IP Law Daily, TRADEMARK—TTAB: Canadian petitioner must be represented by U.S. attorney, (Feb 24, 2020)

By Jody Coultas, J.D.

USPTO requires foreign petitioners to be represented by an attorney in good standing in at least one U.S. state or territory, rather than by a foreign attorney.

In an order designated as precedential, Canadian-based Cloudworks Consulting Services Inc. was given 30 days by the Trademark Trial and Appeal Board to appoint a U.S. attorney in order to continue with its petition to cancel a trademark held by Ongoing Operations, LLC. USPTO rules precluded Cloudworks from being represented solely by a Canadian attorney/agent (Cloudworks Consulting Services Inc. v. Ongoing Operations, LLC, February 21, 2020).

In August 2019, the U.S. Patent and Trademark Office amended its rules to require applicants, registrants, or parties to a proceeding before the Board whose domicile is not located within the United States or its territories to be represented by an attorney who is an active member in good standing of the bar of the highest court of a state in the United States, or the District of Columbia, or any Commonwealth or territory of the United States. This requirement is not met even if a foreign attorney has been granted reciprocal recognition by the USPTO. A reciprocally recognized attorney or agent may only appear as an additionally appointed practitioner.

In its proceedings before the Board, Cloudworks is represented by Canadian attorney/agent John H. Simpson. Simpson is listed on the Office of Enrollment and Discipline’s roll of recognized Canadian Trademark Agents. Cloudworks can appoint Simpson as an authorized representative before the USPTO, but must also appoint a qualified attorney licensed to practice law in the United States, or in any Commonwealth or territory of the United States, to represent it and file all documents with the Board in this proceeding.

Cloudworks has 30 days from the mailing date of the order to appoint an attorney in good standing in the U.S. If Cloudworks fails to appoint an appropriate attorney, the Board may issue an order to show cause why the petition for cancellation should not be dismissed.

This case is Cancellation No. 92073144.

Attorneys: John H. Simpson (Shift Law) for Cloudworks Consulting Services Inc. Robert B. Famiglio (Famiglio & Associates - CPA Firm) for Ongoing Operations, LLC.

Companies: Cloudworks Consulting Services Inc.; Ongoing Operations, LLC

Cases: Trademark USPTO