Trademark Modernization Act of 2020: Part 4

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The fourth blog post in our continuing series on The Trademark Modernization Act of 2020 (TMA) comes on the heels of the July 19, 2021, deadline for the public to submit comments on the proposed rules. As discussed by our TCAM blog here, here, and here, the majority of the TMA is to take effect on December 27, 2021, with the flexible response period provisions following in 2022. This blog post highlights some of the proposed rules relating to attorney recognition, revocation, and withdrawal.

The Current and Proposed Rules

Under the current rules, attorney recognition at the USPTO automatically ends under § 2.17(g) when (1) a pending application matures into a registration; (2) ownership of a pending application changes; (3) a pending application is abandoned; (4) a registration for a mark expires or is cancelled; or (5) a post registration filing is accepted or finally rejected, if the attorney handled the post registration filing. Once attorney recognition has ended, the previously recognized attorney or a newly appearing attorney may be recognized as the attorney of record by signing a submission on behalf of the applicant or registrant or by being named as the attorney in a submission filed on behalf of the applicant.

Under the proposed rules, however, recognition of a qualified attorney would continue until the mark owner affirmatively revokes the appointment or the attorney withdraws from representation. Thus, attorney recognition will continue when ownership of an application changes, when an application is abandoned, when post-registration documents are  accepted, or when a registration expires or is cancelled. In order to recognize a new attorney under the proposed rules, the applicant or registrant will first be required to affirmatively revoke the original power of attorney, or the previous attorney would need to request to withdraw from representation. Further, when a practitioner has been mistakenly, falsely, or fraudulently designated as an attorney for an applicant or registrant, that practitioner will not be recognized.

The Justifications

Trademark practitioners may note that the USPTO already continues to correspond with a previously recognized attorney after a mark has registered, for example. Indeed, the justification for the proposed rules is, in part, to align the codified rules with current practice. Under the current rules, the USPTO should cease recognition of an attorney after a “recognition-ending” event, such as registration, and therefore should also stop sending correspondence to that attorney under § 2.18(a). However, this rule has not been followed, as the USPTO recognizes that most often the attorney is the intended recipient of correspondence such as renewal reminders.

Beyond codifying current practice, the proposed rules appear to be part of the larger strategy to curb the rise in fraudulent activity. As brand owners and practitioners are aware, the “U.S. Counsel” rule was implemented in 2019 in response to a rise in suspicious filings. Following that rule, further steps were taken to ensure that trademark files were only accessible by appropriate parties, such as implementing a MyUSPTO.gov login requirement and two-factor authentication. In this same vein, the proposed rules are a step toward the USPTO’s forthcoming identity-verification process, which will allow users to control and delegate access to trademark files. If the USPTO were to retain the current revocation rules (which, as discussed above, automatically terminate recognition under certain conditions), these forthcoming access controls would require the attorney to first request permission from the owner to take any action after any recognition-ending event — potentially resulting in delayed filings. Likewise, the new rules are intended to combat the transmission of fraudulent solicitations to applicants, with the USPTO taking the position that trademark attorneys may be in a better position to discern whether a particular piece of correspondence is legitimate, and the continuation of attorney recognition will allow attorneys of record to alert clients of potentially fraudulent correspondence.

Transition and Takeaways

To transition to the new rules, the USPTO plans to remove from its database the name, bar information, and docketing information of any attorney whose recognition has already ended under a recognition-ending event. However, that attorney’s correspondence information (including email address) will be retained so that relevant correspondence and notices can continue to be sent to both the formerly recognized attorney and the owner. The USPTO states that this removal is necessary “to proceed with its plans to implement updates to the TEAS login processes.” For an attorney to be “re-recognized” for a particular file, any one of the following can occur: (1) an attorney appointment consistent with § 2.17(c) can be filed; (2) the attorney can sign a document on behalf of an unrepresented applicant, registrant, or party to a proceeding; or (3) the attorney can appear by being identified as the attorney of record in a document submitted to the USPTO on behalf of an unrepresented applicant, registrant, or party to a proceeding.

Should these proposed revisions take effect, trademark practitioners should keep in mind that, once initiated, representations of trademark applicants and registrants will now continue until affirmative steps are taken to end those representations. Additionally, practitioners should ensure that they appropriately “re-recognize” themselves as attorneys of record, when applicable, during the transition period. In certain situations, “re-recognition” may require that attorneys of record obtain their clients’ signatures on new power-of-attorney forms. When receiving requests to sign new power-of-attorney forms for trademark applications or registrations, trademark owners should confirm that requests are from their attorneys of record and should be wary of potentially fraudulent solicitations.