[E-trademarks] USPTO Change of Representation Form

Wed Mar 20 14:05:47 EDT 2024

Aha.  Thanks for the tip. I think the person who prepared the form may have ticked a box or two incorrectly in the wizard.

But it still strikes me as an odd and inappropriate question for the USPTO to ask.  There are many reasons why and applicant/registrant may engage new counsel, or even shift between lawyers in the same firm, and (with the possible exception of the death/incapacity/retirement of prior counsel) almost all of those reasons are confidential, and none of them are things the USPTO needs to know.

Of course, the USPTO asking for things it doesn’t need to know is not a new topic on this listserv…

-- Bob

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Robert M. O'Connell, Jr.  Of Counsel [V-card] <https://www.orrick.com/api/sitecore/PersonnelPage/vCard?personnelGuid=D70E3581-E851-4059-998C-CB6F6087D51C>
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From: Lindsey Corbin <lindsey.corbin at delegate.legal>
Sent: Wednesday, March 20, 2024 1:43 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: O'Connell Jr., Robert <robert.oconnell at orrick.com>
Subject: Re: [E-trademarks] USPTO Change of Representation Form

 [EXTERNAL]
Hi,

I believe that question is only contained in the form where you are updating Attorney information but staying in the same firm (i.e. an associate left the firm and they are being removed as the listed attorney but the firm retains the client).  I've not seen it when I've done basic revocation/appointment forms.  I also just checked the form preview on the USPTO site and it's not listed in that form.

Lindsey

On Wed, Mar 20, 2024 at 10:36 AM O'Connell Jr., Robert via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:
Learned colleagues:

I’ve taken over a portfolio marks and we’re preparing a “Change Address or Representation Form” for the client’s e-signature.  In this form, there is a question that I don’t recall seeing before: “STATEMENT OF THE REASON FOR REPLACEMENT”.

Is this new?  How is this the USPTO’s business, or anyone else’s?  Would one enter “Nunna yer damn bizness”?  Or how about “prior counsel was overpriced and incompetent”?  (Just joking – not the case here.  But still.)

What have people been entering in this field?

Am I being unreasonable, or does this feel like another instance of the USPTO inserting itself into the attorney-client relationship where it does not belong?

Robert M. O'Connell, Jr.
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