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

October 2017 Edition of the TMEP

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602.03(e)    Identification of Foreign Attorney in Original Application

If a new application identifies an attorney or agent with an address outside the United States (e.g., if a foreign address is set forth in the "attorney" section of a TEAS form) and the examining attorney must issue an Office action regarding any refusals and/or requirements, the Office action must include an advisory that unless the individual meets the requirements of 37 C.F.R. §11.14, he or she is not authorized to practice before the USPTO in trademark matters and may not represent the applicant in the particular trademark application, and that any power of attorney to the individual is void ab initio.  The Office action should be sent to the correspondence address of record indicated in the original application.  If the identified individual can establish that he or she is a qualified attorney (i.e., a member in good standing of the bar of the highest court of a U.S. state) who has an address outside the United States, he or she is a qualified practitioner under 37 C.F.R. §§11.1, 11.14(a),(c). If the designated attorney does not establish that he or she is a qualified practitioner, the attorney’s name must be removed from the "Attorney" field in the trademark database, and any responses, voluntary amendments, express abandonments, or changes of correspondence signed by the designated attorney must be treated as improperly signed documents. See TMEP §§602.03(c), 611.05–611.05(c).

If an Office action is not necessary (i.e., the application is otherwise eligible for approval for publication or registration on the Supplemental Register), the USPTO staff must ensure that the USPTO database does not include the identified individual in the "Attorney" field.  In addition, the examining attorney must enter a Note to the File indicating the attorney name has been removed. The correspondence address should remain unchanged.

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