Precedential No. 6: Canadian Party Must Have a U.S. Attorney Despite Reciprocity, Says TTAB

In a three-page Order, the Board ruled that a party domiciled in Canada, despite the appearance of an authorized Canadian trademark attorney/agent on its behalf, must appoint a qualified attorney licensed to practice law in the United States, or in a commonwealth or territory of the United States. The Canadian attorney/agent may represent the petitioner before the Board, but a qualified U.S. attorney must also represent it and must file all documents in the proceeding. Cloudworks Consulting Services Inc. v. Ongoing Operations, LLC, 2020 USPQ2d 10019 (TTAB 2020) [precedential] (Yong Oh (Richard) Kim, Interlocutory Attorney).

On December 31, 2019, Petitioner Cloudworks, a Canadian corporation domiciled in Toronto, filed a petition for cancellation of a registration for the mark CLOUDWORKS & Design for various computer services, on the grounds of abandonment and fraud. The petition was signed by a Canadian attorney/agent "listed on the Office of Enrollment and Discipline’s roll of recognized Canadian Trademark Agents." [Currently, only Canadian attorneys and agents are reciprocally recognized under Rule 11.14(c)(1). Any representation must be limited to parties located in Canada.]

The USPTO amended its rules, effective August 3, 2019, to require that all applicants, registrants, or parties to a proceeding before the TTAB whose domicile is not within the United States or its territories, 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. See Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants, 84 Fed. Reg. 31498 (July 2, 2019), and Trademark Rule 2.11, 37 C.F.R. § 2.11; see also Patent and Trademark Rules 11.1 and 11.14, 37 C.F.R. §§ 11.1 and 11.14.

This requirement is not satisfied if a party, like Petitioner, is represented by a foreign attorney or agent, even if that attorney or agent has been granted reciprocal recognition by the USPTO pursuant to Patent and Trademark Rules 11.14(c) and (f), 37 C.F.R. §§ 11.14(c) and (f). A reciprocally recognized attorney or agent may only appear as an additionally appointed practitioner. A qualified attorney licensed to practice law in the United States, or in any Commonwealth or territory of the United States, must still be appointed as the party’s representative who will file documents with the Board and with whom the Board will correspond. See Patent and Trademark Rule 11.14(c)(2), 37 C.F.R. § 11.14(c)(2). [Emphasis in original]

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TTABlog comment: This rule applies to all TTAB proceedings, even those commenced prior to August 3, 2019, and it applies to pending applications and issued registrations.

Apparently a reciprocally recognized Canadian agent or attorney may take or defend depositions, present oral argument, and negotiate on behalf of a Canadian party. What else is left of reciprocity?

Text Copyright John L. Welch 2020.