TMEP 607: Withdrawal of Attorney of Record

This is the October 2015 Edition of the TMEP

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607    Withdrawal of Attorney of Record

Previously set forth in 37 C.F.R. §10.40, the requirements for withdrawing as an attorney are now set forth in 37 C.F.R. §11.116. To withdraw from representation of another in trademark matters, the attorney must also comply with the permission and notification requirements set forth in Trademark Rule 2.19(b), 37 C.F.R. §2.19(b). See 37 C.F.R. §11.116(c) (stating that the “practitioner must comply with applicable law requiring notice to or permission of a tribunal when terminating a representation”); see also 37 C.F.R. §11.1 (defining “tribunal” to include “the Office”).

May Not Prejudice Applicant or Registrant. A qualified practitioner may withdraw from representing an applicant or registrant, but may not withdraw in a way that would prejudice the applicant or registrant. 37 C.F.R. §11.116(b). In re Legendary, Inc., 26 USPQ2d 1478 (Comm’r Pats. 1992) (denying the attorney’s request to withdraw where the request was filed on the last day of the period for response to an Office action and attorney stated neither that the applicant was given due notice of the attorney’s withdrawal from employment, nor that the attorney had delivered all documents and property in his file concerning the prosecution of the application to the applicant). See 37 C.F.R. §11.116 regarding mandatory and permissive withdrawal from representation by an attorney.

Form. To expedite processing, the USPTO recommends that all requests to withdraw be filed through TEAS, at http://www.uspto.gov. The TEAS form can be used to request withdrawal on any application or registration that is currently active. For registrations, the form requires entry of the original application serial number rather than the registration number. If filed on paper, the request should be titled “Request for Permission to Withdraw as Attorney of Record.”

Requirements for Request. A request to withdraw must include the following:

  • (1) A statement of the reason(s) for the request to withdraw;
  • (2) The application serial number or registration number; and
  • (3) Either of the following;
    • 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 USPTO; 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 or other filings that may be due, and of the deadline for the response or filing (see 37 C.F.R. §11.116(d)). In re Slack, 54 USPQ2d 1504 (Comm’r Pats. 2000); or
    • If there is more than one qualified practitioner of record, a statement that representation by co-counsel is ongoing.

37 C.F.R. §2.19(b). The request should also include the present mailing address of the practitioner who is withdrawing and the present mailing address of the applicant or registrant.

The requirement for a statement that the client was given notice of the withdrawal at least two months before the expiration of any outstanding response period does not apply where the practitioner states that his or her representation was terminated by the applicant/registrant when less than two months remained in the response period.

The request to withdraw should be filed soon after the practitioner notifies the applicant or registrant of his or her intent to withdraw. 37 C.F.R. §2.19(b).

These requirements apply to all requests to withdraw, whether withdrawal is mandatory or permissive. They also apply where a qualified practitioner was recognized by appearing in person or by filing a document on behalf of the party whom he or she represents. See 37 C.F.R. §2.17(b); TMEP §604.01.

Processing TEAS Requests. Requests to withdraw filed through TEAS are processed electronically, and generally are automatically granted if they meet the requirements listed above.

Processing Paper Requests. For paper filings, a request for permission to withdraw filed before registration will be handled by the appropriate managing attorney, or, if a notice of allowance has issued and the application is awaiting the filing of a statement of use, by the supervisor of the ITU/Divisional Unit. After registration, a paper request for permission to withdraw will be handled by the supervisor of the Post Registration Section.

The managing attorney or supervisor will approve or deny the paper request, notify the applicant or registrant and the practitioner of the approval or denial of the request, and place a copy of this notification in the record. If the request is approved, the managing attorney or supervisor should ensure that the correspondence address is changed in the USPTO’s Trademark database. It is the responsibility of the managing attorneys or supervisors to establish procedures that permit withdrawal requests to be given priority and acted on promptly.

For paper filings, if the practitioner who seeks to withdraw is also the domestic representative, the managing attorney or supervisor should inquire as to whether the practitioner intends to withdraw as domestic representative. This inquiry should be made by telephone or e-mail, if possible. If the practitioner withdraws as domestic representative, the managing attorney or supervisor must ensure that the “Domestic Representative” field in the USPTO’s Trademark database is updated.

Requests Filed After Registration. For purposes of recognition as a representative, the USPTO considers a power of attorney to end with registration. 37 C.F.R. §2.17(g)(1). If the power is filed in connection with an affidavit under §8, §12(c), §15, or §71, a §9 renewal application, or a §7 request, the power is deemed to end upon acceptance or final rejection of the filing. 37 C.F.R. §2.17(g)(2). TMEP §604.02.

After registration, if a practitioner appointed before registration files a paper request for permission to withdraw, the USPTO scans an image of the request into its Trademark database but does not update the attorney information unless the registrant concurrently takes a separate action such as filing an affidavit under §8. TMEP §1612. When a proper request to withdraw is filed through TEAS after registration, the request is automatically granted, and the data is automatically entered into the USPTO’s records. TMEP §§605.04, 1612.

Requests Filed in Abandoned Application. The USPTO will not process a request for permission to withdraw in an abandoned application. When a qualified practitioner files a request to withdraw in an abandoned application, the USPTO scans an image of the request into TICRS and TSDR but does not update the attorney information in its Trademark database. See TMEP §1612 regarding withdrawal after registration.

Board Proceedings. See TBMP §§116.02-116.05 regarding withdrawal as the representative of a party to a Board proceeding.