(New 09/08/2008)
Warning to USPTO Customers re Trademark Monitoring and Document Filing Companies:
You may receive unsolicited communications from companies requesting fees for trademark related services, such
as monitoring and document filing. Although solicitations from these companies frequently display customer-specific information, including USPTO serial number or registration number and owner name, companies who offer these services are not affiliated or associated with the USPTO or any other federal agency. The USPTO does not provide trademark monitoring or any similar services.
Such companies typically charge a service fee in addition to applicable USPTO fees. In many instances, applicants and registrants have mistakenly believed that the USPTO has issued these communications or that these companies are affiliated with the USPTO. Complaints about such companies or communications may be made to the Federal Trade Commission, at https://www.ftcomplaintassistant.gov/.
You can file documents electronically directly with the USPTO using forms available through the Trademark Electronic Application System (TEAS). Only applicable fees required by law, and no service fees, are charged. You can monitor status directly at no cost through Trademark Application Registration Retrieval (TARR) [link to http://tarr.uspto.gov/]. For general information on filing and maintenance requirements for trademark applications and registrations, including required fees, please consult the USPTO website.
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(New 08/27/2008)
Response form checkbox:
The USPTO recently added a requirement to the TEAS response
to Office action form, such that filers on the validation page must check a box to "confirm that this response addresses each issue requiring response in the Office action or any previous Office action incorporated by reference, and does not consist only of a signature (unless the missing signature was the sole issue raised in the Office action)." Practitioners have raised concerns that, for various reasons, they do not believe that checking this box would be appropriate.
The USPTO frequently receives submissions on the Response to Office action form with only a signature, where the Office action raises other issues requiring response. The purpose of adding the checkbox was simply to alert filers that, in such cases, a signature alone is not a complete response to the Office action. Any such submissions will result in either: (1) issuance of a notice of incomplete response; (2) issuance of a final Office action; or (3) abandonment of the application for failure to respond completely, at the discretion of the examining attorney and depending on whether the action is final or non-final in nature. TMEP §718.03.
Noting the concerns raised, however, the USPTO will amend the language in a release currently scheduled for August 29 to read: "I hereby confirm that I am aware that this response, to be considered "complete," should address each issue requiring response in the Office action or any previous Office action incorporated by reference, and further confirm that this response does not consist only of a signature (unless the missing signature was the sole issue raised in the Office action).
It is believed that the new language simply highlights what constitutes a complete response, but does not make any claim that what is being submitted is, in fact, necessarily complete. Note that the checkbox is specifically limited to issues requiring a response. Therefore, for example, if one of the issues that the Office action raises is a potential citation under Section 2(d) based on a prior pending application, a filer could elect not to address specifically this issue in its response, and yet still appropriately check the box, since a response is not required until the potential citation matures into a registration.
Also, the language "any previous Office action incorporated by reference" is referring to an earlier USPTO Office action, where, for example, a second action may incorporate issues/requirements raised in the first action. The expectation is not, as raised by some commenters, that practitioners are to incorporate all of their prior responses, including those that may have been handled by Examiner's Amendment or perhaps another previously appointed attorney, into later responses. Once an issue has been addressed, no need exists to address it "again" if for some reason a second response is being filed. The intent of the language is only to clarify that instances may exist where, prior to any response being filed, the USPTO may issue a second Office action.
The second action may simply reference the requirements of the first Office action, rather than repeating them in full. A "complete" response to the second action is one that addresses the issues of both of those actions. Again, the USPTO does not believe that the checkbox language should be interpreted to place any sort of higher burden on the filers in this regard.
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(New 08/20/2008)
State of bar membership:
Recent updates to the informational note beneath the Signatory's Position field within the signature section of the TEAS forms provides that if a form is
being signed by an attorney, the person should enter Attorney of record, [specify at least one state] bar member. This suggested format was offered as a means to clarify the authority of the signer. Due to recurring problems with unauthorized representation by individuals who may not represent others before the Office, the USPTO is requesting this information of attorneys meeting the definition set forth in 37 C.F.R. '10.1(c). Canadian practitioners meeting the requirements of 37 C.F. R. '10.14(c) are requested to indicate their position as OED Recognized Canadian Agent.
For more information related to foreign attorneys and non-attorneys, see Examination Guide No. 3-06, "Representing an Applicant/Registrant Before the USPTO."
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(New 08/20/2008)
Checkbox for no declaration: In the most recent TEAS release, a feature of the Response to Office action form was inadvertently removed, namely, the checkbox to indicate that no declaration was being submitted because one was not believed to be required by the Trademark rules of practice. This checkbox will be restored in a release currently scheduled for August 29.
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(New 08/20/2008)
DBA/AKA/TA/Formerly: In the most recent TEAS release, radio buttons were added for the choices of DBA, AKA, TA, and Formerly. Inadvertently, DBA was "locked in" as a default setting. However, unless an actual textual entry is made, the choice of DBA will not be carried over to the USPTO databases (and, for any filings made prior to an implemented temporary fix, the DBA wording was being stripped out programmatically before upload to the databases). In a release currently scheduled for August 29, the radio buttons will be replaced with checkboxes, and DBA will not be pre-selected.
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(Updated 05/13/2008) Change of Correspondence Address form update:
Because of problems that arose after its original deployment, the TEAS Change of Correspondence Address (CCA) form was modified so that the correspondent name is now a read-only field. This modification was necessary because too many filers continued to misuse the CCA form by changing the correspondent to a new attorney, rather than submitting a proper revocation/appointment. The current version of the CCA form makes clear that you are only changing an address, but not the listed attorney.
The USPTO considers an applicant to be "pro se" if 1) the applicant never had an attorney; or 2) an extension of protection to the United States under the Madrid Protocol exists, wherein the USPTO views all applicants as being "unrepresented" until a U.S. attorney is appointed or a U.S. attorney appears.
Furthermore, at registration, the USPTO considers that any appointment ceases effect, and the registrant is considered to be "pro se" until there is either an actual appointment made, or there is a post registration submission made (i.e., the filing of an affidavit under Section 8 or a combined affidavit of use and application for renewal under Sections 8 and 9.)
In light of the above, after the deployment of the modified CCA form, the USPTO received comments that the filing of a revocation/appointment form is burdensome and unnecessary, particularly for (1) registered files wherein the Office has always maintained that any "appointment" ceases to have effect at the time of registration (the argument being that, as such, an authorized filer should be able to change the name of the attorney through the CCA form); and (2) extensions of protection under the Madrid Protocol, where no U.S. attorney was ever appointed.
Again, while noting these comments, the USPTO has determined that because of the overall misuse of the form, on balance, it is more critical to ensure that, where truly necessary, a proper appointment is being made, which the new version of the CCA form dictates.
With respect to foreign applicants under the Madrid Protocol and other pro se applicants, attorneys may submit new correspondence information, including the new correspondent's name, within any Response to Office Action (ROA) form (the current TEAS ROA form permits this). For attorneys merely to add new correspondence information without submitting an official response, attorneys may: 1) submit a CCA form, signed by the authorized attorney, and then e-mail TEAS@uspto.gov to request a manual update of the USPTO's database to reflect the new attorney's name; or (2) use the Revocation/Appointment form as a workaround.
The USPTO highlights here that the Revocation/Appointment form allows update of the attorney's name and correspondence address, and if signed after registration by a newly appearing attorney, the USPTO will accept it, even if signed by the attorney (rather than the registrant), because the prior power expired.
Language on the Revocation/Appointment form previously warned that the new attorney should not sign the form. To eliminate any suggestion that use of the existing Revocation/Appointment form when an applicant or registrant is unrepresented is improper, the USPTO modified the NOTE on form, so that is now reads as follows:
"Unless the applicant/registrant is in a pro se status at the time of the attorney's appearance, the attorney CANNOT sign a new power of attorney or revocation of a previous power of attorney on behalf of the applicant or registrant". [Wherein the underlined wording links to help that explains that as of the date of registration, any existing appointment ceases effect. The registrant is considered to be pro se (unrepresented) until either an actual appointment is made or a post registration filing is made. In regards to the latter, the USPTO considers the filing of any post registration form, where filed by an attorney, to be an indication that the filer has been authorized by the registrant. The filing of any TEAS Post Registration maintenance form automatically updates the "Attorney of Record" and the "Correspondence Address" data fields in the USPTO's TARR database.]
As to the CCA form, because of concerns raised by practitioners, the USPTO plans to modify the form, as follows: currently, the CCA form pre-populates (and displays in a "read only," non-editable format) the name that appears as the first line of the correspondence address in the USPTO's database (which may, in fact, be a name other than that of a U.S. attorney; e.g., a name of a non-U.S. firm). The USPTO's intent was only to prevent changing of a U.S. appointed attorney through the CCA form. Where there is no attorney (pro se specifically because either no attorney had been appointed, or it is an extension of protection, but not because the mark is registered (see below)), the USPTO will modify the CCA form so no name pre-populates into the first "Name" field. The form will specifically look at whether there is an attorney of record. If the answer is "yes", the form will function as in the current design. On the other hand, if the answer is "no," the modified version of the form will present a field that will permit actual entry of new name information, i.e., replicating the old design of the CCA form.
As to registered marks, while the USPTO has always said that at the point of registration any existing appointment ceases, which would suggest the same pro se status outlined above, there remains the possibility that someone else has filed a post registration form, meaning that party is now "appointed".
This introduces too many variables relative to programming issues, and at this time, the USPTO wishes to first focus on resolving problems related to the extensions of protection/pro se scenarios. At a later point, the USPTO will investigate ways possibly to modify the form also to permit the entrance of name information for certain registered files, i.e., those registered but wherein no post-registration filing by another party has been made.
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(New 09/18/2007) Response to Office Action and Request for Reconsideration forms: The USPTO recently introduced a new electronic form for filing a Request for Reconsideration (RFR). Unfortunately, the form was programmed "too narrowly"--- it is looking for a "final action mailed (or e-mailed)" anywhere in the prosecution history, and if it finds such an entry, then is directing the user to the RFR form. Of course, after the issuance of a final action, there may be a new "non-final action" issued, for which a "regular" response to Office action filing would be appropriate. Currently,
an attempt to uses the TEAS Response to Office Action (ROA) form is producing an error message, indicating that the RFR must be used. And in some instances, the attempt to then use the RFR is producing an error message indicating that the form can not be used, because more than six (6) months has passed from the issuance date of the final action (which may occur when, for example, a subsequent non-final action has issued). The USPTO is aware of these problems, and plans to remove the existing edits in
a release scheduled for October 12. We apologize for the inconveniences. In the interim, a reminder that as a "workaround," the Preliminary Amendment (PA) form may be used. While obviously this is not a true
Preliminary Amendment, that form does not have any edits, so it can be used to submit any data to the USPTO. Please note, however, that the PA form does not, unlike the ROA and RFR forms, contain is a specific section for entering arguments. If that is what is needed, a "shoehorn" approach within the Miscellaneous Statement section of the Additional Statements section of the form is recommended.
Also, please note that the Preliminary Amendment form "workaround" approach will NOT work where the original filing basis was Section 66(a). No preliminary amendment is permitted for an application under the Madrid Protocol (either on paper or through TEAS). Therefore, if a problem is encountered with the ROA or RFR form, and the application is in the 79 series (i.e., with a Section 66(a) basis), then the only option for submitting the response or the request for reconsideration will be on paper.
Please also not that actual edits now prevent use of the ROA form for filing after a mark is published and/or registered. This is simply a "technical" enforcement of the directive that has always appeared at the beginning of the form: "Also, do not use this form to respond to
any actions mailed after the mark is published and/or registered, as the Intent-to-Use (ITU) or Post-Registration units issue them. Forms for that purpose will be available in the future. Until then, you must submit responses to those types of actions via regular mail." Responses to actions issued by the Post Registration division must be filed via "regular" mail until such time as a specific TEAS form is
developed for that purpose. The procedures for submitting amendments/corrections to trademark applications AFTER publication is explained in the "Important Notices" section of the front page of the TEAS site, as shown below. The USPTO plans to introduce a TEAS form for this purpose in January/February 2008:
Procedures for Submitting Amendments/Corrections to Trademark Applications AFTER Publication:The USPTO has established a new trademark procedure for filing amendments and requests for corrections after publication, to improve tracking and disposition. "Publication" refers either to (1) when an examining attorney has "approved" an application for publication; or (2) the actual publication of the mark in the Official Gazette.
You should always review your application data, by entering the application serial number in TARR, and later by checking the on-line Official Gazette If you must correct any information, you should determine the application status, as displayed in TARR. If now "after publication," you should fax an amendment/correction to "Post-Publication Amendments/ Corrections," at 571-270-9007, no later than 6 weeks after publication (to ensure that the amendment/correction becomes part of the record for the relevant application, and can be considered prior to the issuance of the notice of allowance or registration certificate). Do not submit any requests to the TM Photocomp mailbox, as it is no longer available for submission of amendments or requests for corrections after publication. Again, the procedure has been changed specifically to ensure that the requested amendment is matched with the proper application, uploaded into the database, and reviewed in a timely manner.
NOTE: You can e-mail requests to correct minor typographical errors, inquiries regarding the procedure for submitting a post-publication amendment, and/or questions regarding the status of a post-publication amendment to TMPostPubQuery@USPTO.GOV.
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(Updated 10/09/2007) Attorney of Record field: The USPTO resolved the problem of attorney information being deleted from the USPTO databases once an application registers as of August 27th. While the Office has always interpreted representation of the attorney as terminating upon registration, it was not the intent of the Office to remove the Attorney of Record field and associated data. Instead, the Office had only wanted to introduce a change wherein, at the point of registration, the "e-mail authorization" flag would be flipped to "no"---all data itself, including the e-mail address, was to remain in the record. Due to a misunderstanding with USPTO programmers, a broader change was unfortunately introduced, but has now been corrected. Also, as of Thursday, October 4th, the previously-deleted Attorney of Record data was restored to 27,293 records.
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(New 07/10/2008) Expanded PDF size: On or about August 29, 2008, the USPTO plans to enhance TEAS to (1) increase the size limitation of PDF attachments from 3 to 5 megabytes; and (2) accept other "non-Adobe flavors" of PDFs. Please note, however, that the number of pages within any PDF file may not exceed 100 pages, separate and apart from the 5 megabyte limit.
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(Updated 03/20/2008) Jumbled Classes ITU forms: The USPTO is aware that for multi-class applications, the displays of the classes within the TEAS Allegation of Use and Extension forms are no longer in the correct ascending class order (previously, the order had been displaying correctly, but a "bug" was unfortunately introduced into the forms at some recent point). This problem will be resolved within a release currently scheduled for May 23, 2008. The USPTO regrets the inconvenience caused by this temporary display problem.
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(Updated 08/01/2008) Post-Publication Amendments: A specific TEAS form for the filing of an amendment/correction to a trademark application AFTER publication has been developed, with deployment currently scheduled for on or about August 9, 2008. Until this form is in production, please continue to follow the filing procedure outlined below within the "Important Notices" section, at "Post-Publication Amendments." NOTE: "Publication" refers either to (1) when an examining attorney has "approved" an application for publication; or (2) the actual publication of the mark in the Official Gazette.
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(New 08/01/2008) Language updates ITU and Post-Registration forms: On or about August 9, 2008, the current ITU and Post-Registration forms will be updated to modify language associated with the 3 "radio buttons" in the Goods/Services section of the forms, based on feedback from outside practitioners. An applicant may, for example, enter into an agreement to not register a mark for certain goods, but that agreement allows for use. As such, the applicant should not have to "swear" (as in the current Extension form) that no bona fide intention to use the mark exists. The new form language will state, for example, simply that the filing does not cover this specific class, rather than indicating that "The applicant does not have a continued bona fide intention to use the mark in commerce.".
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(New 08/01/2008) ROA Character Conversions: On or about August 9, 2008, within the Response to Office action (ROA) form, some characters after submission of the form may be displayed in a manner not exactly identical to what was originally entered, because various USPTO systems cannot display/print certain characters. The USPTO will convert any problematic character(s) to the closest acceptable equivalent(s). For a complete table highlighting which characters will be converted, click here.
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(New 08/01/2008) Paper filing required:While the Trademark Electronic Application System (TEAS) does offer a significant number of filing options, not all possible Trademark submissions may currently be done electronically. To highlight for practitioners where a TEAS form does not exist, the USPTO recently added a link on the main page of TEAS (within the right column, where all of the various TEAS form are accessed), as follows:
Click below to access the correct form:
NOTE: To learn which forms currently require paper filing,
click here. New
[The referenced link will go to information that will spell out, within different categories, where no TEAS form exists, nor is an electronic filing alternative/workaround available. The forms listed therein must be made on paper at this time ].
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(Updated 02/28/2008) Fixes for Suspension Response form: Subsequent to its initial deployment, the USPTO enhanced the "Response to Suspension Inquiry or Letter of Suspension" form. Specifically, the following changes were made:
1) the addition of mechanisms within all sections of the form to enter/attach comments/remarks, so that a proper response can be supplied for any and all requirements (for example, the entrance of a disclaimer or modified listing of goods/services).
2) the foreign application section was modified to clarify that a proper response may be made within that specific section not only when the foreign application has not yet matured into a registration, but also where the registration has, in fact, issued, but the country of origin has not yet made the actual registration certificate available for submission to the USPTO;
3) the foreign registration section was modified to add a specific checkbox whereby the applicant can request that the examining attorney delete the Section 1(b) basis for the goods and/or services that the foreign registration being submitted covers, if the Section 44(e) basis is accepted for those goods and/or services. Please note, however, in the event that multiple registration certificates must be submitted within the 44(e) section of the form, the data concerning the other registration(s) must be entered as free-form text within a separately attached file (in addition to the attached file for the issued foreign registration certificate itself), because the actual data fields within the form (for foreign registration date, number, etc.) can only accommodate one set of data elements corresponding to one registration. Unfortunately, even with enhancements to this form, this feature was not changed due to existing structures in the USPTO database, and the workaround provision outlined above will still be required for this scenario; and
4) the language concerning maintenance documents was modified, to indicate that the cited registration(s) has been or will be canceled under §8 or has expired or will expire under §9 (i.e., to highlight that the cancellation or expiration may, in fact, have already occurred.)
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(Updated 12/11/2007) Two New TEAS forms: In November 10, 2007, the USPTO plans to deploy two new TEAS forms: (1) Response to Suspension Inquiry or Letter of Suspension; and (2) Section 7 Request for Amendment or Correction of Registration Certificate.
The first will be listed under a new heading, namely, "File a Response Form," wherein three (3) different response options will be provided: the existing response to Office Action form and the Request for Reconsideration after Final Action form, and the new Response to Suspension Inquiry or Letter of Suspension form. The new Section 7 Request for Amendment or Correction of Registration Certificate form will be accessed from its own link on the front page of the TEAS site, after the existing heading of "File a POST-registration form or Renew an Existing Registered Mark."
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(Updated 08/01/2008) Filing requests to divide: While the USPTO had hoped to introduce request to divide functionality as part of the existing TEAS Allegation of Use form in 2008 (i.e., the specific ability to indicate which goods/services were being divided out, and making the appropriate fee payment for the divisional request),
existing Allegation of Use and Extension Requests forms in 2008, as well as a stand-alone request to divide form at a later point. In s enhancement has been delayed until early 2009: however, on or about August 9, 2008, a new version of the Allegation of Use form is scheduled to be deployed that will introduce expanded language that will specifically reference a request to divide. For example, the current version of the form indicates that an entire class is to be deleted. The new version will reference that the class is "either to be permanently deleted OR processed according to a separately filed Request to Divide."
The PTO still also plans to develop a stand-alone request to divide form at a later point. In the meantime, please note the following: Currently, if the applicant wants to file a post-NOA request to divide with a Statement of Use and extension request, it should be filed on paper. The extension request may first be filed through TEAS if the extension is for all goods/services in the application. If not, then all three documents should be filed on paper.
If the applicant is committed to doing this electronically, the applicant must 1) file the extension for all of the goods; 2) fax in a request to divide with the appropriate USPTO credit card authorization form; and 3) file the SOU wherein the goods not in use are deleted, with a specific statement inserted in the description of the specimen field that "A request to divide and extension request have been filed, and the goods are not being deleted, but simply divided."
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(Updated 08/08/2007) PDF files accepted: The USPTO now accepts both JPG and PDF files for specimens, evidence, foreign registration certificates, miscellaneous statements, consents, and handwritten pen-and-ink signatures within the following forms, as applicable: 1. all initial application forms (Principal Register, "regular" and TEAS Plus versions; Supplemental Register; Certification mark; Collective Membership mark; and Collective Trademark/Servicemark); 2. all Post Registration forms; and 3. Response to Office Action form. A reminder, however, that a mark image is only acceptable in the JPG format. The USPTO plans to continue to expand the functionality of all other forms to include the PDF option in the future.
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(Updated 04/19/2007) Post Registration forms: On March 3, 2007, the USPTO enhanced the functionality of all Post Registration forms, to display the heading of “U.S. Class” for registrations issued on the basis of applications filed on or before August 31, 1973 (currently, the forms improperly use the heading of “International Class,” whereas what is actually being displayed is the U.S. Class number). Also, as of March 22, 2007 the filing of these forms will automatically change both the "Attorney of Record" and "Correspondence Address" data fields in the USPTO's TARR database. I.e., it is no longer be necessary to file a separate “Appointment of Attorney” form or “Change of Correspondence Address” form to update those specific fields.
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(Updated 03/19/2007) Confirming signatory authority: On March 3, 2007, the USPTO modified the TEAS response to Office action form and the petition to revive for failure to submit a timely response to Office action form to require filers to check one of three options, indicating the nature of the signatory's authority to sign and submit the response. When an unauthorized person signs and submits a response to an Office action, the USPTO does not accept or consider the substance of the response.
The USPTO intended these new options to help filers recognize where a proposed signatory lacks authority, so as to prevent situations where the USPTO cannot accept and consider the substance of the response. Examples of unauthorized persons include the following:
- non-attorneys who lack authority under Rule 10.14 to practice before the USPTO in trademark cases, except as an applicant representing himself/herself;
- foreign attorneys who are not members of the bar of any U.S. state and who do not qualify under the limited exception for reciprocally recognized Canadian attorneys/agents under Rule 10.14(c); and
- attorneys who attempt to replace another attorney of record without the appropriate filings for the substitution of counsel.
By requiring the confirmations directly within the new signature options, the USPTO seeks to ensure the legitimacy and propriety of the responses submitted. See Examination Guide NO. 3-06 Representing an Applicant/Registrant Before the USPTO (November 13, 2006).
The USPTO acknowledges that the changes introduced on March 3rd generated some confusion and concern. As an initial matter, the USPTO notes that the language for the new signature options had been posted in full under "Upcoming Enhancements" since January 3, 2007. The USPTO received no comments prior to the March 3rd deployment, and therefore was surprised by the outcry over the new options upon their implementation. Based on feedback received, the USPTO plans to modify the language for the three (3) buttons in the response signature section within an up-coming deployment, currently planned for March 24th, 2007 (see further information, below).
However, the USPTO maintains that, when the options as currently posted are considered in their entirety, including the bold heading that is part of each option, they comprehensively address the appropriate signatory situations. In particular, many commenters have expressed concern that no option seemed to apply to an authorized U.S. attorney who has represented the applicant since the filing of the application. The proper option is #2, which reads: "Attorney - No Other Attorney Has Previously Appeared: I hereby confirm that I am either (1) an attorney who is a member in good standing of the bar of the highest court of a U.S. state; or (2) a Canadian attorney/agent who has been granted reciprocal recognition under 37 C.F.R. §10.14(c) by the USPTO's Office of Enrollment and Discipline. I further confirm that (1) the applicant has not previously been represented in this matter by an authorized attorney; and (2) I am the applicant’s attorney or an associate of that attorney."
In focusing solely on the confirmation that "the applicant has not previously been represented in this matter by an authorized attorney," the commenters seemed to overlook both that the statement for the second option is made under the heading "No Other Attorney Has Previously Appeared" (emphasis added), and that the only two choices that apply to attorneys are "New Attorney -- Change of Attorney Has Occurred" and "Attorney -- No Other Attorney Has Previously Appeared." In context, the selection of the second option, where no other attorney has previously appeared, is appropriate and truthful for an authorized U.S. attorney who has represented the applicant throughout.
In any event, in an effort to address the confusion and concern with the new options, the USPTO posted both on the "Important Notices" section of TEAS and on the "News and Notices" section of the USPTO website a Notice on March 8, 2007, namely, “Clarification of ROA Signature Options,”
which includes among its guidance the instruction that "If you are an authorized attorney, and either you or an associated attorney or firm have appeared in this matter (e.g., by filing the original application), and the applicant was not previously represented by any other authorized attorney or agent, you should select Option 2. Option 2 is also proper where another attorney who is a member of the firm is filing the response on behalf of the attorney of record." The USPTO also plans to publish clarifying information in a Notice in the Official Gazette, as some attorneys have expressed a desire that the clarification be memorialized more formally.
As part of a deployment currently planned for March 24, 2007, the USPTO will modify the language within the form as shown below. In the future, the USPTO plans to expand this approach to all other forms requiring a similar authorized signature.
O Unrepresented Applicant,: I hereby confirm that
- No authorized attorney or Canadian attorney/agent represents me in this matter, and that I am either (1) the applicant or (2) a person(s) with legal authority to bind the applicant; and
- If an authorized U.S. attorney or Canadian attorney/agent previously represented me in this matter, either I have filed a signed revocation of power of attorney with the USPTO or the USPTO has granted the request of my prior representative to withdraw.
ADVISORY: You may click this first button only if you are the applicant or legally authorized to bind the applicant, e.g., an officer of the applicant corporation or association, or a general partner of the applicant partnership. See TMEP §§712.01.
O Authorized U.S. Attorney: I hereby confirm that
- I am an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and
- I am currently the applicant’s attorney or an associate thereof; and
- To the best of my knowledge, if prior to my appointment another U.S. attorney or a Canadian attorney/agent not currently associated with my company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing me in this matter; or (4) the applicant’s appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing me as an associate attorney in this matter.
O Authorized Canadian Attorney/Agent: I hereby confirm that
- I am a Canadian attorney/agent who has been granted reciprocal recognition under 37 C.F.R. §10.14(c) by the USPTO’s Office of Enrollment and Discipline to represent Canadian applicants before the USPTO; and
- I am currently the applicant’s Canadian attorney/agent, or an associate thereof; and
- To the best of my knowledge, if prior to my appointment another Canadian attorney/agent or a U.S. attorney not currently associated with my company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing me in this matter; or (4) the applicant’s appointed Canadian attorney/agent or U.S. attorney has filed a power of attorney appointing me as an associate attorney in this matter.
ADVISORY: Foreign attorneys (other than authorized Canadian attorneys/agents) cannot sign this response and are prohibited from representing an applicant before the USPTO in trademark matters.
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(Updated 03/05/2007) Order of Goods/Services: On March 3, 2007, the USPTO changed the functionality of the Goods/Services portion of the Trademark/Servicemark application, Principal Register (both for the "regular" and TEAS Plus versions). Previously, when identifications were taken directly from the IDManual, the final “list” of goods and/or services was automatically re-ordered to display all entries alphabetically within each class. Now, alphabetization has been discontinued, so that the presented list appears exactly in the same order as the original entries made when first searching the IDManual to “build” the overall goods/services list, per class.
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(Updated 03/05/2007) Withdrawal of Attorney form: On March 3 2007, the USPTO enhanced the functionality of the Withdrawal of Attorney form, to permit use with either a pending application or for a registered mark; however, the form still only accepts entrance of a serial number; i.e., for a registered mark, you must still enter the original corresponding serial number; if unknown, you must determine by entering the registration number in Trademark Applications and Registrations Retrieval. Also, the grant of the withdrawal request will be stated only in the e-mail confirmation of receipt of the filing. You will no longer receive any separate paper confirmation of this grant from the USPTO Law Office Managing/Senior Attorney. If necessary, you should retain a copy of the e-mail acknowledgement for your records.
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