On Tuesday, September 26, 2023 at 2pm Eastern, the USPTO will hold a Public Listening Session regarding one of the remaining portions of the Trademark Modernization Act that has not yet been implemented: the duration of the USPTO’s recognition that an attorney represents an applicant/registrant for purposes of communications regarding the client’s trademark records. Changes to Duration of Attorney Recognition; Notice of Public Listening Session and Request for Comments, 88 Fed. Reg. 54305 (Aug. 10, 2023) (PDF version) (the “Notice”).
Interested parties had until September 22, 2023 (updated from Sept. 18) to advise the USPTO that they’d like to present at the Listening Session, currently scheduled in the Clara Barton Auditorium at the USPTO on September 26, 2023 between 2pm and 3:30pm EST. Seating is limited if you’re planning to attend in person, but the session will be simulcast (advanced registration was required by Sept. 22, whether you planned to attend in person or virtually). Written comments will be accepted through October 6, 2023 through the comment portal. Id.
Questions to be Addressed during Listening Session
The Notice asks interested parties to answer three (non-exhaustive) questions (see id. at 54308):
1. “Do you think the current rule should remain unchanged or are you in favor of the revisions under consideration?”
- For context, the “current rule” is that attorneys qualified under 37 C.F.R. § 11.14 who represent applicants or registrants (and file the appropriate documents to communicate that representation to the USPTO) can be recognized by the USPTO such that the USPTO will correspond with those attorneys only “until recognition ends” (more on the triggers that would end the representation are discussed below). Id. at 54306.
- For the moment, the USPTO has been sending “courtesy copies” of certain kinds of notices to attorneys listed in the TSDR record, even after their recognition technically ends (more on that below), except for notices from the TTAB regarding cancellation proceedings, which are only served on registrants directly. Id.
- The “revisions under consideration” were proposed through a Notice of Proposed Rulemaking on May 18, 2021 to implement the Trademark Modernization Act (“NPRM”) but were tabled for later consideration when the Final Rule was published in November 2021.
- The proposed Revisions, and the USPTO’s decision to table their implementation, were discussed in more detail in a prior blog post, but are generally that an attorney of record would continue to be recognized by the USPTO until that attorney withdraws from representation or until the client revokes that power of attorney and/or appoints a new attorney, even if there was a change of ownership. Id. at 54306.
2. “Do you have suggestions for handling the transition period during which attorney information is removed from the record whether the current rule is retained or revised?”
- Before the revisions to 2.17(g) will take effect, the USPTO will expunge the names and contact information of all attorneys whose recognition of representation has ended as of the effective date of the change. Id. These attorneys would need to file new Powers of Attorney on behalf of their clients if they continue to represent them and if their clients want them to handle communications with the USPTO.
- This purging of prior attorney information following a “recognition-ending event” allows the USPTO to clean up the records to remove any retired or deceased practitioners and those who simply no longer represent these parties under the existing regulations. Id. at 54307
- To retain their contact information in these records would inappropriately suggest that these attorneys may still represent these parties, even though they received no notice that their representation would be deemed to have continued and even though they may have relied on the clear language of § 2.17(g), which would have concluded that their representation had already ended. Id.
- However, even if the USPTO does not implement the May 17, 2021 proposed revisions, the current handling of communications with applicants and registrants (i.e., sending courtesy copies) will change. Id. at 54307.
- In particular, the USPTO will stop sending courtesy notices or reminders to the listed attorney in TSDR in addition to the applicant or registrant after a “recognition-ending” event – which the USPTO describes as simply adhering to the plain language of 37 C.F.R. § 2.17(g) as written (see below). Id.
- Its agreement over the past several years to send such courtesy copies to counsel named in TSDR as most recently representing the applicant/registrant was provided as an accommodation to the bar, but raises some potential hurdles that the USPTO believes must be addressed.
- Specifically, the USPTO expressed its concern in the Notice that sending these courtesy reminders “constitutes an unofficial waiver of § 2.18(c), which governs the parties with whom the USPTO will correspond in trademark matters” and which must be corrected. Id. at 54306.
3. “Do you have suggestions for making withdrawal or re-recognition easier if the rule is revised to continue recognition?”
- In the Notice, the USPTO identifies its preference to allow representation to continue until the attorney withdraws or the applicant/registrant revokes such power of attorney. Id.
- The USPTO explained, “Shifting the burden to the attorney to withdraw, or the owner to file a revocation, would give the USPTO assurance that it is communicating with the correct party. Id. at 54307.
- The USPTO notes that it “has considered requests that attorneys be given the opportunity to opt in to remaining of record in such situations” and rejected those requests for two reasons: (a) “the USPTO has neither the staff nor the technological resources to implement an opt-in alternative as to the affected applications and registrations”; and (b) “such a provision would not reconcile inaccuracies in older records.” Id. at 54306.
- For this part of the listening session, the USPTO requested specific feedback about (1) how to make the withdrawal easier; and (2) how to implement this transition in the USPTO database.
Current Version of 37 C.F.R. 2.17.
Relevant portions of the current regulations on representation of trademark owners by trademark attorneys are below:
37 C.F.R. § 2.17 – Recognition for representation
(a) Authority to practice in trademark cases. Only an individual qualified to practice under § 11.14 of this chapter may represent an applicant, registrant, or party to a proceeding before the Office in a trademark case.
(b)(1) Recognition of practitioner as representative. To be recognized as a representative in a trademark case, a practitioner qualified under § 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 § 11.14 of this chapter from a different firm; or
(iii) Appear by being identified as the representative in a document submitted to the Office on behalf of an applicant, registrant, or party to a proceeding who is not already represented by a practitioner qualified under § 11.14 of this chapter from a different firm.
. . .
(g) Duration of recognition.
(1) The Office considers recognition as to a pending application to end when the mark registers, when ownership changes, or when the application is abandoned.
(2) The Office considers recognition obtained after registration to end when the mark is cancelled or expired, or when ownership changes. If a practitioner was recognized as the representative in connection with an affidavit under section 8, 12(c), 15, or 71 of the Act, renewal application under section 9 of the Act, or request for amendment or correction under section 7 of the Act, recognition is deemed to end upon acceptance or final rejection of the filing.
37 C.F.R. § 2.17 (emphasis added).
Under the plain language of this Rule, the USPTO will begin to recognize an attorney representing an applicant or registrant as long as one of the events in Section (b)(1) occurs:
- Filing a power of attorney,
- Signing a document on behalf of a party who is not already represented, or
- Appear by being identified as the representative on a document filed with the USPTO on behalf of a party who is not already represented.
And, the USPTO will stop recognizing this practitioner as follows:
- With respect to an application as soon as the application registers, ownership changes or the application is abandoned; and
- With respect to a registration, when the registration cancels or expires, when ownership changes or when any maintenance filings have been accepted or finally rejected. Id.
Discontinuing Courtesy Copies to Counsel after Recognition-Ending Events
In practice and in response to specific feedback from attorneys in the trademark bar, the USPTO has been sending courtesy copies to the listed Correspondent of Record on trademark records, even if recognition under § 2.17(g) would have already technically ended. For example, these attorneys have been receiving notices that a maintenance deadline was due – which can prompt the attorneys to discuss those upcoming deadlines with their clients – even though under the plain language of the Rule, the USPTO’s recognition of their representation ended when registration issued years earlier.
This courtesy was extended to address concerns raised by the trademark bar that many attorneys represent their clients in matters other than a single trademark application or registration – and these clients may expect that their counsel will handle all official communications and notices on their behalf, and let them know when their action is required. Under the relevant Rules of Professional Conduct, attorneys have continuing obligations to their clients until representation ends (not merely until a government body stops recognizing that representation). In response to the May 2021 Notice of Proposed Rulemaking, trademark attorneys advised the USPTO about their concerns that their clients’ response deadlines might be missed if the USPTO only communicates with a registrant and not the attorney. See Notice at 54306.
Moreover, in the wake of myriad fraudulent solicitations sent over the past several years by unscrupulous third-parties to trademark owners seeking extortionate renewal fees, trademark attorneys have been routinely advising their clients to ignore solicitations asking for payments of fees unless they are passed on by the attorney because such invoices are likely not legitimate. In recent years, these fraudulent solicitations have been manipulated to appear as if they are authentic, official communications from the USPTO – and effectively convey that failing to pay any assessed fees would cause the registrations with the USPTO to lapse. (See additional tips from the USPTO regarding protecting oneself against trademark scams and see a prior post on this blog on the same topic.)
However, if USPTO’s actual official communications are only sent to registrants, it is highly likely that many trademark owners may not realize which communications are authentic and require action, and when they can be safely ignored. Their registrations could be canceled prematurely simply because they did not realize a deadline reminder was legitimate, or when they receive fraudulent notices that should be ignored, they may be duped into paying those unnecessarily high fees and mistakenly believe that any renewals had been paid for and would occur on time. In both cases, not realizing that communications actually sent by the USPTO are legitimate could be fatal to maintaining their rights.
As a result, the USPTO has expressed a preference of adopting the proposed change to 37 C.F.R. § 2.17(g) (and therefore continue to recognize the attorneys of record beyond these “recognition-ending” events, thus sending all correspondence to these attorneys unless they withdraw, are revoked and/or are replaced by new counsel, or ownership of the application or registration occurs). By adopting the Rule change, the USPTO will also have a more reliable confirmation of whether they are communicating with authorized representatives of a registrant or applicant. Notice at 54307.
Deleting Contact Information in TSDR Records
It makes sense that before the USPTO could implement the rule change, it would have to purge its records of all attorneys whose recognition of representation would have ended already – so that the USPTO does not extend an assumption of continuing representation where it would be inconsistent with the prior rule. Notice at 54306. It is the USPTO’s view that any attorney who is mistakenly removed from the USPTO’s records in this process would have to file a new Power of Attorney anyway – because recognition has already ended.
However, attorneys operating in this field routinely use the contact information for the attorney of record for an applicant/registrant to send communications relating to the mark, such as cease and desist letters, requests for consent, coexistence or license agreements, or other similar negotiation attempts – even if the registration had been renewed. In other words, without regard to whether the application of § 2.17(g) meant that the USPTO was no longer required to “recognize” that registrant’s attorney may still be engaged. Without access to this contact information, counsel seeking to address issues with the trademark owner may end up inadvertently contacting a represented party. See, ABA Model R. Prof. C. 4.2 (attorneys may only communicate with an opposing party’s attorney if the opposing party is represented, unless the attorney consents to the contact; this is a duty owed to the opposing attorney, not to represented party or the public at large); compare with id., cmt. 8 (noting the rule prohibits knowing contact with a represented party, but “such actual knowledge may be inferred from the circumstances . . . Thus, the lawyer cannot evade the requirement of obtaining the consent of counsel by closing eyes to the obvious.”).
By way of example, one might argue that a corporation or other company that owns a sizeable trademark portfolio would likely have trademark counsel – either internal or external – such that it would be expected that the company would be represented and its employees should not be contacted directly by opposing counsel. Id. cmt 1 (“This Rule contributes to the proper functioning of the legal system by protecting a person who has chosen to be represented by a lawyer in a matter against possible overreaching by other lawyers who are participating in the matter, interference by those lawyers with the client-lawyer relationship and the uncounselled disclosure of information relating to the representation.”) As a result, the USPTO should consider maintaining some archival and/or searchable record to allow attorneys to reach out to the applicant’s or registrant’s prior listed counsel to confirm whether representation continues so that they can avoid communicating with represented parties.
USPTO personnel have expressed through a variety of media that they really would like feedback on this proposed change. If you have comments about this proposed change in the rules of practice before the Trademark Office, please submit your comments to the USPTO through the Notice Portal on or before the October 6, 2023 deadline.