Originally published in outs & ins, vol. 4, no. 2, 2004.
Although the U.S. trademark rules permit the filing of trademark applications by applicants or their counsel, the act of signing an application must be undertaken by a person properly authorized to sign on behalf of the applicant. The Trademark Manual of Examining Procedure (“TMEP”) defines a properly authorized person as (i) a person with legal authority to bind the applicant; or (ii) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; or (iii) an attorney who has an actual or implied written or verbal power of attorney from the applicant.
A person defined as a “properly authorized person” is legally entitled to sign the following types of documents: (i) applications for registration and renewal; (ii) amendments to allege use; (iii) statements of use; (iv) requests for extensions of time to file statements of use; (v) affidavits of continued use; (vi) substitute specimen declarations; (vii) claims of acquired distinctiveness; (viii) amendments changing the basis for filing; and (ix) designations of domestic representative.
It is important to note that this standard does not apply to documents containing legal arguments since a non-attorney who is authorized to verify facts on behalf of an applicant is not necessarily entitled to sign responses to office actions or to authorize examiner’s amendments. This different standard is due to the USPTO’s requirement that a response be signed by someone with legal authority to bind the applicant (e.g., applicant’s attorney, an appropriate corporate officer or general partner of a partnership). Although paralegals and legal assistants may convey information between the examining attorney and the appointed attorney(s), they are not authorized to negotiate, argue a position, officially accept or reject USPTO requirements, or otherwise prosecute a matter before the USPTO.
In cases in which a corporate applicant is not represented by an attorney, a response must be signed by a corporate officer. TMEP §712.01(a)(iv). An officer is defined as a person who holds an office established in the articles of incorporation or corporate bylaws. The usual titles of officers are President, Vice-President, Secretary, Treasurer, Chief Executive Officer, Chief Operating Officer and Chief Financial Officer. Modifications of these basic titles are acceptable. A General Manager, or any other type of manager, is usually not acceptable as in the U.S. they are merely employees, not officers. However, in the case of foreign corporate entities, the USPTO will generally accept the signature of a person considered to be the equivalent of an officer under the law of the foreign country. Therefore, the signature of a person holding the title “Manager” or “Director” for a foreign applicant or registrant should be deemed acceptable.
While the USPTO rules and regulations make clear that paralegals and other non-attorneys are not entitled to represent a trademark owner in signing responses, case law concerning the consequences of such an unauthorized representation has yet to really evolve. The USPTO will not question the authority of the person signing unless there is some apparent inconsistency that brings the authority to sign into question. However, US case law has established that a cancellation proceeding can be brought on any ground that would have been a ground for not issuing a registration. Therefore, we routinely investigate the source of the facts underlying the statements made in an application when contesting the mark in an opposition or cancellation proceeding or other litigation since the presence of such an improper signature could provide a basis for asserting that a registration is invalid. As such, it is highly recommended that corporate applicants who are engaged in the prosecution of their own trademark applications before the USPTO make a concerted effort to ensure that the party signing an application or other paper being submitted to the USPTO actually possesses the proper authority to act upon the applicant’s behalf.