How to Appoint a US Attorney on an Existing Trademark Application

How the appointment works

The mechanics are simpler than the surrounding anxiety suggests. Your attorney files a form with the USPTO naming themselves as attorney of record on your application or registration. The USPTO records it, and from that point the attorney can act — respond to refusals, amend the application, file evidence of use, argue on your behalf.

There is no USPTO fee for the appointment itself. It is usually recorded within a short time of filing. The work that follows is what carries a fee.

Two things worth understanding. First, the attorney files it, not you — which is itself a consequence of the rule, since a foreign-domiciled applicant cannot make filings directly. Second, the appointment is prospective. It puts an attorney in place for what comes next; it does not retroactively fix filings already made.

What your attorney will need from you

Have these ready and the appointment takes a day rather than a week.

• The serial number of the application, or the registration number if the mark has already registered. Eight digits for an application, seven for a registration.
• Every letter the USPTO has sent you, in full, including anything you thought was junk. Deadlines hide in them.
• Your domicile address — where you actually live, or where the business is genuinely run. Not a mail-forwarding address. The USPTO requires the real one and may ask you to support it.
• Who is authorised to instruct. For a company, the person with authority to bind it. Getting this wrong causes problems later, particularly on assignments.
• The account details for whatever filing system was used, if you filed yourself. Not always needed, but it saves time when it is.

The correspondence address, which matters more than people expect

When an attorney is appointed, USPTO correspondence goes to them. This sounds administrative. It is the single most consequential part of the whole exercise.

The USPTO communicates by email to the address of record, and deadlines run from the date it sends, not the date anyone reads. Applications are lost every year because the address of record was a defunct mailbox, a filing service that had stopped operating, or an assistant who left. The letter arrived exactly as the rules require. Nobody saw it.

So when you appoint counsel, confirm two things: that USPTO correspondence now goes to an address the attorney genuinely monitors, and that you also receive a copy of anything that arrives. A good attorney will forward it without being asked. Ask anyway.

If you previously used a filing service and no longer have access to the email address it used, say so at the start. That is a fixable problem and a dangerous one to leave.

What appointing counsel does not do

Appointing an attorney satisfies the representation requirement. It does not, by itself, fix anything else — and this is where expectations often part company with reality.

• It does not answer a pending refusal. If you received an office action, the substantive response still has to be prepared and filed within the same deadline. Appointing counsel on the last day of the response period does not extend it.
• It does not cure a defective filing basis. If the application claimed use in commerce that had not begun, that is a problem in the record which has to be addressed on its own terms.
• It does not repair a bad specimen. New evidence may be submitted, but a specimen that was digitally altered is a serious matter and not simply replaced.
• It does not revive an abandoned application. That takes a petition, within a limited window, on specific grounds.

None of that is a reason to delay. It is a reason not to treat the appointment as the finish line — see what to do when an office action is already pending.

Changing from one US attorney to another

You are entitled to change counsel, and it is a routine filing. The new attorney is appointed, the previous appointment is revoked, and correspondence redirects.

The part that needs care is the handover. Ask the outgoing attorney for the file — the application as filed, all correspondence, the evidence submitted, and the docket of upcoming deadlines. If you are changing because the previous representative went quiet, assume there is a deadline you do not know about and have the new attorney check the status directly with the USPTO before anything else.

You do not need the outgoing attorney’s permission or cooperation to make the change. It helps, and it is often not forthcoming, and the change proceeds regardless.

If your mark is already registered

The same requirement applies, and the same appointment process works. A foreign-domiciled registrant needs a US-licensed attorney for the maintenance filings due between the fifth and sixth year, for ten-year renewals, for assignments and changes of name, and for any proceeding at the Trademark Trial and Appeal Board.

If you registered years ago through a service that has since disappeared, the useful step is to check the current status and the next maintenance deadline now. A registration cancelled for a missed declaration cannot be reinstated. You would have to start again, and by then someone else may hold what you had.