What is a trademark Power of Attorney?
A trademark Power of Attorney (POA) is required in a trademark application under certain circumstances as discussed below. When required, only certain practitioners with proper authority may sign a POA. A trademark POA is not the same as thing as an appointment of a legal representative.
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When is a Power of Attorney not required in a pending trademark application?
Unrepresented trademark filers generally do not need to submit a Power of Attorney. In other words, a trademark power of attorney is not required when an applicant has not been represented by an attorney.
For example, a Power of Attorney would not be required in the following circumstances:
- Filing a new trademark application;
- Filing a Statement of Use or Amendment to Allege Use when there is no prior US attorney of record;
- Responding to an Office Action in Madrid-based application where there is no prior US attorney of record;
- Responding to an Office Action of a pro se applicant who filed the trademark application themselves.
Most international applicants who enter the US through an international Madrid Protocol trademark application are located outside the US and represented by foreign counsel. Such Madrid applicants would be considered previously unrepresented since their foreign attorneys would not be licensed to practice law in the US. Therefore, a US attorney may file a trademark Office Action response on behalf of such a Madrid applicant without having to first file a signed power of attorney.
When is a trademark Power of Attorney required?
A new POA is required when an applicant had a prior attorney representing them in the trademark application. Applicants formerly represented by a US attorney of record must sign a new Power of Attorney in order to revoke the prior attorney and appoint new counsel.
For example, if an applicant filed their trademark application with a first US attorney, but seeks to use a different attorney and firm to file an Office Action response, a new Power of Attorney would be necessary to revoke to replace the first attorney with the second attorney.
Once a new executed Power of Attorney has been filed to revoke a previous power, new counsel may immediately file an Office Action response. New counsel need not wait for the USPTO to process the new Power of Attorney before responding to the Office Action.
When does a trademark Power of Attorney end?
The duration of a Power of Attorney for a pending trademark application ends when the application is abandoned or registered, or when ownership changes [see TMEP 604.02 and 37 CFR 2.19(g)(1)]. Foreign trademark owners domiciled outside the US, however, must be represented by a US attorney for all post-registration filings, but the power terminates upon acceptance or final rejection of the post-registration filing.
Therefore, a new POA might not be required to renew a trademark registration. A new US attorney may represent the trademark owner in a post-registration filing by simply filing the next submission or renewal.
Who can sign a trademark Power of Attorney?
The USPTO has strict rules on who can sign a trademark Power of Attorney which differs from the standards for signing a verification or declaration. In particular, a trademark Power of Attorney may be signed only by the individual applicant/registrant or, if there is a company, by someone with legal authority to bind the company.
For companies, this means that the POA may only be signed by someone who has the authority to bind the company to any obligation or agreement. For a US corporation, the signatory should be an officer of the corporation or someone with authority to bind the company, and not an employee.
Can foreign companies and corporations sign a trademark POA?
For foreign companies, a POA for a US trademark application or registration may not be signed by a foreign attorney. Other examples of unauthorized signers may include a:
- person signing with an address of a foreign law firm;
- person who is not a US lawyer signing as “attorney for applicant” or “attorney at law”; or
- person signing as “authorized signatory” with no indication of the nature of signer’s relationship to the applicant or registrant
How is a POA different from a trademark declaration or verification?
A looser standard applies to authorized signers of trademark declarations and verifications, such as a new trademark application or a Statement of Use. Any of the following three categories of signatories may sign a trademark declaration or verification:
- person with legal authority to bind the owner (i.e., same as the only person who can sign a POA);
- person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; or
- a US attorney.
Therefore, a trademark declaration allows for two additional categories of signers beyond sole group allowed to sign a Power of Attorney, i.e., signers with authority to bind the owner.
What is a legal representative or attorney of record?
A legal representative or attorney of record is a US attorney who has taken some prior action in the trademark file. For example, it may have been the original US lawyer who filed the trademark application or an Office Action response. Whenever a trademark filing has a US attorney of record, a Power of Attorney will be required if a new attorney from a different law firm seeks to file anything on behalf of the trademark owner.
How does a TM POA differ from an appointment of a domestic representative?
A domestic representative acts as an agent for service of process if and when a legal action is brought against a trademark application or registration. Copies of documents, such as a TTAB complaint for opposition or cancellation, must then be served on the domestic representative. The designation of a domestic representative is optional.
If appointed, a designation of domestic representative remains in effect unless revoked, withdrawn or replaced by appointment of a new domestic representative.
Trademark owners outside the US are encouraged by the USPTO to designate domestic representatives for their US trademark filings [see TMEP 610].
