TMEP 608.02: Individuals Excluded, Suspended, or Unauthorized to Practice Before the USPTO
October 2017 Edition of the TMEP
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608.02 Individuals Excluded, Suspended, or Unauthorized to Practice Before the USPTO
Occasionally, the Director of the USPTO suspends or excludes a particular individual from practice before the USPTO. 35 U.S.C. §32; 37 C.F.R. §11.56. A suspended or excluded individual is not a qualified practitioner and may not practice before the USPTO. See 37 C.F.R. §§2.17(a), 11.14, 11.58; TMEP §602. Notice of the suspension or exclusion is published in the Official Gazette and the decision is posted in the FOIA Reading Room https://e-foia.uspto.gov/Foia/OEDReadingRoom.jsp.
In addition, the USPTO may discover that a person who does not meet the requirements of 37 C.F.R. §11.14 is engaged in the deliberate or widespread unauthorized practice of representing applicants and registrants before the USPTO. In these cases, the Commissioner for Trademarks may exclude the party from participating as a signatory, correspondent, or domestic representative on behalf of others in any trademark matters before the USPTO. See 35 U.S.C. §§2, 3(b)(2)(A), 32. Exclusion orders issued by the Commissioner for Trademarks are listed at https://www.uspto.gov/trademark/trademark-updates-and-announcements/orders-issued-commissioner-trademarks.
When an individual has been suspended or excluded from practice before the USPTO, the Administrator for Trademark Policy and Procedure ("Administrator") will notify the USPTO staff accordingly. In addition, as appropriate, the USPTO may notify the affected applicants and registrants that:
- (1) The individual is not entitled to practice before the USPTO in trademark matters and, therefore, may not represent the applicant or registrant;
- (2) Any power of attorney is void ab initio;
- (3) The individual may not sign responses to Office actions, authorize examiner’s amendments or priority actions, conduct interviews with USPTO employees, or otherwise represent an applicant, registrant, or party to a proceeding before the Office; and
- (4) All correspondence concerning the application or registration will be sent to the domestic representative if appropriate, or, alternatively, to the applicant or registrant at its address of record.
The USPTO will change the correspondence address to that of the applicant, registrant, or domestic representative, as appropriate.
Generally, if an Office action was sent to the correspondence address of record before the relevant party’s suspension or exclusion and the action remains outstanding, the USPTO will not send the applicant or registrant a supplemental action restating the refusals or requirements. See TMEP §717.02 regarding non-receipt of Office actions.
When the Director of the USPTO or Commissioner for Trademarks has suspended or excluded a particular individual from practice before the USPTO, the USPTO will treat any submission signed by such individual as improperly signed and/or non-responsive. 37 C.F.R. §§2.17(a) and 11.14. If the examining attorney or Post Registration staff receives a response to an Office action signed by an excluded or suspended party, he or she must prepare a notice of incomplete response, addressed to the applicant or registrant, granting the applicant or registrant 30 days, or to the end of the response period set forth in the previous Office action, whichever is longer, to perfect the response, pursuant to 37 C.F.R. §2.65(a)(2). See TMEP §§611.05–611.05(c), 712.03, and 718.03(b) for further information.
Other submissions that will be treated as improperly signed and/or non-responsive include amendments alleging use, petitions to revive or to the Director, or responses to deficiency or inquiry letters issued by USPTO specialists, paralegals, or staff attorneys. See §TMEP 1104.01(a) regarding amendments alleging use, §1109.02 regarding statements of use, and §1705.07 regarding petitions.
USPTO employees must also notify the Administrator of the receipt of a document signed by an excluded or suspended individual, or any party who appears to be engaged in the deliberate or widespread unauthorized practice of law before the USPTO.