US Trademark Counsel for Foreign Law Firms — Paid Consultation on Referred USPTO Matters
A paid consultation with Sherrod Seward, Esq. for law firms, trademark agents and in-house counsel outside the United States placing work before the USPTO.
The 2019 rule did not take foreign practitioners out of United States trademark matters. It changed who signs and who corresponds. Where an authorised foreign attorney or agent represents an applicant, registrant or party, the Federal Register rule is explicit that a qualified US attorney must also be appointed as the representative who files documents with the Office and with whom the Office corresponds. Additionally appointed, not appointed instead. You will leave the call knowing exactly what moves to US counsel on a referred file, what stays with you, and how to have that in writing before a matter is sent.
Prefer to speak to someone first? +1 (202) 999-3631
Request the consultation
Six fields. About a minute.
Bring the call one of these
- An office action has landed on a file for a client domiciled outside the United States.
- You file Madrid designations to the United States and want counsel in place before a refusal.
- You are holding a six-month priority window and need to know who is docketing it.
- A client of yours is facing an opposition or a cancellation before the Board.
- You want scope, conflicts and fees agreed in writing before any file moves.
Additionally appointed is the operative phrase
The Federal Register rule that introduced the requirement, at 84 FR 31498, provides that in any trademark matter where an authorised foreign attorney or agent is representing an applicant, registrant or party to a proceeding, a qualified US attorney must also be appointed as the representative who will file documents with the Office and with whom the Office will correspond. That sentence sets the shape of the whole relationship. What stays with the foreign firm: the client, the commercial strategy behind the mark, the home registration and any priority date running from it, clearance and enforcement outside the United States, and the instructions. What moves to US counsel: signing and filing, correspondence with the Office as the party's representative, United States office-action practice, and Board proceedings. The two things worth settling before a file moves are who holds the docket — in particular a six-month priority window or a refusal deadline — and whether the US firm will approach the client directly. Both are ordinary questions between firms, and much less ordinary to raise for the first time after a date has been missed.
How it runs
- Send the enquiryThe form below. Six fields, about a minute.
- Pay the consultation fee$500, on the firm's secure payment page. Credited in full against the fee for the engagement if this office is engaged on the matter.
- The consultationThe call itself. Bring the serial or registration number, anything the USPTO has sent, and the date printed on it — the live record and the paper govern, not a recollection.
- A written summaryWhat was decided, what the next step is, and the date it has to happen by.
Questions people actually ask
What do I actually get for the fee?
The $500 is the fee for the consultation itself and for the written summary that follows it. It is not a retainer, and it does not include drafting or filing a FOIA request, an administrative appeal, a licence application, a delisting petition, a federal court complaint, a trademark application, a response to a USPTO office action, or a post-registration maintenance filing - each of those is separately scoped and separately quoted. Government, agency and court filing fees, any agency search, review or duplication fees, and any USPTO filing fees, are not included and are payable to the government, not to this office. On a government contract matter it likewise does not include preparing or certifying a claim to a contracting officer, a request for equitable adjustment, a termination settlement proposal, an agency-level protest, a protest at the Government Accountability Office, an appeal to an agency board of contract appeals, or a complaint in the United States Court of Federal Claims - each of those is separately scoped and separately quoted.
Is this legal advice?
The consultation is. This page is not — it is general information about federal practice, and reading it creates no relationship with this office. Sending this form does not create an attorney-client relationship. No attorney-client relationship is formed until this office and you have signed a written engagement agreement.
Can you tell me what my chances are?
You will get a candid assessment of what your record supports and where it is thin, which is the useful version of that question. What you will not get is a percentage. Every matter is decided on its own record by a government officer or a judge, and prior results do not guarantee a similar outcome.
What happens if you cannot help?
You will be told so on the call, and told where the matter actually belongs. That happens often enough to be worth saying out loud.
Do we lose the client?
No, and the arrangement should say so in writing. On referred matters this office works to the referring firm: you stay on the correspondence, instructions come from you unless the client asks otherwise, and this office does not approach a referred client about work outside the referred matter without your agreement. If a different arrangement suits your firm better, say so at the outset and it goes in the engagement terms, which are agreed in writing before work begins.
We are Canadian agents. Where does that leave us?
Canadian trademark attorneys and agents who are reciprocally recognised by the USPTO's Office of Enrollment and Discipline may continue as additionally appointed practitioners, with the US-licensed attorney remaining the Office's correspondent. Canadian patent agents are in a different position and cannot represent Canadian trademark applicants under the current rule. Nothing is said here about reciprocal recognition for any other country: that position has not been verified, and a guess would be worse than the silence.
What is the US attorney actually taking responsibility for?
Signing, and what is signed. The rule was made against a background of inaccurate claims of use, and its stated purpose is to put submissions in front of the Office from practitioners subject to its disciplinary jurisdiction. A US firm that files whatever it is sent without asking about use, specimens or ownership is therefore the wrong partner for you, because that is the practice the rule was written to stop. Expect questions on a referred file; they are the point of the arrangement rather than friction in it.