Examination Guide 03-06
Examination Guide 03-06
Representing an Applicant/Registrant Before the USPTO
Issued November 13, 2006
This examination guide sets forth the procedures to follow when an amendment or a response to an Office action regarding an application or registration is 1) unsigned; 2) signed by a person whose authority to sign is unclear; or 3) signed by an improper party. This guide also updates the policies relating to the appearance by a qualified practitioner on behalf of an applicant or registrant, as well as the effect of the submission of a proper power of attorney with respect to conducting business on behalf of an applicant/registrant. This examination guide supersedes the current practices of the Trademark Manual of Examining Procedure (TMEP), 4 th edition, to the extent that they are inconsistent with the policies herein.
Attorneys licensed to practice in the United States or certain Canadian attorneys and agents granted recognition by the Office of Enrollment and Discipline (OED) of the United States Patent and Trademark Office (USPTO) may practice before the USPTO in trademark matters. See 37 C.F.R. §10.14 and TMEP §602. A person who is not qualified under 37 C.F.R. §10.14(a), (b), or (c) to practice before the USPTO in trademark cases is not permitted to represent a party in the prosecution of a trademark application, in the maintenance of a registration, or in a proceeding before the USPTO. 5 U.S.C. §500(d); 37 C.F.R. §10.14(e). Preparing a paper, authorizing an amendment to an application, or submitting legal arguments in response to an examiner's 1 requirement or refusal of registration, amendment or renewal, constitutes representation of the applicant or registrant in a trademark matter. TMEP §804.04.
With respect to foreign attorneys, Canadian attorneys are currently the only foreign attorneys who have been recognized as meeting the qualification criteria of 37 C.F.R. §10.14(c). A Canadian attorney or agent granted recognition by the USPTO may only represent parties located in Canada. TMEP §602.06. An attorney who resides and practices in a foreign country other than Canada and who is not a member in good standing of the bar of the highest court of any State 2 may not represent a party before the USPTO. 37 C.F.R. §10.14(e).
A Canadian attorney or agent who wishes to represent a Canadian applicant/registrant in a trademark matter must file an application for recognition with OED before representing the applicant in a trademark case. An attorney or agent qualifying under 35 U.S.C. §§2(b)(2)(c) and 10.14(c) may be granted recognition following receipt of his or her application. OED maintains an online index of attorneys and agents recognized to practice before the USPTO that may be accessed through the Trademarks page on the USPTO website.
Paralegals, secretaries, and legal assistants are not authorized to negotiate, argue a position, officially accept or reject Office requirements, authorize examiner's amendments, or otherwise prosecute a matter before the USPTO.
An attorney who satisfies the requirements of 37 C.F.R. §10.14 who appears in person or signs a document on behalf of an applicant/registrant generally will be recognized by the USPTO as the authorized representative of the applicant/registrant. 37 C.F.R. §§2.17(a) and (c). Submission of a formal power of attorney is generally not required. However, once an attorney is recognized by the USPTO as the representative of an applicant/registrant, a change in representation can only be made upon written request signed by the applicant/registrant until USPTO recognition ceases as set forth below.
If no revocation or new appointment of power of attorney occurs, the USPTO considers the power of a recognized attorney to end with respect to a particular application when the mark is registered, when ownership changes, or when the application is abandoned. Representation of a registrant is considered to end with respect to a particular post-registration filing when that submission is accepted or finally denied . 3
The “appearance” of an attorney by means of a telephone call to the Office does not satisfy the requirement of 37 C.F.R. §2.17(c). Such an attorney will not be recognized as applicant's/registrant's representative and he or she cannot authorize amendments to the application/registration.
If an applicant/registrant is represented by a practitioner qualified under 37 C.F.R. §10.14 to practice before the USPTO in trademark cases (hereinafter “a qualified attorney”), the USPTO will conduct business only with the qualified attorney until that representation is terminated. If the applicant/registrant contacts the USPTO by telephone regarding the application/registration, the applicant/registrant will be advised that the USPTO will only conduct business regarding the application/registration with the appointed attorney(s). TMEP §§601 and 602.01(b). USPTO employees may discuss the application/registration file record with the applicant/registrant or answer questions about the procedures for obtaining and maintaining a registration, and are encouraged to refer the applicant/registrant to publicly available information on the USPTO's web site. See TMEP §1805 regarding information on general inquiries from the public.
The applicant/registrant may not authorize examiner's amendments and the USPTO will not accept responses signed by an applicant/registrant, if there is a qualified attorney of record. If the applicant/registrant wishes to revoke the power of attorney, the applicant/registrant should be encouraged to use the Trademark Electronic Application System (TEAS) as the filing method.
The USPTO will not presume the applicant/registrant has authorized someone other than the appointed attorney to conduct business. If an applicant/registrant has discharged its attorney, a revocation by applicant/registrant or a request to withdraw by the attorney must be filed before any further submissions signed by the applicant/registrant will be accepted. A response signed by an applicant/registrant that is filed with or after a revocation or a withdrawal request may be treated as complete and responsive to the Office action. See TMEP §602.04 regarding revocation of a power of attorney and permissive withdrawal of attorney of record.
Once a qualified attorney represents an applicant/registrant, the USPTO will not accept a change of correspondence address signed by the applicant/registrant. Any such change is not a substitute for a revocation of power of attorney. The USPTO will only correspond with the appointed attorney, unless and until the appointed attorney authorizes a change of address, or a new correspondence address is filed together with either: (1) a revocation of power of attorney signed by the applicant/registrant; or (2) a request for permission to withdraw as attorney.
If the attorney section of an application identifies a person with an address outside the U.S., the examining attorney should advise in an Office action that, unless the person meets the requirements of 37 C.F.R. §10.14, (1) that person is not authorized to practice before the USPTO in trademark matters; (2) that person may not represent the applicant in the particular trademark application; and (3) any power of attorney to the person is void ab initio . The Office action should be sent to the correspondence address of record.
If an Office action is not necessary (i.e., the application is otherwise eligible for approval for publication), the examining attorney should ensure that the USPTO database does not include the identified person in the “Attorney” field. The correspondence address should remain unchanged. However, if the examining attorney subsequently issues an Office action or other correspondence, the advisory set forth above should be included.
In the case of an application under Trademark Act §66(a), 15 U.S.C. §1141(f)(a), or a registered extension of protection, the applicant's/registrant's appointed representative as communicated from the International Bureau of the World Intellectual Property Organization is the correspondence address of record until a proper change of correspondence address is submitted to the USPTO. See TMEP §§603.01(a), 1902.11 and 1904.02(f). The §66(a) representative is not recognized by the USPTO as a qualified attorney without further clarification of his or her qualifications under 37 C.F.R. § 10.14.
An amendment or a response to an Office action must be properly signed. If a qualified attorney represents an applicant/registrant, the attorney must sign the response. 37 C.F.R. §10.18(a); TMEP §712.01. Otherwise, an amendment or response must be signed by: (1) the applicant/registrant; or (2) someone with legal authority to bind the applicant/registrant (e.g ., a corporate office or general partner of a partnership).
If an applicant/registrant is pro se (i.e., not represented by an attorney), a person who is authorized to verify facts on behalf of an applicant/registrant under 37 C.F.R. §2.33(a)(2) ( see TMEP §804.04) is not entitled to sign amendments or responses to Office actions, or to authorize examiner's amendments and priority actions, unless he or she also has legal authority to bind the applicant. See TMEP §§712.01 et seq . regarding the proper person to sign an amendment or a response to an Office action on behalf of various types of legal entities.
Signatures of non-attorneys ( e .g., paralegals, legal assistants, secretaries, etc.) on behalf of or in lieu of the signature of an attorney or other authorized person (e.g., officer of a corporation) are not acceptable. In cases of submissions through TEAS, the person(s) identified as the signer(s) must enter all required electronic signatures manually. Just as signing the name of another person in ink on paper does not serve as the signature of the person whose name is written, typing the electronic signature of another person is not a valid signature of that person.
A person who is not qualified to represent an applicant/registrant as outlined in Section I may still transmit and receive correspondence. Such a person could sign a perfunctory cover letter that merely accompanies properly signed papers, or could receive correspondence from the Office and transmit it to the applicant/registrant.
In addition, if such a person meets the requirements of 37 C.F.R. § 2.33(a), i.e., has firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant/registrant, he or she may also sign applications, allegations of use, and other verifications on behalf of an applicant/registrant. See generally TMEP §804.04.
The broad definition of a “person properly authorized to sign on behalf of an applicant” in 37 C.F.R. §2.33(a) applies only to verifications of facts by the applicant or registrant, such as applications for trademark registration, affidavits under §8 of the Trademark Act, allegations of use, and declarations in support of specimens of use or claims of acquired distinctiveness. It does not apply to powers of attorney, revocations of powers of attorney, responses to Office actions, or amendments to applications. As an example, the “Trademark Administrator” of the applicant, who has firsthand knowledge of the facts alleged in the application, may sign and file the verified statement in support of the application, but unless that person has the legal authority to bind the applicant, or, if an attorney represents the applicant, is the applicant's attorney, the person may not sign responses to Office actions or agree to examiner's amendments.
When considering an amendment or response to an Office action, the examiner must check the file history in the Trademark Image Capture and Retrieval System (TICRS) to determine whether a qualified attorney(s) has been appointed to represent the applicant/registrant. If so, such attorney(s) must sign the amendment or response. See TMEP §601.02(b). If an applicant/registrant is pro se, the examiner must determine whether the person who signed is the applicant/registrant or a person with legal authority to bind the applicant/registration (hereinafter “an authorized signer”). See TMEP §§712.01(a)(i) – (a)(viii) and Section IV., below , for examples of signers presumed to have legal authority to bind the applicant/registrant.
A. Signatory Authority Unclear
If the record is unclear as to whether the signer is a qualified attorney or an authorized signer, the examiner should telephone or e-mail the signer to ascertain his or her legal authority. 4 If the signer is authorized, the examiner should make an appropriate note to the file stating the nature of the signer's relationship to the applicant/registrant, e.g ., that he or she is a corporate officer, a general partner, or an attorney in good standing of the highest court of a U.S. state.
If the examiner cannot (1) determine that the amendment or response was properly signed; or (2) obtain a properly signed response, the examiner must issue a Notice of Incomplete Response, 5 granting the applicant/registrant additional time to perfect the response pursuant to 37 C.F.R. §2.65(b). See Section III, B., below . The following are additional examples of situations when a Notice of Incomplete Response may ultimately be issued.
When a proposed response is unsigned, the examiner should either (1) call to request a properly signed response; or (2) receive authorization to issue an examiner's amendment, if all issues can be resolved by phone. The response cannot be “ratified” by telephone unless the entire contents of the response are proper subject matter for an examiner's amendment and a proper party authorizes the amendments. The applicant/registrant should be encouraged to resubmit a properly-signed copy by fax or through TEAS.
In a paper document, the Office will accept a signature in the format of an electronic signature, namely any combination of letters, numbers, spaces and/or punctuation marks that the filer has adopted as a signature, placed between two forward slash marks (e.g. , /jamesbuchanan/). 6 Use of an electronic signature on a response to an Office action or a preliminary amendment filed on paper will not be deemed “unsigned.”
If the USPTO has recognized the representation of an applicant/registrant by a qualified attorney, and a response to an Office action is received that is signed by someone other than that attorney (i.e., the applicant or a potentially improper party, see Section IV, B., below ), the examiner should hold the response incomplete, because it does not appear that the proper party signed the response (i.e., the attorney of record), by issuing a Notice of Incomplete Response. The merits of the response are not addressed.
An applicant/registrant cannot sign responses or authorize examiner's amendments without first revoking any previously recognized or appointed powers of attorney, except for submissions where an applicant/registrant's signature is required (e.g., a declaration in support of dates of use, specimens or a §2(f) claim).
If a qualified attorney already represents an applicant/registrant, and a new attorney takes over prosecution of the application or post-registration filing, the applicant/registrant must file a new power of attorney 7 signed by the applicant/registrant or an authorized signer ( see TMEP §602.01), before the USPTO will either (1) accept a response signed by the new attorney; or (2) correspond with the new attorney. A different attorney from the same U.S.-based firm as the current attorney of record is not considered a “new attorney.”
If the examiner cannot (1) clarify the nature of the signer's authority with a telephone call or e-mail message; or (2) obtain a properly signed response, the examiner must send a Notice of Incomplete Response to the correspondence address of record. The Notice must advise the applicant of the following:
(1) The examiner will not consider contents of the response until the authority of the signer as a proper party is established for the record, or if the signer was an improper party, a properly signed response is submitted;
(2) A reply to the Notice must be submitted within: (1) the period of time left in the original six-month response period; or (2) thirty days from the mailing or e-mail transmission date of the Notice, whichever is longer. 37 C.F.R. §2.65(b); and
(3) Failure to comply with the requirements of the Notice will result in abandonment of the application for incomplete response.
If the person who signed the response is an authorized signer, the person may simply telephone or send an e-mail message to the examiner to clarify the record. The examiner should make an appropriate note to the file, review the content of the previously- submitted response, and take the appropriate action. If an examiner's amendment could resolve all proposed amendments in an improperly signed response, a person with legal authority to bind the applicant/registrant may telephone the examiner to authorize such an amendment.
A proper reply to a Notice of Incomplete Response should state the nature of the relationship of the signer to the applicant/registrant. If the signer has legal authority to bind the applicant/registrant, the person should so state, and should set forth his or her title or position. If the signer is an attorney qualified under 37 C.F.R. §10.14, the attorney should identify him or herself as an attorney and simply state the bar of the United States court or the state bar of which he or she is a member. If the signer meets the qualifications of either §§10.14(b) or (c), the person should explain how he or she meets the requirements of the rule. For example, a Canadian attorney or agent recognized by OED to practice before the USPTO in trademark cases may simply state that he or she has received recognition by OED as a Canadian practitioner under §10.14(c).
Pending Application for Registration
In the event of an unsatisfactory response to the Notice of Incomplete Response, or if no response is received, the examining attorney will abandon the application for incomplete response. 8 The examining attorney must issue a letter of abandonment for incomplete response, explaining why the response to the inquiry was inadequate, or that no response was received, and indicate that the applicant cannot file a petition to revive under 37 C.F.R. §2.66. The applicant's only recourse is to file a petition to the Director under 37 C.F.R. §2.146 to reverse the examining attorney's holding of abandonment. See TMEP §§1713 and 1714.01(f)(ii).
The abandonment letter will be sent to the correspondence address of record, even if that address may be that of the potentially improper signer of the response. 9 See TMEP §603.05 regarding correspondence with parties not domiciled in the U.S.
In the case of an inadequate response or no response to a Notice of Incomplete Response issued by a Post-Registration trademark specialist, the registrant must be notified that the affidavit under Section 8 or renewal application under Section 9 remain unacceptable, and that the registration will be cancelled in due course, as appropriate. In the case of a proposed amendment under Section 7, the trademark specialist must notify the registrant that the request for amendment is abandoned. See TMEP §§1604.18, 1606.14 and 1704 regarding petitions to the Director to review the actions of a Post Registration examiner.
If the examiner learns that the person is not an authorized signer but holds himself or herself out as being an “attorney,” “agent,” or “representative” of the applicant/registrant, i.e ., the signer is a foreign attorney or agent not licensed to practice law in the United States or not recognized by OED to practice before the USPTO, the examiner should consult the Administrator for Trademark Examination Policy and Procedure (Administrator) who may advise the examiner to follow the procedures in Section V., below .
An authorized party must sign preliminary amendments and other submissions that are not directly responsive to an Office action. If an examiner receives an amendment that is signed by a person who is neither a qualified attorney nor an otherwise authorized signer, the examiner must issue a Notice of Non-Responsive Amendment, or indicate in an Office action if otherwise appropriate, that the amendment will not be considered, as it was not submitted by a proper party.
Person signing response identifies him/herself as an officer of a pro se applicant/registrant (“President,” “Vice President,” “Treasurer,” “Secretary,” of a domestic corporation or the equivalent for another type of business entity; e.g., “Partner” for a partnership, “Member” or “Principal” for a Limited Liability Company).
Person signing response for a previously pro se applicant/registrant identifies him/herself as a U.S. attorney in good standing of the bar of any United States court or the highest court of any state, but practicing abroad (e.g., Mary Smith, member of New York State Bar, with offices in Nassau, Bahamas).
Person signing response for a foreign corporation identifies him/herself as “general counsel” or “in-house counsel” AND a “corporate officer” or another corporate officer position (e.g ., “Secretary,” “Treasurer,” “Vice President”).
Person signing response for a previously pro se applicant/registrant identifies him/herself as an attorney with a U.S. law firm or as “general counsel” or “in-house counsel” of a domestic applicant.
Person signing is a different attorney from the same U.S.-based firm as the current attorney of record.
Person signing on behalf of a Canadian applicant/registrant is a Canadian Trademark Attorney or Agent whom OED has recognized to prosecute trademark applications ( See http://des.uspto.gov/OEDCI/ ).
B. Person who signed a response is potentially an improper party when no other indication of authorization, as specified in Section IV. (A)., above , exists:
Person signing response provides no title or position (e.g., applicant is Jack Smith, an individual of the United States, and Mary Jones signs the response; or applicant is ABC Corporation, and Bill Miller, President, signs the original application, but Dave Wilson, with no listed title or position, signs the response).
Person signing response appears to be a foreign attorney (e.g., “solicitor” or “barrister” for a foreign entity).
Person signing response identifies him/herself as a non-attorney representing applicant/registrant in some other capacity (e.g., accountant, paralegal, trademark administrator, business manager, personal assistant, legal secretary).
Person signing response provides the address of a foreign firm.
Person signing response in an application/registration owned by a foreign entity identifies him/herself as “attorney for applicant” or “attorney at law,” or similar language, but does not specify an address or firm.
Person signing identifies him/herself as “attorney-in-fact.”
Person signing a response in an application/registration owned by a foreign entity identifies him/herself as “in house counsel” or “general counsel”, with no other indication of officer status or recognition to practice in U.S. or before the USPTO per 37 C.F.R. §§10.14(a) or (c).
Person signing a response identifies him/herself as “representative” of or “agent” for or “representing” applicant/registrant, with no other explanation.
Person signing a response identifies him/herself as an “authorized signatory” but provides no other indication of nature of relationship to applicant/registrant.
When an applicant/registrant had previously appointed a power of attorney that the USPTO does not consider to have ended ( see I.(B)., above ), the person signing is a new attorney from a new firm and no new power of attorney or revocation of the previously appointed power has been made of record (a request to change the correspondence address notwithstanding).
Occasionally, OED determines that a particular individual is excluded or suspended from practice before the USPTO. In these cases, the Administrator shall notify examiners accordingly.
If an examiner receives a response signed by such a person, the examiner must prepare a Notice of Incomplete Response (TMEP §718.03(b)) and grant the applicant/registrant additional time to perfect the response pursuant to 37 C.F.R. §2.65(b). The examiner should also notify the Administrator of the receipt of a response from an excluded or suspended person.
If the improper signer has submitted a change of correspondence address identifying that person as the new recipient of correspondence, the examiner should ensure that the correspondence address in the Trademark database is changed to that of the most recently appointed power of attorney, domestic representative, or applicant/registrant, as applicable.
The Notice should indicate that:
(1) the excluded or suspended individual is not entitled to practice before the USPTO in trademark matters, and therefore may not represent the applicant/registrant;
(2) a power of attorney, if any, to the excluded or suspended individual is void ab initio ;
(3) the excluded or suspended individual may not sign responses to Office actions;
(4) all correspondence concerning the application/registration will be sent to the applicant's/registrant's domestic representative if one has been designated, or alternatively, to the applicant/registrant at its address of record; and
(5) a properly signed response must be submitted within: (1) the period of time left in the original six-month response period; or (2) thirty days of the issuance of the Notice, whichever is longer. Someone with legal authority to bind the applicant/registrant must sign the response ( see TMEP §712.01), or, if represented by an attorney who is qualified to practice before the USPTO under 37 C.F.R. §10.14 ( see TMEP §602), the attorney must sign the response.
A properly signed response may be submitted via fax (unless it is excluded by 37 C.F.R. §2.195(c)) or through TEAS (using the response to Office action form), if possible. The applicant/registrant or qualified attorney may not ratify the response of an improper party through an examiner's amendment. See TMEP §712.03. Failure to comply with the requirements of the Notice will result in abandonment of the application for incomplete response.
1 The term “examiner” refers to USPTO examining attorneys, paralegals or trademark specialists, as applicable.
2 A “State” means any U.S. state, a territory or possession of the United States including a Commonwealth, Puerto Rico, or the District of Columbia. 5 U.S.C. §500(a)(2); 37 C.F.R. §10.1(y).
3 Once the USPTO recognizes an attorney with respect to the submission of a particular post-registration filing, such as an affidavit under §8, an application for renewal under §9, or an application for amendment of the mark under §7, the USPTO will only accept submissions related to that post-registration filing, such as responses to Office actions, petitions, etc ., from that attorney, unless and until the registrant revokes and appoints a new power of attorney.
4 In the case of non-U.S. applicants/registrants, the examiner's ability to place a telephone call is limited. Inquiry by electronic mail is encouraged to the extent a signer provides an e-mail address. Otherwise, issuance of the Notice of Incomplete Response may be an examiner's only option.
5 To generate a “Notice of Incomplete Response,” an examiner must use the “Examiner's Non Responsive Amendment” template, remove the six month response clause, and title the letter “NOTICE OF INCOMPLETE RESPONSE.”
6 See 37 C.F.R. §2.193(c)(1)(iii)(A).
7 The USPTO will treat a new power of attorney signed by the applicant/registrant or an authorized signer as a request to change the correspondence address, even if there is no revocation of a previous power of attorney. TMEP §603.02(a).
8 An unsatisfactory response fails to clarify the authority of the signer or makes clear the signer did not have legal authority to bind the applicant/registrant, and no properly signed response was submitted in lieu thereof. Examiners should consult with their supervisors to resolve any questions as to whether the record establishes the proper authority of the signer.
9 A person who is not qualified under 37 C.F.R. §10.14 may receive correspondence and transmit it to the applicant/registrant. If an improper party has submitted a change of correspondence address, the last properly designated correspondence address must be used.