The Post-Registration “Representation Gap” at the USPTO

By Tracey Truitt, Shareholder, Sandberg Phoenix

Owners of registered trademarks who engaged attorneys to file and prosecute their applications may be surprised to learn that, after registration, they must re-appoint their attorneys with the USPTO if they want counsel to receive all registration-related notices. The USPTO draws a bright procedural line at registration: under 37 C.F.R. § 2.17(g), recognition of a power of attorney filed during prosecution ends upon registration, abandonment, or other terminating events. This rule does not dissolve the attorney-client relationship as a matter of contract or ethics, but it does end USPTO recognition for the application proceeding. Post-registration matters, including cancellation proceedings, are treated as distinct proceedings requiring a separate establishment of representation.

TMEP § 604.02 states that recognition during an application ends at registration, and TMEP § 604.03 clarifies that the Office will not treat prosecution counsel as the registrant’s recognized representative unless and until a new appointment is made for post-registration matters. Consequently, correspondence is no longer presumptively directed to prosecution counsel after registration. This change is not merely formal; it determines whom the USPTO recognizes and contacts to respond to legally operative communications.

Practically, once a registration issues, the USPTO’s position is that the registrant is unrepresented for post-registration purposes unless a post-registration power of attorney or a Change Address or Representation (CAR) form is filed. While USPTO systems may still display attorney metadata or send courtesy reminders to legacy emails, such residual contact is not legal recognition. As TMEP §§ 604.02–604.03 make clear, receipt of correspondence is not equivalent to recognition of representation.

Post-registration filings, such as § 8 or § 71 declarations, § 9 renewals, or § 7 correction requests, can reestablish recognition, but only for the specific post-registration proceeding involved. A newly retained attorney cannot act in such matters without proper appointment, and if no recognized representative exists, the Office will correspond directly with the registrant. See 37 C.F.R. §§ 2.17(g), 2.193(e)(2); TMEP § 604.03.

In short, registration marks a procedural reset for USPTO recognition unless the owner affirmatively designates counsel for the registration lifecycle.

This framework operates amid widespread trademark-related fraud. The USPTO has repeatedly warned of false solicitations, spoofed calls, phony invoices, and Office impersonation, activity that often intensifies after registration. Attorneys routinely advise clients to be hypervigilant and to contact counsel about any demand to pay a fee or take action. Unfortunately, once registration issues, the registrant, rather than prosecution counsel, is often the primary and only recipient of USPTO and TTAB communications. While the recognition framework does not cause scams, it can exacerbate confusion by routing critical process to owners already inundated with deceptive mail.

The risk is concrete. A TTAB Petition to Cancel, where a third party has requested that your registration be cancelled, is served through official channels, triggers strict deadlines and requires an answer to avoid default. Failure to respond can result in default judgment within those strict timelines and loss of the registration. When such notices are sent directly to registrants, there is a real possibility they will be misidentified as scam correspondence and disregarded.

Two features of the current framework heighten this vulnerability. First, the end of recognition is automatic. It does not reflect an informed client decision to terminate counsel and does not require any ownership or engagement change. Owners may reasonably but mistakenly assume that their prosecution attorney continues to receive and monitor official notices. Second, under TMEP § 609.01, the USPTO generally follows a no-double-correspondence principle. Absent recognized representation, the Office presumes the registrant alone will receive and act on formal communications. This promotes administrative clarity but leaves no redundancy precisely when scam traffic peaks.

These dynamics disproportionately affect small businesses and individuals, common targets and victims of trademark scams. They often lack the experience to triage TTAB institution orders or post-registration Office actions. The USPTO advises owners to verify deadlines in official systems and to contact the Trademark Assistance Center regarding questionable communications. It also sends courtesy renewal reminders to all emails of record. These safeguards are helpful but expressly non-binding and do not substitute for notice to trained counsel when high-stakes legal process, like a Petition to Cancel, is initiated.

Measured adjustments could reduce registrant harm without undermining autonomy or procedural clarity. Examples include:

• An opt-in continuing-representation designation at or before registration that preserves recognition for receipt of post-registration notices until revoked.
• A narrow exception to the no-double-correspondence rule permitting parallel notification to last-recognized counsel for TTAB petitions, Board orders, and post-registration refusals, without conferring authority to act.
• A CAR-based notification toggle that carries counsel forward for notice purposes only, distinct from authority to file or respond.

Each approach would reduce the risk that registrants mistake legitimate process for junk mail while respecting changes in ownership and counsel. The proposed solution to file a CAR upon registration has limits. A CAR filing governs recognition before the USPTO, not representation in every possible trademark dispute. TTAB proceedings are separate adversarial matters, and recognition in a TTAB case typically requires that counsel be named or appear in that specific proceeding. While a CAR filing aligns contact information and reduces the likelihood that a registrant alone will receive critical notices, it does not substitute for a formal appearance once a TTAB case is instituted.

Until such refinements are adopted, the burden lies with owners and their advisors. Best practices include promptly filing a CAR form or post-registration power of attorney upon registration, ensuring accurate owner and attorney email addresses are of record, and monitoring TSDR and TTABVUE regularly. Foreign-domiciled owners should maintain U.S. counsel for USPTO practice. Finally, counsel should proactively warn clients that scam traffic increases after registration and that any Board-issued or USPTO notice with a deadline warrants immediate review.