(10) the signature of the party submitting the document. In addition, the cover sheet should indicate the entity of the conveying party and the relevant entity information for the receiving party (e.g., the citizenship of individuals). The Office cover sheet form includes spaces for this information. If not accompanied by a completed cover sheet, a document submitted for recording and any incomplete cover sheet will be returned for proper completion of a cover sheet and resubmission of the document and completed cover sheet (see 37 C.F.R. §3.51; TMEP $503.03). 37 C.F.R. §3.28. 503.06 Correction of Errors in Cover Sheet or Recorded Document During the recording process, the Office will check to see that a trademark cover sheet is complete but will not compare the cover sheet with the original documents. When a submitter discovers an obvious error on the recorded cover sheet, the Office will consider a request to correct the error when it receives (1) the originally recorded document (or a copy of the originally recorded document); (2) a corrected cover sheet; and (3) the appropriate fee for each property to be corrected. 37 C.F.R. §3.34. The Office will then compare the cover sheet with the document to determine whether the error is apparent on its face. If the error is obvious, the corrected cover sheet will be recorded and the respective Office records corrected. If the error is not obvious (e.g., there is an error in the recorded document rather than in the cover sheet), the procedures for correcting errors in recorded documents set forth in In re Abacab International Computers Ltd., 21 USPQ2d 1078 (Comm'r Pats. 1987), on reconsideration, 21 USPQ2d 1079 (Comm'r Pats. 1988), govern. These procedures require that the party responsible for an erroneous document (e.g., the assignor) either draft and record a new document or make corrections to the original document and re-record it. If an assignor is no longer available to correct an original document or execute a new one, the assignee may submit an affidavit to that effect in which the assignee also sets forth the requested correction. The affidavit must be accompanied by the original papers which were recorded (or a copy of the originally recorded papers), a cover sheet (see 37 C.F.R. §§3.28 and 3.31) and the appropriate fee for each property to be corrected (see 37 C.F.R. §§2.6 and 3.41). Submitters may also petition under 37 C.F.R. §2.146 for other corrections. When brought to the attention of the Office, typographical errors made by the Office will be corrected. 503.07 Indexing Against Recorded Document Once a document is recorded in the Assignment Division in connection with a trademark registration and/or application, additional trademark registration numbers or application serial numbers may be submitted later for "indexing" or "cross-referencing" against the previously recorded document. However, patent numbers and patent application numbers may not be indexed against a document which was recorded only in connection with trademarks. A party that wishes to have additional registration numbers and/or application serial numbers indexed against a recorded document must submit the following to the Assignment Division: (1) the originally recorded papers on which the Assignment Division has stamped the reel and frame numbers at which they are recorded, or a copy of such papers; (2) a completed cover sheet (see 37 C.F.R. §3.31; TMEP §503.05(d)) which indicates that indexing is requested and includes each registration number and application serial number to be indexed against the recorded document; and (3) the appropriate fee (see 37 C.F.R. §§2.6 and 3.41). 503.08 Accessibility of Assignment Records Extract from 15 U.S.C. $1060. A separate record of assignments submitted for recording hereunder shall be maintained in the Patent and Trademark Office. The Assignment Division of the Patent and Trademark Office maintains separate records for patents and trademarks. 15 U.S.C. §1060; 37 C.F.R. §1.12(a)(1). Assignments relating to applications for registration of trademarks as well as those relating to registrations of trademarks are open to public inspection, upon recordation in the Assignment Division. Prior to 1955, documents were recorded in bound volumes. The location of documents in these volumes is designated by "liber and page," that is, by the number of the book (liber) and the number of the page in the book. Beginning with 1955, documents were recorded on microfilm, and are available for immediate inspection in the Trademark Assignment Search Room. The location of these documents is designated by "reel and frame," that is, by the number of the reel on which they are microfilmed and the number of the frame on the reel. All assignment records related to pre-1955 trademark records were transferred to the National Archives and Records Administration (NARA) during 1990. trademark assignments recorded on or after January 1, All 1955, continue to be maintained by the Patent and Trademark Office. All trademark assignment records from 1837 to December 31, 1954, are now maintained and are open for public inspection in the National Archives Research Room located at the Washington National Records Center Building, 4205 Suitland Road, Suitland, Maryland 20746. Assignments recorded before 1837 are maintained at the National Archives and Records Administration, 841 South Pickett Street, Alexandria, Virginia 22304. Copies of assignments or other documents recorded on or after January 1, 1955, may be ordered from the Patent and Trademark Office upon payment of the prescribed fee. See 37 C.F.R. §2.6. An order for a copy of an assignment or other document should identify the reel and frame at which it is recorded in the Assignment Division. If the correct reel and frame numbers are not identified (e.g., the order identifies the document only by the name of the registrant and the number of the registration, or by the name of the applicant and the serial number of the application), the Office will charge an additional fee for the time spent in making a search for the document. Requests for copies of pre-1955 records for trademarks should be directed to NARA since those records are not maintained by the Patent and Trademark Office. Payment of the fees required by NARA should accompany all requests for copies. §1.12(a)(2). 503.08(a) Abstracts of Title See 37 C.F.R. Upon payment of the required fee, members of the public may obtain abstracts of title to particular registrations or applications from the Assignment Division. See 37 C.F.R. §2.6; 1140 TMOG 65, 66 (July 28, 1992). 503.09 Procedures for Entering Assignments and Changes of Name in Application Record In addition to recording documents and cover sheets on microfilm, the Assignment Division enters data in an automated system. A report entitled "Trademark Title Report" includes a record of all assignments or other documents recorded with respect to an application. A trademark title report will be sent to the application location after an assignment or other document is recorded. The report should be matched with the relevant application file and placed on the left side of the file over the drawing. The serial number of the relevant application appears on the left side of the page. All previous title reports should be retained in the file. The name of a new owner or the new name of an applicant may be entered on an application file wrapper and in the automated application record only after a trademark title report indicating the assignment or change of name is placed in the application file. The applications examiner should enter the relevant information from the report on the front of the file wrapper. The text editor should then enter the information in the data base. Information relating to documents recorded in the Assignment Division may also be accessed through the Office's automated Trademark Reporting and Monitoring (TRAM) System. If the applicant advises the examining attorney or the examining attorney learns through some other source that an assignment has been recorded and no trademark title report has been received, the examining attorney should consult the Trademark Reporting and Monitoring (TRAM) records. relevant information is present in TRAM, the examining If the attorney should request that the applications examiner print out all title information relevant to that serial number. The printout should then be used in place of the title report and the case processed as indicated above. 500-8 The owner of a trademark may file and prosecute his or her own application for registration of the mark, or he or she may be represented by an attorney or other individual authorized to practice before the Patent and Trademark Office in trademark cases. 37 C.F.R. §§2.11 and 10.14. In the latter case, the Office will only communicate with the representative, unless that representation is terminated without replacement. If the applicant contacts the Office with respect to the application, the applicant will be advised that the Office will only discuss the matter with applicant's representative. 601.01 Office Cannot Aid in Selection of Attorney If it is apparent that the applicant is unfamiliar with the proper preparation and prosecution of an application and needs more detailed or technical assistance than the examining attorney is justified in giving, the examining attorney may suggest to the applicant that it may be desirable to employ an attorney who is familiar with trademark matters. The examining attorney may not recommend any particular attorney. The following language is suggested for incorporation in the Office. action: The applicant may wish to hire a trademark attorney because of the technicalities involved in the application. The Patent and Trademark Office cannot aid in the selection of an attorney. See 37 C.F.R. §2.11. 602 Persons Who May Practice Before Office in Trademark Matters 37 CFR §10.14. Individuals who may practice before the Office in trademark and other non-patent cases. (a) Attorneys. Any individual who is an attorney may represent others before the Office in trademark and other non-patent cases. An attorney is not required to apply for registration or recognition to practice before the Office in trademark and other non-patent cases. (b) Non-lawyers. Individuals who are not attorneys are not recognized to practice before the Office in trademark and other non-patent cases, except that individuals not attorneys who were recognized to practice before the Office in trademark cases under this chapter prior to January 1, 1957, will be recognized as agents to continue practice before the Office in trademark cases. (c) Foreigners. Any foreign attorney or agent not a resident of the United States who shall prove to the satisfaction of the Director that he or she is registered or in good standing before the patent or trademark office of the country in which he or she resides and practices, may be recognized for the limited purpose of representing parties located in such country before the Office in the presentation and prosecution of trademark cases, provided: the patent or trademark office of such country allows substantially reciprocal privileges to those permitted to practice in trademark cases before the United States Patent and Trademark Office. Recognition under this paragraph shall continue only during the period that the conditions specified in this paragraph obtain. (d) Recognition of any individual under this section shall not be construed as sanctioning or authorizing the performance of any act regarded in the jurisdiction where performed as the unauthorized practice of law. (e) No individual other than those specified in paragraphs (a), (b), and (c) of this section will be permitted to practice before the Office in trademark cases. Any individual may appear in a trademark or other non-patent case in his or her own behalf. Any individual may appear in a trademark case for (1) a firm of which he or she is a member or (2) a corporation or association of which he or No application for recognition to practice (ie., to represent others) in trademark cases before the Office is necessary. The Office gives no examination for eligibility to practice in trademark cases, nor does it maintain a register of persons entitled to practice in connection with trademark cases. Attorneys may practice before the Patent and Trademark Office in connection with trademark matters on the basis of their being attorneys at law. Only individuals, not law firms, are entitled to be recognized to represent others. Attorneys representing a party in a matter before the Office, who are not listed on the firm letterhead or who have not specifically been mentioned in either a power of attorney or in correspondence filed with the Office, may discuss but not conclude business with the Office over the telephone, except if such attorney claims to be authorized by an attorney of record to conduct discussions with respect to a specific application. In such a case, the examining attorney will note this fact in any resulting Office action. Where an applicant is represented by counsel, the Office encourages the practice of direct communication with the appointed attorney(s). While paralegals and legal assistants may convey information between the examining attorney and the appointed attorney(s), they are not authorized to conduct business before the Office. See 37 C.F.R. §10.14(b). For example, the Office cannot accept responses to Office actions that are signed by legal assistants or paralegals, nor may the Office issue examiner's amendments or priority actions based solely on telephone conversations with paralegals or legal assistants. Paralegals and legal assistants are not authorized to negotiate, argue a position, officially accept or reject Office requirements, or otherwise prosecute a matter before the Office. Non-lawyers are not permitted to practice except under particular circumstances as specified in 37 C.F.R. $10.14(b). Use of the term "agent" in connection with a representative in a trademark case is only appropriate under the limited circumstances specified in 37 C.F.R. $10.14(b). attorney from the applicant to an attorney ("A") has been filed, and thereafter another attorney or other authorized representative ("B") responds on behalf of the applicant and requests that correspondence be sent to B, B will be required to submit authorization from the applicant for the requested change in correspondence address. Correspondence will continue to be sent to A until B submits the necessary authorization from the applicant. If an attorney at law files a power of attorney from the party he or she represents, the Office will accept such power; however, to be acceptable as a power of attorney, the power must identify an individual attorney or individual attorneys by their names, not merely specify the name of a firm of attorneys. The Office will not regard a power which specifies the name of a firm of attorneys as a power; the Office will treat it merely as a mailing address and a direction that correspondence be sent to the designated firm at its address. See TMEP §603. 602.02 Standards of Conduct 37 CFR §10.15. Refusal to recognize a practitioner. Any practitioner authorized to appear before the Office may be suspended or excluded in accordance with the provisions of this part. Any practitioner who is suspended or excluded under this subpart or removed under section 10.11(b) shall not be entitled to practice before the Office. 37 CFR $10.20. Canons and Disciplinary Rules. (a) Canons are set out in §§10.21, 10.30, 10.46, 10.56, 10.61, 10.76, 10.83, 10.100, and 10.110. statements of axiomatic norms, expressing in general terms Canons are the standards of professional conduct expected of practitioners in their relationships with the public, with the legal system, and with the legal profession. (b) Disciplinary Rules are set out in §§10.22 10.24, 10.31 - 10.40, 10.47 - 10.57, 10.62 - 10.68, 10.77, 10.78, 10.84, 10.85, 10.87 - 10.89, 10.92, 10.93, 10.101 - 10.103, 10.111, and 10.112. Disciplinary Rules are mandatory in character and state the minimum level of conduct below which no practitioner can fall without being subjected to disciplinary action. Part 10 of Title 37 of the Code of Federal Regulations deals with representation of others before the Patent and Trademark Office. It establishes an Office of Enrollment and Discipline; it identifies and defines individuals entitled to practice before the Patent and Trademark Office; it establishes a Patent and Trademark Office Mandatory Code of Professional Responsibility, and it defines a procedure for investigations and disciplinary proceedings. 600-2 602.02(a) Signature and Certificate of Attorney 37 CFR $10.18. Signature and certificate of practitioner. (a) Every paper filed by a practitioner representing an applicant or party to a proceeding in the Office must bear the signature of, and be personally signed by, such practitioner except those papers which are required to be signed by the applicant or party. The signature of practitioner to a paper filed by him or her, constitutes a certificate that: (1) the paper has been read by the practitioner; (3) to the best of his or her knowledge, information, and belief, there is good ground to support the paper, including any allegations of improper conduct contained or alleged therein; and (4) it is not interposed for delay. 37 CFR §2.19(a). Revocation of power of attorney or of other authorization to represent. Authority to represent an applicant or a party to a proceeding may be revoked at any stage in the proceedings of a case upon notification to the Commissioner; and when it is so revoked, the Office will communicate directly with the applicant or party to the proceeding or with such other qualified person as may be authorized. The Patent and Trademark Office will notify the person affected of the revocation of his or her authorization. If a proper written power of attorney has been filed in a trademark application, the applicant may revoke it by a written revocation and, in such event, the Office will acknowledge the revocation and will not thereafter recognize such attorney in that case unless he is again specifically appointed. Where a power of attorney has been filed, a change in representation cannot be made except by an action which is signed by the applicant. If the action consists of a new power of attorney, the address contained in the new power of attorney will become the address of record for correspondence purposes. If the action is a revocation of the previous power of attorney, correspondence will be sent either to (a) the applicant or (b) the attorney(s) signing the cover letter or action accompanying the revocation. See TMEP §603. If no power of attorney is on file, a change in representation can be made by an action which is (1) signed either by an attorney, an agent duly qualified under Rule 10.14(b), or a foreign attorney or agent duly qualified under Rule 10.14(c) and (2) which includes a request to change the address for correspondence. Since the Office presumes that papers filed by practitioners are authorized to be filed, such written requests to change the correspondence address will be entered without requiring other written authorization signed by the applicant. See Trademark Rule 10.18. In the above-mentioned ways, decisions as to representation, which are the responsibility of the applicant and his or her attorney or other representative, are conveyed to the Office generally without any required action by the Office. See TMEP §603. An attorney at law or other representative can withdraw from representation of an applicant in an application, but should not withdraw in a manner which would prejudice the applicant. See TMEP §602.03(a). 602.03(a) Permissive Withdrawal of Attorney of Record 37 CFR $2.19(b). An individual authorized to represent an applicant or party in a trademark case may withdraw upon application to and approval by the Commissioner. An attorney or other representative can withdraw from representation of an applicant in a trademark application, but should not do so in a manner which would prejudice the applicant. See 37 C.F.R. §10.40 concerning mandatory and permissive withdrawal from employment by an attorney. The appropriate managing attorney will consider a notice of withdrawal which is filed by the attorney or attorneys of record. A request for permission to withdraw as attorney shall include the following: 1. A statement of the reason(s) for the request of withdrawal. See 37 C.F.R. §10.40. 2. A statement that the attorney has given due notice to the applicant of his or her withdrawal from employment. See In re Legendary, Inc., USPQ2d |