Comment: One commenter understands the rule to mean that the 
correspondence address of a practitioner filing a document will only be 
recognized if the Office has not otherwise recognized a qualified 
practitioner at the time the document is filed.
    Response: That is correct.
    Comment: In some instances, applicants/registrants request outside 
counsel to prepare and file responses to Office actions but do not wish 
the address for correspondence to be changed to that of counsel. There 
is no reason for the Office to ``construe'' such a filing as a request 
for a change of address for correspondence. If that change is desired, 
it is simple enough for the applicant/registrant or qualified 
practitioner to include specific instructions in this regard in the 
filing. Thus, we urge the Office not to adopt a rule that would 
establish a default procedure by which the filing of such a response 
would be ``construed'' as including a request for change of 
correspondence.
    Response: The Office's practice of corresponding with the attorney 
of record is consistent with current Sec.  2.18(a), which has been in 
effect for many years and has worked well. The Office sees no reason to 
change the practice. If the Office ever did want to change this 
practice, it would issue another proposed rule, in order to provide 
notice and solicit comment from practitioners who may have come to rely 
on existing practice. If an applicant or registrant does not want the 
correspondence address to be changed to the address of the outside 
counsel who transmits a response to an Office action, counsel should 
include clear instructions stating the address to which correspondence 
should be sent in the response.
    Section 2.18(c)(1) is added to provide that even if there is no new 
power of attorney or written request to change the correspondence 
address, the Office will change the correspondence address upon the 
examination of an affidavit under section 8, 12(c), 15 or 71 of the 
Trademark Act, a renewal application under section 9 of the Act, or a 
request for amendment or correction under section 7 of the Act. This is 
consistent with TMEP section 603.02(c). Due to the length of time that 
may elapse between filings under sections 7, 8, 9, 12(c), 15, and 71 of 
the Act (which could be ten years or more), the Office automatically 
enters a new correspondence address upon examination of each filing.
    Section 2.18(c)(2) is added to provide that once the Office 
establishes a correspondence address upon examination of an affidavit, 
a renewal application or a section 7 request, a written request to 
change the address in accordance with Sec.  2.18(b)(2) is required to 
change the address during the pendency of that filing.

    Example 1: Attorney A transmits an affidavit of use under 
section 8, and the examiner issues an Office action in connection 
with the affidavit. If another attorney from a different firm 
(Attorney B) wants to respond to the Office action, Attorney B must 
file a new power of attorney and/or revocation of the previous 
power, signed by the owner of the registration or someone with legal 
authority to bind the owner, before the Office will act on the 
response and correspond with Attorney B.
    Example 2: Attorney A transmits an affidavit of use under 
section 8, and the Office accepts the affidavit. If Attorney B later 
files a request for amendment under section 7, the Office will 
recognize and correspond with Attorney B regardless of whether a new 
power of attorney or revocation of the previous power is filed.
    Example 3: Attorney A transmits an affidavit of use under 
section 8, and the examiner issues an Office action in connection 
with the affidavit. If Attorney B wants to file a request for 
amendment under section 7 before the Office accepts or issues a 
final rejection of the section 8 affidavit, Attorney B must file a 
new power of attorney and/or revocation of the previous power,

[[Page 54903]]

signed by the owner of the registration or someone with legal 
authority to bind the owner, before the Office will act on the 
section 7 request and correspond with Attorney B.

    Section 2.19(a) is revised to clarify the requirements for 
revocation of a power of attorney. New Sec.  2.19(a)(1) provides that a 
request to revoke a power of attorney must be signed by the applicant, 
registrant, or party to a 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). This is 
consistent with TMEP section 602.04.
    Comment: The proposed rule does not address the situation of 
unrepresented joint applicants.
    Response: Section 2.19(a)(1) now states that in the case of joint 
applicants or joint registrants, all must sign the revocation. This is 
consistent with Sec.  2.193(e)(3).
    Section 2.19(a)(3) states that a request to change the 
correspondence address does not revoke a power of attorney. This is 
consistent with Sec.  2.18(a)(7), discussed above.
    Section 2.19(a)(4) states that a new power of attorney that meets 
the requirements of Sec.  2.17(c) will be treated as a revocation of 
the previous power.
    The provision in the current Sec.  2.19(a) that the Office will 
notify the affected person of the revocation of his or her 
authorization is removed.
    Section 2.19(b) is revised to set forth the requirements for filing 
a request to withdraw as attorney. This is consistent with TMEP section 
602.05. The withdrawing practitioner should file the request soon after 
notifying the client of his/her intent to withdraw, and must include 
the application serial number, registration number, or proceeding 
number; a statement of the reason(s) for the request to withdraw; and 
either (1) a statement that the practitioner has given due notice to 
the client that the practitioner is withdrawing from employment and 
will be filing the necessary documents with the Office; that the client 
was given notice of the withdrawal at least two months before the 
expiration of the response period, if applicable; that the practitioner 
has delivered to the client all documents and property in the 
practitioner's file concerning the application or registration to which 
the client is entitled; and that the practitioner has notified the 
client of any responses that may be due, and of the deadline for 
response; or (2) if there is more than one qualified practitioner of 
record, a statement that representation by co-counsel is ongoing.
    Section 2.22(a)(11) is amended to change a cross-reference.
    Section 2.24 is redesignated as Sec.  2.24(a), and amended to 
provide that if an applicant is not domiciled in the United States, the 
applicant may designate a domestic representative (i.e., a person 
residing in the United States on whom notices or process may be served 
in proceedings affecting the mark) by either: (1) Setting forth the 
name and address of the domestic representative in the initial 
application; or (2) filing a separate designation setting forth the 
name and address of the domestic representative, signed by the 
applicant, someone with legal authority to bind the applicant (e.g., a 
corporate officer or general partner of a partnership), or a qualified 
practitioner.
    Where the initial application sets forth the designation of 
domestic representative, the designation may be signed by a person 
authorized to sign the application on behalf of applicant, pursuant to 
new Sec.  2.193(e)(1). The Office does not question the authority of 
the signatory, unless the record presents an inconsistency as to the 
signatory's authority to sign. TMEP section 804.04.
    Section 2.24(b) is added to provide that a request to change or 
revoke a designation of domestic representative must be signed by the 
applicant, someone with legal authority to bind the applicant, or a 
qualified practitioner (e.g., a corporate officer or general partner of 
a partnership).
    Section 2.33(a) is amended to remove the definition of ``person 
properly authorized to sign'' a verification on behalf of applicant, 
and replace it with a cross-reference to Sec.  2.193(e)(1). The 
substance of this definition is unchanged.
    Section 2.33(d), which provided for signature of verifications in 
applications filed through TEAS, is removed as unnecessary. Section 
2.193(c) sets forth the procedure for signing a TEAS document. This 
procedure is unchanged.
    Section 2.62(b) is amended to add a cross-reference to Sec.  
2.193(e)(2).
    Section 2.64(b) is amended to add a requirement that a request for 
reconsideration of a final action be signed by the applicant, someone 
with legal authority to bind the applicant (e.g., a corporate officer 
or general partner of a partnership), or a qualified practitioner, in 
accordance with the requirements of Sec.  2.193(e)(2). This is 
consistent with current practice.
    Section 2.68 is amended to add a requirement that a request for 
express abandonment of an application be signed by the applicant, 
someone with legal authority to bind the applicant (e.g., a corporate 
officer or general partner of a partnership), or a qualified 
practitioner, in accordance with the requirements of Sec.  2.193(e)(2). 
This is consistent with TMEP section 718.01.
    Sections 2.74(b), 2.76(b)(1), 2.87(f), 2.88(b)(1), 2.89(a)(3), 
2.89(b)(3), 2.101(b), 2.102(a), 2.111(b), 2.119(d), and 2.146(c) are 
amended to add cross-references to Sec.  2.193.
    Section 2.153 is amended to require that an affidavit or 
declaration claiming the benefits of the Act of 1946, pursuant to 
section 12(c) of the Act, be filed by the current owner and signed by 
the owner or by a person properly authorized to sign on behalf of the 
owner. This is consistent with TMEP section 1603.
    Section 2.161(b) is amended to remove the definition of ``person 
properly authorized to sign'' an affidavit or declaration of use or 
excusable nonuse under section 8 of the Trademark Act (``section 8 
affidavit'') and replace it with a cross-reference to Sec.  
2.193(e)(1). The substance of this definition is unchanged.
    Section 2.163(b), 2.167(a), and 2.171(b) are amended to add cross-
references to Sec.  2.193.
    Section 2.172 is amended to add a provision that a request for 
surrender of a registration be filed in the name of the owner of the 
registration, and signed by the owner, a person with legal authority to 
bind the owner, or a qualified practitioner. This is consistent with 
current practice.
    Section 2.184(b)(2) is amended to add a cross-reference to Sec.  
2.193(e)(2).
    Section 2.193(a) is redesignated as Sec.  2.193(g).
    Section 2.193(b) is redesignated as Sec.  2.193(h).
    Current Sec.  2.193(c)(1) is revised and separated into Sec. Sec.  
2.193(a), (b) and (c).
    Section 2.193(a) provides that each piece of correspondence that 
requires a signature must bear: (1) A handwritten signature personally 
signed in permanent ink by the person named as the signatory, or a true 
copy thereof; or (2) an electronic signature that meets the 
requirements of paragraph (c). The rule makes clear that a handwritten 
signature must be personally signed by the person named as the 
signatory, and that an electronic signature must be personally entered 
by the person named as the signatory.
    Comment: One comment ``disagree[s] with the proposed change and 
definition of electronic signatures,'' and asserts that ``[s]ince the 
attorneys assume liability and responsibility for the signing forms, it 
is common legal practice for attorneys to authorize others to sign on 
their behalf.'' To assist with

[[Page 54904]]

this proposed change, the commenter requests that the forms be 
``portable for signature to allow for easier compliance with this 
rule.''
    Response: The requirement that attorneys personally sign documents 
that they file in the Office is not a change, having previously been 
required by Sec.  10.18(a) of this chapter. See Boyds Collection Ltd. 
v. Herrington & Co., 65 USPQ2d 2017, 2018, n.4 (TTAB 2003). Section 
10.18(a) was recently replaced by Sec.  11.18(a), which requires that 
``each piece of correspondence filed by a practitioner in the Office 
must bear a signature, personally signed by such practitioner.'' See 
notice at 73 FR 47650 (Aug. 14, 2008).
    Two methods are already in place that can be used to obtain 
signatures from clients or reviewers before filing a TEAS document:
     The document can be completed on-line and e-mailed to the 
signatory for electronic signature from within TEAS. The signatory 
signs the document and it is automatically returned via TEAS to the 
party who requested the signature; or
     The document can be filled out on-line, printed in text 
form, and mailed or faxed to the signatory. The signatory signs the 
printed document in the traditional pen-and-ink manner. The signature 
portion, along with a declaration if required, is scanned to create a 
.jpg or .pdf image file that is attached to the TEAS filing.
    Section 2.193(a)(2) provides that the Office will accept a 
signature that meets the requirements of paragraph (c) on all 
correspondence, whether filed on paper, by facsimile transmission, or 
through TEAS or the Electronic System for Trademark Trials and Appeals 
(``ESTTA''). This is consistent with TMEP section 804.05.
    Section 2.193(c) sets forth the requirements for signing a document 
electronically, previously set forth in Sec.  2.193(c)(1)(iii). The 
substance is unchanged.
    Section 2.193(c)(2) is redesignated as Sec.  2.193(f).
    Section 2.193(d) requires that the name of the person who signs a 
document in connection with a trademark application, registration, or 
proceeding before the TTAB be set forth in printed or typed form 
immediately below or adjacent to the signature, or identified elsewhere 
in the filing (e.g., in a cover letter or other document that 
accompanies the filing).
    Section 2.193(d) is redesignated as Sec.  2.193(i).
    Section 2.193(e) sets forth the proper person(s) to sign various 
types of documents that are commonly filed in connection with trademark 
applications and registrations.
    Section 2.193(e)(1) sets forth the definition of a person who is 
properly authorized to sign a verification in support of an application 
for registration, amendment to an application, allegation of use under 
Sec.  2.76 or Sec.  2.88, request for extension of time to file a 
statement of use under Sec.  2.89, or an affidavit under section 8, 
12(c), 15, or 71 of the Trademark Act. This is consistent with current 
Sec. Sec.  2.33(a) and 2.161(b).
    Section 2.193(e)(2) provides that responses to Office actions, 
amendments to applications, requests for reconsideration of final 
actions, requests for express abandonment, requests to divide, and 
notices of change of correspondence address in an application or 
registration must be signed by the owner of the application or 
registration, someone with legal authority to bind the owner (e.g., a 
corporate officer or general partner of a partnership), or a qualified 
practitioner. This is consistent with Sec. Sec.  2.62(b), 2.64(b), 
2.68(a), 2.74(b), 2.87(f), and 2.184(b)(2).
    Section 2.193(e)(2)(i) provides that if the owner is represented by 
a qualified practitioner, the practitioner must sign, except where the 
owner is required to sign the correspondence. This is consistent with 
current Sec.  11.18(a). This applies to both in-house and outside 
counsel.
    Section 2.193(e)(2)(ii) provides that if the owner is not 
represented by a qualified practitioner, the individual owner or 
someone with legal authority to bind the owner (e.g., a corporate 
officer or general partner of a partnership) must sign. In the case of 
joint owners who are not represented by a qualified practitioner, all 
must sign. This is consistent with TMEP sections 605.02, 712.01 and 
712.01(a)(i).
    Comment: One commenter notes that the requirement for signature by 
all joint owners creates an additional burden if the document is being 
composed and sent through TEAS or ESTTA, or if examiner's amendments 
need to be cleared with each applicant. However, the commenter 
understands that the percentage of unrepresented joint owners is small 
and that the Office intends to avoid the situation where one 
unrepresented joint owner speaks for the other(s) without 
authorization.
    Response: Since one joint owner does not have authority to bind 
another, the Office believes that all must sign.
    Section 2.193(e)(3) provides that powers of attorney and 
revocations of powers of attorney must be signed by the individual 
applicant or registrant or someone with legal authority to bind the 
applicant or registrant (e.g., a corporate officer or general partner 
of a partnership); that in the case of joint applicants or joint 
registrants, all must sign; that once the applicant or registrant has 
designated a qualified practitioner(s), the named practitioner may sign 
an associate power of attorney appointing another qualified 
practitioner(s) as an additional person(s) authorized to prosecute the 
application or registration; that 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; and that 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 Office. This is consistent with Sec. Sec.  2.17(c) and 2.19(a), 
discussed above.
    Comment: Under current practice, when an attorney files an 
application, the on-line power of attorney form can be signed by the 
filing attorney. The proposed rule would require a change in the on-
line form. If the proposed rule is not intended to apply in the initial 
filing stage, but only to subsequent designations, this distinction 
should be made clear in the proposed rule.
    Response: It is not now and never has been acceptable for an 
attorney to sign a power appointing himself or herself as the attorney 
of record, even with the initial application. However, if the initial 
application is accompanied by an improper power of attorney (e.g., a 
power signed by the designated attorney), the Office generally does not 
require a properly signed power, because the filing of a power of 
attorney is not mandatory in a trademark case under current Sec.  
2.17(c) (new Sec.  2.17(b)(1)). The Office will disregard the 
improperly signed power and recognize the attorney who submitted the 
application based on the attorney's signature and appearance on behalf 
of the applicant. See TMEP section 602.01. When an applicant is already 
represented by a qualified practitioner, and a new practitioner from a 
different firm takes over, the Office requires a properly signed power 
of attorney or revocation of the previous power before recognizing the 
new attorney.
    Section 2.193(e)(4) provides that a petition to revive under Sec.  
2.66 must be signed by someone with firsthand knowledge of the facts 
regarding unintentional delay. This is consistent with current 
Sec. Sec.  2.66(b)(2) and (c)(2).
    Section 2.193(e)(5) provides that a petition to the Director under 
Sec.  2.146

[[Page 54905]]

must be signed by the petitioner, someone with legal authority to bind 
the petitioner (e.g., a corporate officer or general partner of a 
partnership), or a qualified practitioner, in accordance with the 
following guidelines:
     If the petitioner is represented by a qualified 
practitioner, the practitioner must sign; or
     If the petitioner is not represented by a qualified 
practitioner, the individual petitioner or someone with legal authority 
to bind the petitioner (e.g., a corporate officer or general partner of 
a partnership) must sign.
    Section 2.193(e)(6) provides that a request for correction, 
amendment, or surrender of a registration must be signed by the owner 
of the registration, someone with legal authority to bind the owner 
(e.g., a corporate officer or general partner of a partnership), or a 
qualified practitioner; and that in the case of joint owners who are 
not represented by a qualified practitioner, all must sign.
    Section 2.193(e)(7) provides that a renewal application must be 
signed by the registrant or the registrant's representative. This is 
consistent with Sec.  2.183(a).
    Section 2.193(e)(8) provides that a designation or revocation of a 
domestic representative must be signed by applicant or registrant, 
someone with legal authority to bind the applicant or registrant (e.g., 
a corporate officer or general partner of a partnership), or a 
qualified practitioner.
    Section 2.193(e)(9) provides that a notice of change of 
correspondence address in an application or registration must be signed 
by the applicant or registrant, someone with legal authority to bind 
the applicant or registrant (e.g., a corporate officer or general 
partner of a partnership), or a qualified practitioner, in accordance 
with the following guidelines:
     If the applicant or registrant is represented by a 
qualified practitioner, the practitioner must sign; or
     If the applicant or registrant is not represented by a 
qualified practitioner, the individual applicant or registrant or 
someone with legal authority to bind the applicant or registrant (e.g., 
a corporate officer or general partner of a partnership) must sign.
    Section 2.193(e)(10) provides that the person transmitting paper 
documents to the Office may sign a cover letter or transmittal letter, 
and that the Office neither requires cover letters nor questions the 
authority of a person who signs a communication that merely transmits 
documents. This is consistent with TMEP section 605.03.
    Comment: One commenter notes that when TTAB documents are filed 
through ESTTA, the electronic filing cover sheet must be signed by a 
person with authority. If not properly signed, the filing may be 
rejected if the attached documents are signed by an unauthorized 
person.
    Response: The Office has revised Sec.  2.193(e)(10) to indicate 
that it applies only to paper documents. For documents filed through 
TEAS, no cover letter or transmittal letter is generated. In ESTTA, the 
system generates a filing form that either stands alone and serves as 
the paper being filed, or is integrated with one or more attachments 
into a single, combined filing. As the commenter has correctly noted, 
the Board views the ESTTA filing form and any attachments thereto as 
comprising a single document, and the signer of the ESTTA form is 
responsible for the content of the attachments. See PPG Industries, 
Inc. v. Guardian Industries Corp., 73 USPQ2d 1926 (TTAB 2005) regarding 
signature of ESTTA documents.
    Section 11.18(a) is amended to add cross-references to Sec. Sec.  
1.4(d)(2) and 2.193(a).

Rulemaking Requirements

    Executive Order 12866: This rule has been determined not to be 
significant for purposes of Executive Order 12866.
    Administrative Procedure Act: This rule merely involves rules of 
agency practice and procedure within the meaning of 5 U.S.C. 553(b)(A). 
Therefore, this rule may be adopted without prior notice and 
opportunity for public comment under 5 U.S.C. 553(b) and (c), or 
thirty-day advance publication under 5 U.S.C. 553(d). However, the 
Office has chosen to seek public comment before implementing the rule.
    Regulatory Flexibility Act: The Deputy General Counsel for General 
Law of the United States Patent and Trademark Office hereby certifies 
to the Chief Counsel for Advocacy of the Small Business Administration 
that this final rule, Changes in Requirements for Signature of 
Documents, Recognition of Representatives, and Establishing and 
Changing the Correspondence Address in Trademark Cases (RIN 0651-AC26), 
will not have a significant impact on a substantial number of small 
entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)).
    As prior notice and an opportunity for public comment are not 
required pursuant to 5 U.S.C. 553 (or any other law), neither a 
regulatory flexibility analysis nor a certification under the 
Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is required. See 5 
U.S.C. 603.
    The rules clarify certain requirements for signature of documents 
filed in the Office, recognition of representatives, and establishing 
and changing the correspondence address in trademark cases. In large 
part, the rule changes merely codify existing practice. Although the 
rules may affect trademark applicants or registrants, because they 
codify the existing practice of the Office, the changes set forth in 
this notice will not have a significant economic impact on a 
substantial number of small entities.
    Unfunded Mandates: The Unfunded Mandates Reform Act requires, at 2 
U.S.C. 1532, that agencies prepare an assessment of anticipated costs 
and benefits before issuing any rule that may result in expenditure by 
State, local, and tribal governments, in the aggregate, or by the 
private sector, of $100 million or more (adjusted annually for 
inflation) in any given year. This rule will have no such effect on 
State, local, and tribal governments or the private sector.
    Executive Order 13132: This rule does not contain policies with 
federalism implications sufficient to warrant preparation of a 
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
    Paperwork Reduction Act: This rule involves information collection 
requirements which are subject to review by the Office of Management 
and Budget (``OMB'') under the Paperwork Reduction Act of 1995 (44 
U.S.C. 3501 et seq.). The collection of information in this rule have 
been reviewed and previously approved by the OMB under OMB control 
numbers: 0651-0054, 0651-0027, and 0651-0040.
    The United States Patent and Trademark Office is not resubmitting 
an information collection package to OMB for its review and approval 
because the changes in this rule will not affect the information 
collection requirements associated with the information collections 
under OMB control numbers 0651-0054, 0651-0027, and 0651-0040. The 
changes in this notice are limited to amending the rules of practice to 
codify current practice with respect to the proper party to sign 
various documents and current procedures for appointment, revocation, 
or withdrawal of attorneys and domestic representatives.
    Interested persons are requested to send comments regarding these 
information collections, including suggestions for reduction of this 
burden, to: (1) The Office of Information and Regulatory Affairs, 
Office of Management and Budget, New

[[Page 54906]]

Executive Office Building, Room 10202, 725 17th Street, NW., 
Washington, DC 20503, Attention: Desk Officer for the Patent and 
Trademark Office; and (2) Commissioner for Trademarks, P.O. Box 1451, 
Alexandria, VA 22313-1451 (Attn: Mary Hannon).
    Notwithstanding any other provision of law, no person is required 
to respond to nor shall a person be subject to a penalty for failure to 
comply with a collection of information subject to the requirements of 
the Paperwork Reduction Act unless that collection of information 
displays a currently valid OMB control number.

List of Subjects

37 CFR Part 2

    Administrative practice and procedure, Trademarks.

37 CFR Part 11

    Administrative practice and procedure, Lawyers.


0
For the reasons given in the preamble and under the authority contained 
in 5 U.S.C. 500, 15 U.S.C. 1123 and 35 U.S.C. 2 and 32, the Office is 
amending parts 2 and 11 of title 37 as follows:

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

0
1. The authority citation for 37 CFR Part 2 continues to read as 
follows:

    Authority:  15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.


0
2. Revise Sec.  2.17 to read as follows:


Sec.  2.17  Recognition for representation.

    (a) Authority to practice in trademark cases. Only an individual 
qualified to practice under Sec.  11.14 of this chapter may represent 
an applicant, registrant, or party to a proceeding before the Office in 
a trademark case.
    (b)(1) Recognition of practitioner as representative. To be 
recognized as a representative in a trademark case, a practitioner 
qualified under Sec.  11.14 of this chapter may:
    (i) File a power of attorney that meets the requirements of 
paragraph (c) of this section;
    (ii) Sign a document on behalf of an applicant, registrant, or 
party to a proceeding who is not already represented by a practitioner 
qualified under Sec.  11.14 of this chapter from a different firm; or
    (iii) Appear in person on behalf of an applicant, registrant, or 
party to a proceeding who is not already represented by a practitioner 
qualified under Sec.  11.14 of this chapter from a different firm.
    (2) Signature as certificate of authorization to represent. When a 
practitioner qualified under Sec.  11.14 of this chapter appears in 
person or signs a document pursuant to paragraph (b) of this section, 
his or her personal appearance or signature shall constitute a 
representation to the Office that he or she is authorized to represent 
the person or entity on whose behalf he or she acts. The Office may 
require further proof of authority to act in a representative capacity.
    (c) Requirements for power of attorney. A power of attorney must:
    (1) Designate by name at least one practitioner meeting the 
requirements of Sec.  11.14 of this chapter; and
    (2) Be signed by the individual applicant, registrant, or party to 
a proceeding pending before the Office, or by someone with legal 
authority to bind the applicant, registrant, or party (e.g., a 
corporate officer or general partner of a partnership). In the case of 
joint applicants or joint registrants, all must sign. Once the 
applicant, registrant, or party has designated a practitioner(s) 
qualified to practice under Sec.  11.14 of this chapter, that 
practitioner may sign an associate power of attorney appointing another 
qualified practitioner(s) as an additional person(s) authorized to 
represent the applicant, registrant, or party. If the applicant, 
registrant, or party revokes the original power of attorney (Sec.  
2.19(a)), the revocation discharges any associate power signed by the 
practitioner whose power has been revoked. If the practitioner who 
signed an associate power withdraws (Sec.  2.19(b)), the withdrawal 
discharges any associate power signed by the withdrawing practitioner 
upon acceptance of the request for withdrawal by the Office.
    (d) Power of attorney relating to multiple applications or 
registrations. (1) The owner of an application or registration may 
appoint a practitioner(s) qualified to practice under Sec.  11.14 of 
this chapter for up to twenty applications or registrations that have 
the identical owner name and attorney through TEAS.
    (2) The owner of an application or registration may file a power of 
attorney that relates to more than one trademark application or 
registration, or to all existing and future applications and 
registrations of that owner, on paper. A person relying on such a power 
of attorney must:
    (i) Include a copy of the previously filed power of attorney; or
    (ii) Refer to the power of attorney, specifying the filing date of 
the previously filed power of attorney; 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 
person 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.
    (e) Canadian attorneys and agents. (1) A Canadian patent agent who 
is registered and in good standing as a patent agent under Sec.  
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 Sec.  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 Sec.  
11.14(f) of this chapter.
    (f) Non-lawyers. A non-lawyer may not act as a representative 
except in the limited circumstances set forth in Sec.  11.14(b) of this 
chapter. Before any non-lawyer who meets the requirements of Sec.  
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).
    (g) Duration of power of attorney. (1) For purposes of recognition 
as a representative, the Office considers a power of attorney filed 
while an application is pending to end when the mark registers, when 
ownership changes, or when the application is abandoned.
    (2) The Office considers a power of attorney filed after 
registration to end when the mark is cancelled or expired, or when 
ownership changes. If the power was filed in connection with an 
affidavit under section 8, 12(c), 15 or 71 of the Trademark Act, 
renewal application under section 9 of the Act, or request for 
amendment or correction under section 7 of the Act, the power is deemed 
to end upon acceptance or final rejection of the filing.

0
3. Revise Sec.  2.18 to read as follows:


Sec.  2.18  Correspondence, with whom held.

    (a) Establishing the correspondence address. (1) If a written power 
of attorney that meets the requirements of Sec.  2.17 is filed, the 
Office will send correspondence to the practitioner designated in the 
power.
    (2) If a practitioner qualified under Sec.  11.14 of this chapter 
transmits a document(s) on behalf of an applicant,

[[Page 54907]]

registrant, or party to a proceeding who is not already represented by 
another qualified practitioner from a different firm, the Office will 
send correspondence to the practitioner transmitting the documents.
    (3) If an application, registration or proceeding is not being 
prosecuted by a practitioner qualified under Sec.  11.14 of this 
chapter and the applicant, registrant, or party to the proceeding 
designates a correspondence address in writing, the Office will send 
correspondence to the designated address if appropriate.
    (4) If an application, registration or proceeding is not being 
prosecuted by a practitioner qualified under Sec.  11.14 of this 
chapter and the applicant, registrant, or party to the proceeding has 
not designated a correspondence address in writing, but a domestic 
representative has been appointed, the Office will send correspondence 
to the domestic representative if appropriate.
    (5) If the application, registration or proceeding is not being 
prosecuted by a practitioner qualified under Sec.  11.14 of this 
chapter, the applicant, registrant, or party to the proceeding has not 
designated a correspondence address, and no domestic representative has 
been appointed, the Office will send correspondence directly to the 
applicant, registrant, or party to the proceeding.
    (6) The Office will send correspondence to only one address in an 
ex parte matter.
    (7) Once the Office has recognized a practitioner qualified under 
Sec.  11.14 of this chapter as the representative of an applicant or 
registrant, the Office will communicate and conduct business only with 
that practitioner, or with another qualified practitioner from the same 
firm. The Office will not conduct business directly with the applicant 
or registrant, or with another practitioner from a different firm, 
unless the applicant or registrant files a revocation of the power of 
attorney under Sec.  2.19(a), and/or a new power of attorney that meets 
the requirements of Sec.  2.17(c). A written request to change the 
correspondence address does not revoke a power of attorney.
    (b) Changing the correspondence address. (1) If a physical or e-
mail correspondence address changes, the applicant, registrant, or 
party to a proceeding must file a written request to change the 
correspondence address. The reque