Can a Lawyer Licensed in Another State Handle Your Trademark Filing?

Trademark registration and copyright registration are federal systems, run by the USPTO and the Copyright Office, and our main copyright and trademark law page describes both. Because the rules for who may represent you come from those agencies, the question "can a lawyer in another state help me" has a different answer for each forum. This page sets out the actual rules. For context, Shreepal J. Zala of Zala IP Law is licensed in Georgia, and our Atlanta intellectual property and entertainment lawyer page describes the practice.

How a Federal Trademark Filing Works With a Lawyer in Another State, Step by Step

1. Confirm your domicile. Every applicant must give and keep current its domicile address: an individual's permanent legal residence, or a company's principal place of business (37 CFR 2.189, 2.2(o)).
2. Check the lawyer's license. The lawyer must be an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or a U.S. commonwealth or territory (37 CFR 11.1). Which one does not matter to the USPTO.
3. The lawyer becomes your representative. That happens by filing a power of attorney, signing a document for you, or being named as your representative in a filing (37 CFR 2.17(b)(1)).
4. The lawyer gives bar information. The state of active bar membership, the date of admission and the bar number, if that state issues one (37 CFR 2.17(b)(3)).
5. The USPTO deals with the lawyer. Once a lawyer is recognized, the USPTO corresponds only with that lawyer (37 CFR 2.18(a)(2)), who answers office actions by their deadlines.
6. Recognition ends at registration. The USPTO treats representation in a pending application as ending when the mark registers, ownership changes or the application is abandoned (37 CFR 2.17(g)(1)), so later maintenance filings are a fresh appointment.

What Does the USPTO Rule Actually Say?

The core rule is one sentence: any individual who is an attorney as defined in 37 CFR 11.1 "may represent others before the Office in trademark and other non-patent matters" (37 CFR 11.14(a)). An attorney does not have to apply for registration or recognition to do so. The definition in 11.1 is an active member in good standing of the bar of the highest court of any State, and "State" covers all 50 states, the District of Columbia and U.S. commonwealths and territories.

The USPTO's own guidance puts it the same way: only an attorney in good standing of the bar of the highest court of any U.S. state or territory can represent you in a trademark application, registration or Trademark Trial and Appeal Board (TTAB) proceeding. Two limits are written into the rule. Registration as a patent practitioner does not by itself allow trademark practice, and non-lawyers are not recognized to represent others in trademark matters, apart from a small group recognized before 1957 (37 CFR 11.14(a), (b)). Only someone qualified under 11.14 may represent an applicant, registrant or party to a proceeding (37 CFR 2.17(a)).

Attorneys who practice before the USPTO are subject to its disciplinary jurisdiction and its Rules of Professional Conduct, according to the agency, and the USPTO's Office of Enrollment and Discipline handles misconduct complaints.

Does It Matter Which State the Lawyer Is Licensed In?

Not for the USPTO's purposes. The rule asks for good standing in the bar of any state, not the state where you live or where your business operates. The bar information the lawyer gives is used to confirm that standing, and the USPTO says it is not made publicly available.

The USPTO's rule is about who it will recognize, not a license to practice every kind of law everywhere. The rule itself says recognition "shall not be construed as sanctioning or authorizing the performance of any act regarded in the jurisdiction where performed as the unauthorized practice of law" (37 CFR 11.14(d)). Each state sets its own rules for lawyers. Georgia's version of Rule 5.5, for example, says a lawyer may not practice in a jurisdiction in violation of that jurisdiction's regulation of the legal profession, and its comments note that the definition of the practice of law varies from one jurisdiction to another. The same Georgia rule recognizes services a lawyer is "authorized to provide by federal law" (Georgia Rule 5.5(d)(2)). Other states write their own versions.

What If You Are Based Outside the United States?

Then you must have a U.S.-licensed attorney. Any applicant, registrant or party to a proceeding whose domicile is not in the United States or its territories must be represented by an attorney qualified under 11.14, and the USPTO "cannot aid in the selection of an attorney" (37 CFR 2.11(a)). The rule took effect August 3, 2019, and the USPTO says it applies to Canadian filers too. For a company, domicile means the headquarters where senior executives direct and control the business, so a U.S. mailing address alone does not change the answer.

A foreign trademark attorney or agent can be recognized only in narrow cases, for clients in their own country where the USPTO has a reciprocal arrangement, and even then a U.S. attorney must also be appointed to file and correspond (37 CFR 11.14(c)). Our page on whether a foreign company needs a U.S. trademark attorney covers the filing routes in detail.

Do You Need a Lawyer at All?

If you are domiciled in the United States, no. The USPTO says a U.S.-domiciled applicant, registrant or party is not required to hire an attorney, although it encourages people to. You can file in your own name, and an officer can file for a corporation he or she is authorized to represent (37 CFR 11.14(e)). What you cannot do is hand the filing to a non-lawyer service to act as your representative. The USPTO says advice or help from someone not authorized to practice before it can get a submission rejected or put a registration's validity at risk. Our page on choosing between a filing service and a trademark attorney covers the USPTO's warning signs.

Most people who hire a lawyer do it for the judgment calls: the search, the filing basis, the wording of the goods and services, and the response if an examiner refuses. Our post on how to register a trademark in 8 steps shows where those decisions come up.

What About Copyright Registration?

No lawyer is required. As a general rule, an application may be submitted by the author or other copyright claimant, the owner of any exclusive right, or a "duly authorized agent" of any of them (37 CFR 202.3(c)(1)). Applications are filed online through the Copyright Office's Electronic Copyright Office (eCO) system. Where your lawyer is licensed makes no difference to the Office. Our page on copyright registration cost and processing time covers fees and timing.

Can an Out-of-State Lawyer Handle a Copyright Claims Board Case?

The statute says a party "may be, but is not required to be," represented by an attorney, or by a qualified law student working pro bono (17 U.S.C. 1506(d)). Proceedings are conducted at the Board's offices without in-person appearances, through written submissions and internet-based hearings and conferences (17 U.S.C. 1506(c)). The Board's own FAQ answers "Do I need an attorney?" with "No." Our page on whether the Copyright Claims Board fits a small claim explains how a case runs.

What Changes If the Dispute Goes to Court?

Court admission is separate from USPTO recognition, and it is court by court. Federal district courts hear trademark and copyright cases, and for copyright claims no state court has jurisdiction (28 U.S.C. 1338(a)). Each district court may adopt its own local rules governing its practice (Federal Rule of Civil Procedure 83(a)(1)), and admission to practice is one of the things those rules cover.

In the Northern District of Georgia, any attorney who is an active member in good standing of the State Bar of Georgia is eligible for admission to the court's bar (N.D. Ga. LR 83.1(A)(1)). An attorney who is not a Georgia bar member but is in good standing elsewhere may apply to appear pro hac vice in a particular case, and must designate local counsel who keeps an office in the district and belongs to both the court's bar and the State Bar of Georgia (LR 83.1(B)(1), (4)). Other courts set their own terms, so a lawyer who handled your filing may need to seek admission, or work with local counsel, before appearing in a court elsewhere. Our page on copyright and trademark lawsuits in Atlanta federal court covers how a case runs there.

Which Questions Turn on State Law Instead?

Many IP matters come with state-law pieces attached. A license or distribution contract that says it is governed by another state's law, a defamation claim, a business formation question, or a state trademark registration are all decided under a particular state's law, and the licensing question for the lawyer follows that state's rules rather than the USPTO's. Our page comparing common law, Georgia and federal trademark protection explains what a state registration does and does not add. When a question turns on your state's law, it is fair to ask any lawyer directly whether they are licensed there.

What Changes the Answer

• Your domicile. U.S.-domiciled owners may represent themselves; foreign-domiciled owners must have a U.S.-licensed attorney (37 CFR 2.11(a)).
• The forum. USPTO and Copyright Office rules do not tie representation to a particular state; courts admit lawyers under their own rules (Fed. R. Civ. P. 83(a)(1); N.D. Ga. LR 83.1).
• The lawyer's standing. The license must be active and in good standing; a lapsed or inactive license does not meet 37 CFR 11.1.
• Whether the issue is federal or state law. A federal filing is one question; a contract governed by a given state's law is another (37 CFR 11.14(d)).

A Worked Example

Common Mistakes

• Assuming you must hire a lawyer in your own state for a USPTO filing. The rule accepts good standing in any state's bar (37 CFR 11.1, 11.14(a)).
• Using a filing service or other non-lawyer as your representative. Non-lawyers are not recognized in trademark matters (37 CFR 11.14(b)).
• Relying on a foreign agent alone when you are domiciled outside the United States (37 CFR 2.11(a)).
• Listing only a P.O. box as your address. The USPTO says a P.O. box is in most cases not acceptable as a domicile address.
• Assuming the lawyer who filed your application still represents you on a Section 8 declaration years later (37 CFR 2.17(g)).
• Treating USPTO recognition as permission to appear in any court. Courts admit lawyers under their own rules.

What to Do This Week

1. Write down your domicile address: your permanent home, or your company's headquarters.
2. Ask any lawyer you are considering which bar they belong to, and check their standing in that bar's public directory.
3. List each matter you have and sort it: USPTO, Copyright Office, Copyright Claims Board, court, or state-law contract.
4. If you are outside the United States, plan for a U.S.-licensed attorney before you file anything.
5. If a lawsuit is possible, find out which court would hear it and read its local rule on attorney admission.

Frequently Asked Questions

Can a Patent Agent File Your Trademark Application?

Not as a patent agent. Registration as a patent practitioner does not by itself allow trademark practice, and patent agents who are not attorneys are not recognized in trademark matters (37 CFR 11.14(a), (b)). A patent attorney who is an active bar member in good standing qualifies as an attorney.

Is the Lawyer's Bar Information Public?

The USPTO requires the state, date of admission and bar number where one exists, and says that bar information is not made publicly available. It may ask for proof of good standing (37 CFR 2.17(b)(3)).

Can the Same Lawyer Handle a TTAB Opposition?

Yes, if the lawyer qualifies under 37 CFR 11.14. The representation rule covers applicants, registrants and parties to proceedings alike (37 CFR 2.17(a)). Our page on the TTAB opposition process explains what those cases involve.

Will the USPTO Recommend a Lawyer?

No. The rules say the USPTO "cannot aid in the selection of an attorney" (37 CFR 2.11(a)), and its guidance points people to telephone listings, the internet and bar association referral services.

Can Someone Else File Your Copyright Application for You?

Yes. A duly authorized agent of the author or claimant may submit it (37 CFR 202.3(c)(1)), so a manager, publisher or lawyer can file if you authorize them.

Does a Lawyer Need to Renew Something for Your Registration Later?

The owner must file maintenance declarations on schedule, and representation for those filings is a new appointment once the earlier one has ended (37 CFR 2.17(g)). Our page on trademark maintenance deadlines and fees sets out when they are due.

Zala IP Law handles federal trademark and copyright work for clients across the United States and internationally; Shreepal J. Zala is licensed in Georgia. If you are deciding who should file for your brand, request a consultation or call 404-313-1701, and tell us where your business is based and what you want to protect.