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The Zest

Switching from a filing service to an attorney mid-application

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Yes, you can switch to your own attorney at any point while your trademark application is pending, and you don't need the filing service's permission to do it. The new attorney appears on the application, any old attorney is replaced, and from then on the USPTO sends its correspondence to the new attorney.

Most people look into this after an Office Action arrives and the service quotes a price for the response, or after they realize nobody is watching their deadlines. Here's how the change works, what the rules say, and what to gather first.

Step one: find out who's on your application now

Look up your serial number in the USPTO's TSDR system. The record shows who's listed as the attorney, if anyone, and where the USPTO sends its mail. You'll see one of two setups.

An attorney is listed. Some services file through a licensed attorney or an affiliated law firm, and that attorney appears on the application. The USPTO treats that attorney as your representative.

No attorney is listed. Some services help you file in your own name. The USPTO treats you as representing yourself, and correspondence goes to you, or to whatever email address was put on the form.

It's worth checking, because the second setup sometimes uses the service's email as the correspondence address. If so, the USPTO's letters reach the service, not you.

What the USPTO rules say about who it talks to

The rule is 37 C.F.R. 2.18. If no attorney is recognized, the USPTO sends correspondence to the applicant. If an attorney is recognized, the USPTO "will correspond only with that attorney," with a few exceptions, such as when the attorney's authority has been revoked. Only one correspondence address can be designated on an application. The applicant has to keep that address current, including its attorney's address, and file a change promptly when it changes.

So who you list matters. Whoever is recognized gets the deadlines.

How a new attorney gets recognized

Under 37 C.F.R. 2.17(b), an attorney becomes your representative in one of three ways: by filing a power of attorney signed by you, by signing a document on your behalf, or by being identified as your representative in a document filed with the USPTO.

A power of attorney has to name at least one qualified attorney and be signed by the applicant. For joint applicants, all of them must sign. Recognition for a pending application ends when the mark registers, when ownership changes or when the application is abandoned.

Revoking the old one

Under 37 C.F.R. 2.19(a), you can revoke an attorney's authority at any stage. The revocation has to be in writing and signed by you, or by someone with legal authority to bind your company. A new power of attorney that meets the rules operates as a revocation of the old one. One trap: a change of correspondence address doesn't revoke a power of attorney on its own.

The form: Change Address or Representation

In practice, the switch happens on the USPTO's free Change Address or Representation form, often called the CAR form. The USPTO's page on it says:

  • There's no fee for the form.
  • If you've been representing yourself, the new attorney signs the form and fills in their name, address, email and bar information. A separate power of attorney isn't necessary in that case.
  • If you're revoking an attorney and appointing a new one, the form must be signed by you or someone authorized to legally bind the owner. It may not be signed by the original attorney or the new one.
  • Once the USPTO accepts the form, it sends future correspondence to the appointed attorney.

The form is for representation and addresses only. The USPTO says not to use it to change the owner name or transfer ownership. Those go through the Assignment Recordation Branch.

If the old attorney withdraws instead

Sometimes the old attorney steps aside first. Under 37 C.F.R. 2.19(b), an attorney can withdraw only with approval, and the request has to state that you were given notice, that the file was handed over, and, where a response is due, that you got notice at least two months before the deadline. When the USPTO accepts a withdrawal, it changes the correspondence information to the owner's until a new attorney appears. That's why your own email on file matters.

Watch the clock

A switch doesn't pause your deadlines. The USPTO gives you three months from an Office Action's issue date to respond in most applications. You can ask for one three-month extension for a fee. If you don't respond in time, the application is abandoned. Examining attorneys have no discretion to extend the period.

So if an Office Action is already out, move early. An attorney needs time to read the file, research the refusal and write the response, and the form takes time to process.

What the new attorney can and can't fix

Some problems in an application can be fixed after filing. Others can't, and an attorney should tell you which kind yours is before you pay for a response.

The description of goods and services is a common example. Under 37 C.F.R. 2.71(a), you can amend it "to clarify or limit, but not to broaden" what's covered. If the original filing described your goods too narrowly, the new attorney can't widen it in that application. You may need a second application.

Other issues, like an ownership mistake or a filing basis that doesn't fit, need a close look at the record. Sometimes the right advice is to finish this application. Sometimes it's to file a new one alongside it.

What to gather before you call

  • Your serial number.
  • Every email or letter from the USPTO, and any from the filing service.
  • Your order confirmation, so you know what you paid for and what the service's refund terms say.
  • Any search report you received.
  • Examples of how you're using the name, like your website, labels or packaging.

On money: what the service refunds is up to its terms. USPTO fees you've already paid generally aren't refunded, and you don't need to pay them again just because you changed attorneys.

How I handle switches

I take over applications filed elsewhere. My Office Action responses for those start at $425 for procedural issues and $1,600 for substantive refusals, flat. Before I quote, I read the whole file, so you know whether this application is worth saving. I'm the only attorney at Citrus Legal, so I'm the one who reads it, writes the response and files it. Details are on the Office Action response page.

If you haven't filed yet and want one attorney from the start, one mark is $2,600 flat, or three payments of $950, plus the USPTO fee of $350 per class. That covers the search, my written opinion, the application and procedural Office Actions. Every application Citrus Legal has filed so far has been approved.

To start a new application with one attorney and one flat fee, start here.

Questions about your name? Email us at hello@citrus.legal, or book a paid 30-minute consultation (opens in a new tab) for advice on your specific situation.

Sources

This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

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