US trademark practitioners are familiar with 37 CFR § 2.17(g), which says:
Duration of power of attorney.
- For purposes of recognition as a representative, the Office considers a power of attorney filed while an application is pending to end when the mark registers, when ownership changes, or when the application is abandoned.
- The Office considers a power of attorney filed after registration to end when the mark is cancelled or expired, or when ownership changes. If the power was filed in connection with an affidavit under section 8, 12(c), 15 or 71 of the Trademark Act, renewal application under section 9 of the Act, or request for amendment or correction under section 7 of the Act, the power is deemed to end upon acceptance or final rejection of the filing.
Where exactly did this Rule come from? Whose idea was it? I had always assumed that I knew where it came from, but recently I actually looked at the history of the Rule and I now think I was probably wrong in my assumption. Maybe you know where exactly this Rule came from, in which case please post a comment below.
I had always assumed that this Rule came into existence because one or more law firms with trademark practices with large numbers of trademark clients pressured the USPTO to enact the Rule. What I imagined is that such law firms would prefer to have a presumption that the client relationships are merely transactional rather than ongoing. Such a presumption might be thought to reduce the need for conflict checks, for example.
Just now I did a bit of archaeology to try to figure out where exactly the Rule came from. It turns out that the rule was promulgated in a Federal Register notice dated October 26, 2009 (Changes in Requirements for Signature of Documents, Recognition of Representatives, and Establishing and Changing the Correspondence Address in Trademark Cases, 74 FR 54898). That Notice promulgated rules after a Notice of Proposed Rulemaking dated August 14, 2008 (Changes to Representation of Others Before the United States Patent and Trademark Office, 73 FR 47649).
The Notice of Proposed Rulemaking came not from the Commissioner for Patents or the Commissioner for Trademarks but from the Office of the Enrollment and Discipline. Yes, Harry Moatz. The old-timers among us will recall Harry Moatz. We would all sit in the audience at some professional meeting when he was speaking and he would talk about the possibility of maybe disbarring some patent or trademark practitioners.
And he would smile. I recall more than once being in an audience when I felt it to be a very odd and disturbing smile.
But I digress.
Anyway the NPRM happened on August 14, 2008, supposedly giving proper notice under the Administrative Procedure Act of what the Final Rules might say.
The Final Rules dated October 26, 2009 included the brand-new 37 CFR § 2.17(g) that did not appear anywhere in the Notice of Proposed Rulemaking dated August 14, 2008. I leave it as an exercise for the reader to determine whether this is a direct violation of the Administrative Procedure Act that we all were required to study in law school.
The Notice is completely silent on where this language came from, other than to mention TMEP § 602.01. I suppose what might have happened here is that someone at the USPTO got the idea of folding into the Rules what was previously set forth in the TMEP, namely at TMEP § 602.01. I looked up the oldest version of the TMEP that is available online, which is the fourth edition dated April 2005. In that edition of the TMEP, section 602.01 says:
The USPTO considers a power of attorney to end with respect to a particular application when the mark is registered, when ownership changes, or when the application is abandoned.
So this is sort of, kind of, a precursor to what we now know as 37 CFR § 2.17(g).
If you go back and read the Notice of Proposed Rulemaking dated August 14, 2008, what leaps out as I say is that this was not the Commissioner for Trademarks proposing some rules change. It was Harry Moatz, the Director of the Office of Enrollment and Discipline. Most of the NPRM and most of the Final Rule was focused on patents. Only about one-tenth of the text was connected with trademarks.
Anyway given that the rulemaking came from OED and not from the Office of the Commissioner for Trademarks, I have no choice but to revise my guess about what was going on with 37 CFR § 2.17(g). I think I have no choice but to consider that the choice to slip in the new 37 CFR § 2.17(g) (in what I think might have been a violation of the APA) was really not at all tied to some wish of attorneys but was instead a sort of side effect of goals of the OED.
The idea, I am guessing, might have been to try to put bounds on the range of situations where OED is required to attempt to supervise the behavior of trademark attorneys. If the USPTO can take the position that some event has caused the attorney-client relationship to cease to exist, then the occurrence of that event has the welcome result of cutting off the need for the OED to supervise the attorney’s behavior after that event has occurred. The events being, I guess, the grant of a trademark registration, or the end of a renewal process. In other words, maybe the brand-new 37 CFR § 2.17(g) was not at all designed to benefit trademark firms, but maybe it was designed to reduce the potential workload for the people of the Office of Enrollment and Discipline.
Part of what is going on here is that maybe 90% of the ink spilled in the Notice of Proposed Rulemaking dated August 14, 2008, and maybe 90% of the ink spilled in the promulgation of the rules on October 26, 2009, was directed to patents, patents, and patents. And in any event very little or none of this (apparently) came from the Commissioner for Trademarks. Nearly all of it, apparently, came from Harry Moatz and the Office of Enrollment and Discipline. But the ten percent of the ink spilled was, maybe, directed to reducing the workload on the OED, rather than furthering some aims of some law firms as I had imagined.
So now in 2020 what is in play is that quite a few very thoughtful trademark practitioners are discussing whether to ask the Trademark Office to scrap this rule. Some trademark practitioners feel that the way to figure out whether or not the attorney-client relationship has ceased would be by looking at the retainer letter signed by the client. Some trademark practitioners feel that it no business of the Trademark Office to presume to know or to presume to dictate when the attorney-client relationship ends.
This is not an idle topic to talk about, for the simple reason that the Acting Commissioner for Trademarks has made clear (see blog article and letter) that the Trademark Office has no intention of lifting a finger to send postal mail to an applicant or registrant if a single attempt to send an email message somehow fails. As may be seen in the letter from the Acting Commissioner,
The USPTO will not mail correspondence to a postal address when we do not have a valid email address for the owner.
It seems to me that regardless of whether or not the event of the mailing of a certificate of registration happens, the Trademark Office ought to at least lift a finger to send emails to the email addresses that are of record in a trademark file.
It should be recognized that under present USPTO procedures, the USPTO publishes any and all trademark applicant and trademark registrant email addresses in the “documents” tab of TSDR. As such, it may be safely assumed that dozens or maybe hundreds of spams and deceptive solicitations will be sent to that trademark owner email address as listed in the “documents” tab of TSDR. As such, it would not at all be a surprise if the trademark owner would have long since dismissed that email address as a waste of time to check regularly.
It is, I suggest, disingenuous to say that what needs to happen is the applicant somehow setting up some “filter” that will successully distinguish between bona fide emails from the USPTO and deceptive mails designed to trick the recipient. Any time that such an intermediate processing step is injected into a workflow, there is a risk that the hosting service provider will get something wrong.
Consider the case where somebody files a Petition to Cancel against a granted US trademark registration. If the USPTO were to “play dumb” and send email only to the “owner email address” in that field, then maybe the result would be that a default would get entered for no good reason. After all, the owner would have previously received 99 spams and spearphishing emails and would be unlikely to suddenly appreciate that a hundredth email might actually be important.
What needs to happen is of course that when the USPTO decides that there is some reason to communicate something important to a trademark registrant, the USPTO ought to send email to any and all means of communication available to the USPTO, including but not limited to any and all email addresses that have been made of record in the official file. The USPTO ought not to be able to use 37 CFR § 2.17(g) as an excuse to play dumb and pretend that there is no reason to include the attorney email as one of the places to send, for example, a notice of a cancellation petition.
I am aware of some trademark practitioners whose view is that the Trademark Office ought to scrap 37 CFR § 2.17(g). These trademark practitioners hold the view that it is inappropriate for the Trademark Office to presume that it somehow knows better than the client and the attorney know the duration and status of their attorney-client relationship.
Consider, after all, that any attorney who actively wants the relationship to end because of the occurrence of some event can always make it so by the simple step of saying so in the retainer letter with the client. If the attorney wants the attorney-client relationship to terminate with the grant of a registration, or due to the arrival of a month that contains the letter “R”, the attorney can always simply say so in the retainer letter. It seems inappropriate to me for the attorney to charge a client with knowledge of 37 CFR § 2.17(g) as the way that a client would learn when their relationship with their attorney comes to an end. It seems to me much better for the attorney to come out and say it directly in the retainer letter.
What do you think? Should practitioners ask the USPTO to scrap 37 CFR § 2.17(g)?