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Are There Laws or Regulations Pertaining to Who Can Provide Trademark Law Advice?

As a lawyer who often practices before the USPTO, I have been asked the question on occasion as to what qualifications a United States resident must possess to act as a trademark representative before said agency.  The answer, in brief, is that a trademark representative must be a licensed attorney or a person pleading or applying on behalf of himself.  The more detailed answer follows.

A non-lawyer, in general, may not act as representative before the USPTO.  See 37 C.F.R. §2.17(f).  Individuals who are not attorneys are not recognized to practice before the USPTO in trademark matters.  37 C.F.R. §11.14(b).  “Non-attorneys are not permitted to practice except under the limited circumstances specified in 37 C.F.R. §11.14(b)[.]”  TMEP §602.02.  These limited circumstances pertain to “individuals not attorneys who were recognized to practice before the Office in trademark matters under this chapter prior to January 1, 1957[.]”  The only other exception to the requirement that a person be a licensed attorney to handle any proceeding before the Office or practice before the Office is that a layperson is authorized to appear in a trademark matter on his or her own behalf, as opposed to on behalf of a client.  See 37 C.F.R. §11.14(e).

The Trademark Manual of Examining Procedure, as well as the Code of Federal Regulations, goes into detail as to what specifically constitutes unauthorized practice.  A layperson not only cannot file documents, make applications, prepare amendments, or conduct oppositions, but also cannot consult with or give advice to a client “in contemplation of filing a trademark application or other document with the Office[.]”  See 37 C.F.R. §11.5(b)(2).  Laypersons additionally cannot participate in the maintenance of a registration.  TMEP §608.01.

Federal laws and regulations have effectively limited the practice of trademark law, which is broadly construed, to licensed attorneys.  Non-attorneys recognized to practice before the USPTO prior to 1957 are biologically limited in number and, through no fault of their own, quickly becoming extinct.  Business advisors, consultants, accountants, marketers, copywriters, brand experts, logo designers, and webmasters are precluded from providing even ancillary trademark law counseling, specifically consulting with or giving advice to a client in contemplation of filing a trademark application or other document with the Office.  The only significant exception to the rule that U.S. residents must be licensed attorneys to provide trademark law counsel, advice, consultation, or legal services is that laypersons are authorized to handle trademark matters on behalf of themselves, as opposed to on behalf of a client.

Here at Kincaid Business & Entrepreneurial Law, LLC, we enjoy providing authorized trademark law services and appropriately serving as a resource to other professionals whose clients need them.  Please don’t hesitate to contact us if we can be of service to you or your clients.

Matthew T. Kincaid

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