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Good afternoon, thank you all
for attending today's trademarks

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Webinar series presentation
representation signatures an

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ethical issues in trademark
prosecution practical

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information for attorneys.

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A link to today's slides was
included in the email you

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received with the link to join

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today's presentation. This
session is being recorded and

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will be made available for
viewing on the USPS website and

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YouTube channel within two to
three weeks of the presentation

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date today. Our presenters for today's Webinar are Kathleen

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Cooney Porter senior TM advisor
to the USPTO director.

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Robert Lavache senior trademark legal policy

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Advisor, and David Mayer, a trademark legal policy

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attorney.

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If you have any questions during
the presentation, simply type

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them in the chat window to all
panelists. There will be time

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for questions. There will be
time for answers from the

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presenters at the end of the
session if we do not get to your

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question or if you were watching
a recording of this

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presentation, please email your
question to tmpolicy@uspto.gov.

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That email address will be
posted on the last slide of the

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presentation as well.

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Today's presentation will cover
the following topics. General

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ethical considerations for
practitioners recognition as a

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representative signature
requirements an authority to

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sign Rule 1118 signature as

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certification.
Considerations for proof

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abuse audits and
addressing this conduct

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before the USPTO. And now
I will turn it over to

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Kathleen. Clean Porter.

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So good afternoon or good
morning everyone and depending

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on where you're watching, the
presentation is a pleasure for

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for us to be here. So I'll be
starting us off with general

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ethical considerations before
practicing before the USPTO.

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So I turn attorneys
practicing before the office

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are subject to the rules of
professional responsibilities

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set forth by their individual
states of condition.

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All practitioners engaged
impacts before the office are

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subject to disciplinary
statistics of the office.

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So use PTL rules,
expressional conduct.

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A practitioner shall
provide competent

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representation to a client.

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A practitioner shall
reasonably consult with our

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clients about the means by
which the client objectives

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are to be accomplished. Keep
the client recently informed

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about the status with the
batter and she explaine

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matters to the extent
reasonably necessary to permit

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the client to make informed
decisions regarding

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representation.

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A practitioner shall not
practice law in a

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jurisdiction in violation of
the regulations of the legal

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profession. After 610 and or
assist another in doing so.

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General ethical considerations.
What is packed before the office

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in trademark matters.

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Practice before the office is
very broad term that includes.

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Any related?

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Any law related service that
comprehends any matter

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connected with the
representation to the office or

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any of its officers or
employees relating to a client,

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right privileges, duties or
responsibilities under laws or

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regulations administered by the
Office for the Registration of

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the trademark.

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So this list may include not

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exhaustive. Preparing necessary
documents in contemplation of

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filing the documents with the

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office. Corresponding and
communicating with the office.

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On behalf of the party,
consulting with and giving

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advice to clients concerning
matters pending or contemplated

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to be presented before the

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office. Planning, preparing
and prosecuting application

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for trademark registration and
also preparing an amendment

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which may require written
arguments to establish the

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legibility of a trademark.

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So see January 37 CSR, Section

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1. 11.5

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Most USB key employees that
trains communicate, but

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here are also attorneys and
are bound by the rules of

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threshold contact as well.

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USPC employees may not
provide legal advice or

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opinions about trademark
rights, trademark

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infringement claims, or the
ability of a trademark

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registration.

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Yes, speak employees may not
discuss an application directly

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with a represented applicant
unless the attorney is also part

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of the conversation.

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Yes, pick your employees may not
discuss the merits of any

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particular application or
registration with a third party.

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General ethical information.

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So additional schema mind.

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Will two point 11 E providing
false petitions or fraudulent

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information in connection
with the requirements.

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For providing accurate domicile
information shall be deemed the

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bidding at paper or improper
progress in violation of section

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11, point 18V of his chapter.

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And subject to sanctions
and actions provided.

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Infections 11.18 feet.

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Will 2.922 point 192 trademark
applicants registered and

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parties to the proceedings
before their trademark Comma

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Appeal board and their attorneys
or agents are required to

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conduct their business with the
CORM and courtesy.

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Documents presented in
violations requirement will be

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submitted to the director and
would return this by the

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Directores direct Thor Iti.

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So see generally 3074 X 11.5.

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I'll hand it back over.

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Yeah, yeah.

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Can you hear me now? OK,
there we go sorry bout that.

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So good afternoon everyone.
I'm going to talk briefly

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about but it takes to be
recognized as a

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representative before the
office.

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There are basically three ways
that one could be recognized as

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a representative in a trademark
case. They are set forth in Rule

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2.17 and these change slightly
in connection with the US

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Council Rule update fairly
recently, and it provides great

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flexibility in how one can
appear. The clearest way is to

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be appointed in a properly
signed power of attorney, which

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is usually done with the car
form. The change of address and

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representation form through TS.

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Another way to do it is to sign
any document on behalf of an

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applicant, registrant or party
to a preceding who's not already

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represented by another attorney.

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I'm the 3rd way, which is kind
of. The catchall is to appear by

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being identified as the
representative in any document

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submitted to the office on
behalf of an applicant register

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other party who's not already
represented by a qualified

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practitioner, and the third one
is very broad. We do read into

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that that the attorney has
consented to this

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representation. We have had a
few instances where an attorney

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has been appointed without their
knowledge, which is very rare

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and can be addressed by
contacting the Policy office.

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There's a little delay on
the slides, I apologize.

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So what does it mean to have a
party who's already represented

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representation recognized
during the pendency of an

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application is continue to. It
continues until the attorney is

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either revoked or is replaced
by a new attorney at a

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different firm. But when
ownership changes or the mark

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registers or the application
abandons the office considers

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the recognition of the power of
attorney to automatically end.

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Very often we will have.

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Information will stay in the
record post registration and we

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do that as a courtesy, but the
next attorney then to file a

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document post registration can
technically appear by doing so.

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So we we understand also that
when somebody submits the

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document in connection with
the maintenance filing, we

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will recognize that attorney
to be the attorney of record

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until that maintenance filing
is either accepted or finally

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rejected.

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And with that I'm going to pass
it on to Bob.

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Thanks David and good afternoon
everyone, so let's talk a little

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bit about how one which sign of
submission to the office. We

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have two main forms that we
accept. One is an electronic

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signature and that's the
electronic signature that is

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provided for in our rules and
that is essentially any

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combination of letters, numbers,
spaces or punctuation marks.

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That's the signatory has adopted

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as Sigma. Sure place between two
forward slash symbols, so

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generally if it meets those
requirements of the rules, we

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accept the signature. But of
course we'll get to the

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authority to sign in some later
slides. The other form of

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signature that we accept is the
traditional pen and ink

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signature, and the way that you
would submit that signature to

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us is by.

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Having whoever signing it sign
it along with the declaration

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verification or environments
that are being.

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Assigned scanning those into a
JPEG or PDF file and then upload

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uploading that as an attachment
to the T submission. The other

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thing I want to mention here is
the sort of mechanism for having

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someone else sign electronically
a submission when you're not the

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one who's going to sign it and
you're not with the person who

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is signing it, and we have what
we call E sign on and it's a

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method of completing the
document and then providing a

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link for the signature to be

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entered. Two hours of the
signatory is once they review

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that document. And then enter
their signature. They can then

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return it to the party who will
be submitting the form. After

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they complete it.

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So now let's talk about.

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What are rules require in terms
of the electronic signature and

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handwritten signature? In both
cases, the signature has to be

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personally entered. In the case
of an electronic signature or

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personally sign, in the case of
a pen and ink signature.

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Now, if you take a look at Rule
2.193, you'll see that it

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includes the language,
indicating that you could use

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some other form of electronic
signature specified by the

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director. But presently we don't
have any such other forms.

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I know that document signing
software is very popular now

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that currently under our rules
for most types of signature are

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it's not permitted. Currently we
are looking into that.

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Very important here when we're
talking about ethics and what

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are rules require, another
person may not sign the name of

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an attorney or other authorized
signatory, so whoever's.

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Designated as a signatory,
actually has to personally

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enter that signature. That
means that a paralegal or

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legal assistant or secretary
or anyone else could not enter

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us an electronic signature on
behalf of the person signing.

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An important note here, and
we'll get more into this sort

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of ethical obligations later
in the presentation, but under

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Rule 11.303, practitioner owes
a duty of candor to the office

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in May not permit the
submission of a false

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statement or fact of law, so
that of course, would or could

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apply to improperly signed
documents submitted to the

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office.

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Moving on signatures have to be
a real person, so when you

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identify this signatory, it has
to be a person. It can't be the

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company name, for instance.

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And our rules also require that
the first and last name in the

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title or position of the person
who signs must be set forth

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below or adjacent to the
signature we are. We read that

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adjacent wording fairly broadly.

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So in many cases, if it's
somewhere else in the filing and

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it's otherwise properly done, we
will accept that.

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So here are a couple of examples
of signatures that are never

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acceptable. The first example
here at the top shows that the

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signatory signatory name and the
signature itself identify a

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company name. There's no real
person identified, so as I

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mentioned, that would not be an
acceptable signature. It should

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be rejected by the examining
attorney and would trigger a

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requirement in an office action.

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And in the next example, you see
there's no signature provided at

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all. That also of course would
trigger a an office action.

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I should also note here, under
Rule 1118 a each piece of

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correspondence filed by
Practician in the office must

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bear a signature either
personally signed or inserted

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by the practitioner. Now we
don't traditionally strictly

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enforce that, so if a
signature is omitted, we don't

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necessarily consider that a
violation. But if we see a

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pattern of behavior that could
lead to further inquiry.

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With that I will turn it over to
David for authority to sign.

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Thanks Bob and I I think part of
the authority to sign question

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might actually answer one of the
questions we've received from

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from the audience regarding why
we require different people to

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sign out of attorney at
different stages. So let me jump

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in by saying that.

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When somebody has to sign a
document before the office, we

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need the proper person to do it.
But the proper person will

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depend on what type of
submission we're talking about.

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We generally split these into
four different categories, we

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have verifications of fact, then
the responses, amendments,

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requests and petitions, and then
power attorney. Then this

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catchall, we say, mixed
documents and what is meant by

241
00:15:48,702 --> 00:15:51,454
mixed documents is essentially
those situations where the

242
00:15:51,454 --> 00:15:55,238
document does multiple things. A
lot of our forms through tease.

243
00:15:55,490 --> 00:15:58,240
Allow you to do things like
make an amendment, but also

244
00:15:58,240 --> 00:15:59,240
change out the attorney.

245
00:16:01,190 --> 00:16:01,940
So.

246
00:16:04,030 --> 00:16:06,750
Let's start by verifications
affect. These are primarily

247
00:16:06,750 --> 00:16:09,810
applications. Allegations of use
requests for extensions of to

248
00:16:09,810 --> 00:16:13,890
file, a statement of use, a
petition to revive, or any sort

249
00:16:13,890 --> 00:16:17,290
of declaration. So for these
were talking about any person

250
00:16:17,290 --> 00:16:20,690
with legal authority to bind the
applicant, a qualified attorney

251
00:16:20,690 --> 00:16:24,090
representing the applicant or,
and this is very broad. Eight

252
00:16:24,090 --> 00:16:27,830
person with first hand knowledge
of the facts and actual or

253
00:16:27,830 --> 00:16:31,230
implied authority to act on
behalf of the applicant. And

254
00:16:31,230 --> 00:16:34,630
generally we're not going to
question the authority of the

255
00:16:34,630 --> 00:16:37,690
person who signs any sort of
verification of facts.

256
00:16:38,100 --> 00:16:42,004
Unless there is some
inconsistency in the record.

257
00:16:43,330 --> 00:16:45,050
Which is quite rare.

258
00:16:45,910 --> 00:16:49,069
For responses, amendments and
requests and these are governed

259
00:16:49,069 --> 00:16:52,930
by several different rules. This
is for any response to office

260
00:16:52,930 --> 00:16:56,089
action. Any requests for expense
abandonment. Request to divide

261
00:16:56,089 --> 00:16:59,599
petitions to the director.
Requests to make any real change

262
00:16:59,599 --> 00:17:03,460
to the record, so that includes
addresses and amendments to the

263
00:17:03,460 --> 00:17:06,970
application. If you're changing
out the ID. For instance, if

264
00:17:06,970 --> 00:17:10,480
there is an attorney appointed,
an attorney must sign these

265
00:17:10,480 --> 00:17:13,990
types of submissions. If the
attorney, if there is no

266
00:17:13,990 --> 00:17:16,096
attorney, it has to be signed.

267
00:17:16,220 --> 00:17:19,730
By somebody with legal authority
to bind the applicant or

268
00:17:19,730 --> 00:17:22,187
registrant. Ann for joint
applicants or registrants.

269
00:17:22,187 --> 00:17:26,048
Everybody must sign for juristic
entities. It's not just that the

270
00:17:26,048 --> 00:17:30,260
person signs, we also have to
know that the person has the

271
00:17:30,260 --> 00:17:33,770
authority to represent the
juristic entity by virtue of his

272
00:17:33,770 --> 00:17:35,525
or her title or position.

273
00:17:37,090 --> 00:17:42,018
So for juristic entities and
this is relevant for later too.

274
00:17:42,750 --> 00:17:46,986
When we're talking about who can
bind a juristic entity, for the

275
00:17:46,986 --> 00:17:50,869
TMP has a lot of different
examples for all different types

276
00:17:50,869 --> 00:17:53,340
of these entities. Domestic
corporations, of course.

277
00:17:53,340 --> 00:17:56,870
Probably the most popular there.
We want corporate officer. We

278
00:17:56,870 --> 00:18:00,047
want the President, the Chief
Financial Officer, somebody with

279
00:18:00,047 --> 00:18:03,224
a corporate title for limited
liability company. We're looking

280
00:18:03,224 --> 00:18:06,754
for somebody who has the title
manager, owner, principle, or

281
00:18:06,754 --> 00:18:10,990
member. It's a little bit more
broad, and for most other types

282
00:18:10,990 --> 00:18:13,814
of entities. Again, the person
who who combined.

283
00:18:13,880 --> 00:18:14,960
Be the company.

284
00:18:16,310 --> 00:18:20,391
I will say also that we will
take we examining attorneys

285
00:18:20,391 --> 00:18:23,359
especially are trained to
recognize titles like CEO.

286
00:18:23,359 --> 00:18:27,440
They'll say they see VP, they'll
understand that that's a senior

287
00:18:27,440 --> 00:18:30,815
vice president. It's
unacceptable, though for a

288
00:18:30,815 --> 00:18:34,665
juristic entity to sign as a
trademark coordinator or agent

289
00:18:34,665 --> 00:18:37,745
of, or just authorized
signatory. The exception being

290
00:18:37,745 --> 00:18:42,365
that if the record shows that
this person is already been has

291
00:18:42,365 --> 00:18:45,445
been recognized, if the
president of the Corporation

292
00:18:45,445 --> 00:18:48,910
signs the application and then
signs later as authorized

293
00:18:48,910 --> 00:18:52,760
signatory will presume that they
have not changed positions and

294
00:18:52,760 --> 00:18:53,915
will accept that.

295
00:18:55,520 --> 00:18:58,960
I will note that general counsel
and in-house counsel there's

296
00:18:58,960 --> 00:19:02,056
there's a couple of things to
keep in mind.

297
00:19:03,000 --> 00:19:06,530
And in-house counsel, or any
sort of general counsel, is

298
00:19:06,530 --> 00:19:10,060
qualified to practice before the
office as an attorney. However,

299
00:19:10,060 --> 00:19:13,590
in less they also have a
corporate equivalent title. They

300
00:19:13,590 --> 00:19:17,473
can't sign as a corporate
officer. So what we're saying by

301
00:19:17,473 --> 00:19:21,356
that is that somebody identified
as in-house counsel may sign a

302
00:19:21,356 --> 00:19:24,886
response in an amendment if that
person is currently recognized

303
00:19:24,886 --> 00:19:29,122
as the attorney of record. But
that person may not revoke the

304
00:19:29,122 --> 00:19:32,299
authority of a previously
appointed attorney and less they

305
00:19:32,299 --> 00:19:34,064
do so in their capacity.

306
00:19:34,150 --> 00:19:37,840
As somebody who's able to
legally bind the applicant, so

307
00:19:37,840 --> 00:19:41,161
if you're trying to as
in-house counsel revoke the

308
00:19:41,161 --> 00:19:45,220
authority of outside counsel,
you have to sign it as general

309
00:19:45,220 --> 00:19:48,172
counsel and Senior Vice
president. If that's the

310
00:19:48,172 --> 00:19:51,862
accurate title. If the general
counsel is not an officer,

311
00:19:51,862 --> 00:19:55,552
they would have to have an
officer sign that particular

312
00:19:55,552 --> 00:19:55,921
document.

313
00:20:00,890 --> 00:20:05,412
So for a power of attorney,
that's a good segue to how do we

314
00:20:05,412 --> 00:20:09,288
change out the attorney so that
has to be signed by an

315
00:20:09,288 --> 00:20:11,549
individual applicant,
registrant, or party to a

316
00:20:11,549 --> 00:20:15,102
pursuit to the preceding or by
somebody with legal authority to

317
00:20:15,102 --> 00:20:18,332
bind the Applicant Register
party. So once an attorney is

318
00:20:18,332 --> 00:20:20,916
designated, the name
practitioner is allowed to to

319
00:20:20,916 --> 00:20:23,500
sign an associate power of
attorney appointing another

320
00:20:23,500 --> 00:20:27,540
qualified practitioner. But we
know that revocation of the

321
00:20:27,540 --> 00:20:31,140
primary attorney attorneys power
also revokes any associate power

322
00:20:31,140 --> 00:20:35,140
of attorney, so Now's Council
could be recognized as the

323
00:20:35,140 --> 00:20:38,740
attorney. They're not recognized
as someone with legal authority

324
00:20:38,740 --> 00:20:43,140
to bind the inner registering
unless that person is also an

325
00:20:43,140 --> 00:20:47,540
officer. So very often, we would
suggest that if an application

326
00:20:47,540 --> 00:20:49,540
is filed by the in-house

327
00:20:49,540 --> 00:20:54,379
counsel. Later on that in-house
counsel can appoint a outside

328
00:20:54,379 --> 00:20:58,589
counsel to file responses on
their behalf because that would

329
00:20:58,589 --> 00:21:01,536
be essentially an associate
power of attorney.

330
00:21:06,790 --> 00:21:10,822
So what about these mixed
submissions? So mix the

331
00:21:10,822 --> 00:21:14,854
missions? Are these again,
these examples are where the

332
00:21:14,854 --> 00:21:17,990
TS form allows multiple
things to happen.

333
00:21:19,260 --> 00:21:22,692
Each portion of the sub mission
has to be considered separately

334
00:21:22,692 --> 00:21:26,124
to determine if it's properly
signed. So if an attorney is

335
00:21:26,124 --> 00:21:28,932
appointed, the attorney must
sign the response in the

336
00:21:28,932 --> 00:21:31,428
voluntary amendments, but the
applicant may sign the

337
00:21:31,428 --> 00:21:34,548
declaration that's contained in
a response or amendment, but if

338
00:21:34,548 --> 00:21:37,980
it's if the response portion is
not properly signed, then that

339
00:21:37,980 --> 00:21:41,100
declaration can't be considered.
This is, this isn't really that.

340
00:21:41,100 --> 00:21:43,596
We're planning to provide
additional clarification for in

341
00:21:43,596 --> 00:21:44,844
the next TMP update.

342
00:21:45,760 --> 00:21:50,020
And with that we're going to
get to the fun part. We're

343
00:21:50,020 --> 00:21:53,925
going to do some interactive
stuff, and I'm going to pass

344
00:21:53,925 --> 00:21:55,700
it over to Kathleen again.

345
00:21:57,040 --> 00:21:57,560
Or

346
00:21:58,790 --> 00:21:59,230
if I.

347
00:22:00,420 --> 00:22:02,370
Do this correctly. There we go.

348
00:22:04,580 --> 00:22:09,764
OK, as David said, now for the
fun part. First hypothetical is

349
00:22:09,764 --> 00:22:14,516
an individual applicant. How we
do it to miss his own

350
00:22:14,516 --> 00:22:15,812
application Pro say?

351
00:22:16,500 --> 00:22:19,380
After receiving a complicated
looking office action, he asked

352
00:22:19,380 --> 00:22:22,900
his criminal defense attorneys
you gotta help take a close look

353
00:22:22,900 --> 00:22:24,820
and see if she could help.

354
00:22:25,960 --> 00:22:29,944
So that it takes a look and
realize that the issues are

355
00:22:29,944 --> 00:22:32,932
fairly straightforward, so she
fills out the response without

356
00:22:32,932 --> 00:22:36,252
checking out the box to indicate
a new attorneys appearing.

357
00:22:36,940 --> 00:22:40,020
But personally signs at
and identifies herself as

358
00:22:40,020 --> 00:22:43,100
applicants. Attorneys for
the question is, who is

359
00:22:43,100 --> 00:22:46,180
the attorney record and
is it properly signed?

360
00:22:55,780 --> 00:22:58,165
And pretend there is some
jeopardy. Final Jeopardy music

361
00:22:58,165 --> 00:22:59,225
going on right now.

362
00:23:11,410 --> 00:23:13,699
I don't think the agency
licensed music.

363
00:23:15,080 --> 00:23:17,108
Alright, so we have to pretend.

364
00:23:31,740 --> 00:23:33,010
So we've done the polling.

365
00:23:43,230 --> 00:23:45,281
Looks like we have a 6040 split

366
00:23:45,281 --> 00:23:47,820
there. 90% say or no?

367
00:23:48,990 --> 00:23:49,560
Not quite.

368
00:23:51,240 --> 00:23:52,280
Ready for the answer.

369
00:23:53,870 --> 00:23:54,180
Yeah.

370
00:23:56,790 --> 00:23:57,430
And.

371
00:24:00,130 --> 00:24:04,702
So the answer is yes. Ivana is
an attorney admitted to practice

372
00:24:04,702 --> 00:24:08,512
by the highest court of the USA
restriction and therefore

373
00:24:08,512 --> 00:24:11,941
authorized to package before the
USPTO and trademark matters.

374
00:24:12,590 --> 00:24:16,600
Her signature is sufficient to
recognize as the attorney of

375
00:24:16,600 --> 00:24:21,196
record. Under 370 of our section
2.171, two looks like we have

376
00:24:21,196 --> 00:24:26,086
some of the cost is broken off.
At the end. I'll read it but but

377
00:24:26,086 --> 00:24:29,346
she will draw a new office
action. Attorney Bar information

378
00:24:29,346 --> 00:24:32,932
is required when a new attorney
has appeared, she probably could

379
00:24:32,932 --> 00:24:36,844
have avoided this office action
if she was a little bit more

380
00:24:36,844 --> 00:24:38,800
familiar with the USB to form.

381
00:24:44,970 --> 00:24:46,610
And I'll pass it on.

382
00:24:50,590 --> 00:24:55,828
Thanks Kathleen. Alright, let's
go to number 2 here.

383
00:24:57,490 --> 00:25:01,879
In this example, do we file is
designated as attorney of

384
00:25:01,879 --> 00:25:05,470
record in an intent to use
application for domestic

385
00:25:05,470 --> 00:25:09,061
juristic entity and its
Eastside? By surely you jest

386
00:25:09,061 --> 00:25:10,657
the applicants marketing
manager.

387
00:25:11,720 --> 00:25:15,122
After a notice of allowance
issues, the office first

388
00:25:15,122 --> 00:25:17,390
receives a change of address or

389
00:25:17,390 --> 00:25:20,708
representation form. Appointing
carryover apparently applicants

390
00:25:20,708 --> 00:25:24,124
in-house counsel. As a new
attorney of record.

391
00:25:24,830 --> 00:25:28,470
The form is signed again by.
Surely you jest still

392
00:25:28,470 --> 00:25:31,746
identifying herself as marketing
manager and carryover submits a

393
00:25:31,746 --> 00:25:33,930
statement of use the next day.

394
00:25:34,710 --> 00:25:38,519
So who is the attorney of record
an? Is this all properly signed?

395
00:25:43,890 --> 00:25:46,453
I see we had a comment that
said some people previewed

396
00:25:46,453 --> 00:25:49,016
our slide so they know the
answers and they didn't want

397
00:25:49,016 --> 00:25:51,579
to participate in the polls,
but I won't tell anybody if

398
00:25:51,579 --> 00:25:52,744
you decide to do that.

399
00:25:56,340 --> 00:25:59,376
I also wanted to mention we're
getting a lot of questions about

400
00:25:59,376 --> 00:26:02,412
signatures and will try to pause
after all these high posting to

401
00:26:02,412 --> 00:26:03,424
answer some of them.

402
00:26:23,680 --> 00:26:27,080
Alright, looks like
most of you said no.

403
00:26:28,880 --> 00:26:30,620
So what's the answer?

404
00:26:32,180 --> 00:26:35,447
Well, when David or IR consulted
about these signature issues, we

405
00:26:35,447 --> 00:26:39,011
take a look at the entire record
and we go through each

406
00:26:39,011 --> 00:26:41,981
submission to see who was
appointed, who signed, and then

407
00:26:41,981 --> 00:26:46,436
we follow it all the way through
to see where we end up. So let's

408
00:26:46,436 --> 00:26:49,740
start. With the IT you
application.

409
00:26:50,950 --> 00:26:54,437
Dewey is designated as the
attorney there so that right off

410
00:26:54,437 --> 00:26:56,339
the bat means easy attorney of

411
00:26:56,339 --> 00:27:01,815
record. It's fine for surely you
jest to sign the application as

412
00:27:01,815 --> 00:27:05,550
marketing Manager, because
application as we said is a

413
00:27:05,550 --> 00:27:09,700
declaration signature. So she
has first hand knowledge or and

414
00:27:09,700 --> 00:27:13,850
implied or actual authority,
which we presume in most cases

415
00:27:13,850 --> 00:27:18,000
she can sign the application so
it's good so far.

416
00:27:20,610 --> 00:27:25,070
So let's talk about the change
of address or representation

417
00:27:25,070 --> 00:27:29,530
form. Now we know there's
already an attorney of record.

418
00:27:29,530 --> 00:27:33,990
Surely you Jeff signs the car
form appointing carryover. But

419
00:27:33,990 --> 00:27:38,896
there's already an attorney of
record, so that means anyone who

420
00:27:38,896 --> 00:27:43,802
signs that has to have the
proper authority on behalf of

421
00:27:43,802 --> 00:27:48,708
the juristic entity to sign in
marketing Manager as we said.

422
00:27:48,800 --> 00:27:52,470
Is not going to cut it so
cannot appoint carryover.

423
00:27:54,700 --> 00:27:58,528
So do you? File remains the
attorney of record, but then we

424
00:27:58,528 --> 00:28:02,037
have a statement of use and
carry over submits that in

425
00:28:02,037 --> 00:28:06,339
presumably signs it. That's
OK, she can sign the statement

426
00:28:06,339 --> 00:28:09,822
of use because, again, like
applications, the signature in

427
00:28:09,822 --> 00:28:12,918
the statement of use is a
declaration signature.

428
00:28:14,330 --> 00:28:17,690
So kind of a weird
result there, but.

429
00:28:18,910 --> 00:28:20,418
These can be tough.

430
00:28:21,940 --> 00:28:22,630
I think God.

431
00:28:24,100 --> 00:28:26,908
He's going to be very
surprised to get the

432
00:28:26,908 --> 00:28:28,468
registration certificate
thinking that carryover

433
00:28:28,468 --> 00:28:31,276
should be getting it, but
that's the likely outcome

434
00:28:31,276 --> 00:28:31,588
here.

435
00:28:34,730 --> 00:28:38,258
Alright, so let's do a couple
more individual applicant

436
00:28:38,258 --> 00:28:42,178
domiciled in the US, submits an
application signed by attorney.

437
00:28:42,178 --> 00:28:46,098
I forget who's information is
filled into the attorney fields.

438
00:28:46,098 --> 00:28:50,410
Of course I forget living up to
his name abandons the

439
00:28:50,410 --> 00:28:53,154
application which only required
a new specimen.

440
00:28:53,770 --> 00:28:57,378
A timely petition to revive is
submitted with the new specimen

441
00:28:57,378 --> 00:28:59,346
Anna, properly worded
declaration, signed by

442
00:28:59,346 --> 00:29:02,298
registration applicants Uncle
with a sub mission sink. The

443
00:29:02,298 --> 00:29:05,906
signature by Bill am, often
attorney at Law, who appears to

444
00:29:05,906 --> 00:29:08,202
be from a different firm than Mr

445
00:29:08,202 --> 00:29:12,564
Forget. So let's try this one.
Who is the attorney of record

446
00:29:12,564 --> 00:29:13,984
and is this properly signed?

447
00:29:51,910 --> 00:29:52,638
I'm not sure if.

448
00:29:53,950 --> 00:29:56,890
All is updating. There we go so.

449
00:29:58,180 --> 00:29:59,890
Close split at most people think

450
00:29:59,890 --> 00:30:04,240
no. No, but in this case
actually maybe a surprising yes.

451
00:30:04,240 --> 00:30:07,822
The reason is that when the
application abandoned Mr.

452
00:30:07,822 --> 00:30:11,006
Forgets power of attorney
automatically ended. So the

453
00:30:11,006 --> 00:30:13,792
properly worded declaration came
from registration applicants

454
00:30:13,792 --> 00:30:18,170
Uncle, and as we mentioned
before, a declaration of is a

455
00:30:18,170 --> 00:30:22,548
verification of facts which can
be signed by anybody with first

456
00:30:22,548 --> 00:30:26,528
hand knowledge. So unless we
have evidence to the contrary,

457
00:30:26,528 --> 00:30:30,508
we're going to presume that Mr.
Stration can sign the

458
00:30:30,508 --> 00:30:35,093
verification effects. Bilham
often was named in a document

459
00:30:35,093 --> 00:30:36,889
submitted to the office.

460
00:30:38,260 --> 00:30:41,571
Submitted by by a person with
apparent authority to do so.

461
00:30:41,571 --> 00:30:45,183
So we're going to assume that
bill more often is now the

462
00:30:45,183 --> 00:30:46,086
attorney of record.

463
00:30:47,150 --> 00:30:52,012
So maybe a surprise result, but
again, that flexibility of the

464
00:30:52,012 --> 00:30:55,106
revised to 2.1 seven B at play.

465
00:30:56,640 --> 00:31:00,078
Right passing it back to Bob.

466
00:31:08,700 --> 00:31:13,110
Alright, and example 4A juristic
applicant domiciled in the US

467
00:31:13,110 --> 00:31:17,520
submits an application signed by
an attorney general counsel who

468
00:31:17,520 --> 00:31:21,930
does not enter enter her name in
the attorney fields.

469
00:31:23,230 --> 00:31:25,886
A response is subsequently
filed, making several amendments

470
00:31:25,886 --> 00:31:29,206
signed by Know Little of
Sanction Law Group who does

471
00:31:29,206 --> 00:31:31,862
enter his attorney information
in the attorney fields.

472
00:31:32,570 --> 00:31:35,397
Who is the attorney of
record here and is this all

473
00:31:35,397 --> 00:31:35,911
properly signed?

474
00:31:45,410 --> 00:31:48,497
So maybe the maybe the
names here give something

475
00:31:48,497 --> 00:31:49,526
away will see.

476
00:32:10,990 --> 00:32:14,230
And again we will. We will pause
to answer some questions that

477
00:32:14,230 --> 00:32:15,310
we're seeing come in.

478
00:32:21,570 --> 00:32:25,986
OK, pretty pretty evenly split.
Here we have 69 saying yes 53

479
00:32:25,986 --> 00:32:27,458
saying Now let's see.

480
00:32:29,730 --> 00:32:30,500
Now.

481
00:32:31,640 --> 00:32:36,396
So. An attorney signed
it as general counsel.

482
00:32:37,490 --> 00:32:41,810
In that case, we can presume
that general Counsel identifies

483
00:32:41,810 --> 00:32:43,106
an attorney so.

484
00:32:43,720 --> 00:32:47,059
Assuming that an attorney is
admitted to United States,

485
00:32:47,059 --> 00:32:50,769
she is the primary turn of
record because the initial

486
00:32:50,769 --> 00:32:54,108
application was a document
signed by an attorney on

487
00:32:54,108 --> 00:32:56,334
behalf of an otherwise
unrepresented applicant.

488
00:32:58,310 --> 00:33:01,970
So once we have a recognized
attorney, Noah Little cannot

489
00:33:01,970 --> 00:33:05,630
submit the response and less
either being appointed by and

490
00:33:05,630 --> 00:33:09,290
less. He's either appointed by
someone with legal authority to

491
00:33:09,290 --> 00:33:12,584
bind the applicant or an
attorney grants an associate

492
00:33:12,584 --> 00:33:14,414
power of attorney to him.

493
00:33:16,540 --> 00:33:19,235
I'll turn it back over to David.

494
00:33:24,040 --> 00:33:26,372
Alright, we're almost there.
This is the last one of these

495
00:33:26,372 --> 00:33:28,704
and then will pause for some
questions and don't feel bad

496
00:33:28,704 --> 00:33:30,824
if you're getting some of
these wrong, these are the

497
00:33:30,824 --> 00:33:31,884
tough ones we we are.

498
00:33:34,500 --> 00:33:38,110
We're trying these these
difficult ones, so we have a

499
00:33:38,110 --> 00:33:41,359
juristic applicant domiciled in
the US and submits an

500
00:33:41,359 --> 00:33:45,330
application naming imasu you
from her squids and Marsh as the

501
00:33:45,330 --> 00:33:48,579
attorney of record. The
application is signed by Just

502
00:33:48,579 --> 00:33:51,828
Incase trademark coordinator.
After we get the after the

503
00:33:51,828 --> 00:33:56,521
issuance of an office action we
get a car form a change of

504
00:33:56,521 --> 00:33:59,770
address or representation form
signed by Willie, Notice Chief

505
00:33:59,770 --> 00:34:02,658
in-house counsel in the form
that it's bad.

506
00:34:02,780 --> 00:34:06,082
From I can't believe it's a law
firm is named as the new

507
00:34:06,082 --> 00:34:08,368
attorney of record that then
later files a response.

508
00:34:09,180 --> 00:34:11,058
So is this one properly signed?

509
00:34:20,770 --> 00:34:24,039
Think the names are big
hand here.

510
00:34:31,790 --> 00:34:32,670
More seconds.

511
00:34:39,420 --> 00:34:41,590
And we really do appreciate
y'all playing along with this.

512
00:34:52,740 --> 00:34:58,018
OK, so as most of you notice
that the names give it away

513
00:34:58,018 --> 00:35:02,890
here, no this is not properly
signed, so I'ma Sue you is

514
00:35:02,890 --> 00:35:06,138
still the attorney of record
because the applications

515
00:35:06,138 --> 00:35:09,386
properly signed just in case
the Toria trademark

516
00:35:09,386 --> 00:35:12,634
coordinator can sign a
verification of facts. But

517
00:35:12,634 --> 00:35:17,506
Willie notice can't sign a new
car form because he there's no

518
00:35:17,506 --> 00:35:20,754
indication that he's the
corporate officer or the

519
00:35:20,754 --> 00:35:21,160
equivalent.

520
00:35:22,690 --> 00:35:25,634
So best response can't be
accepted because there's

521
00:35:25,634 --> 00:35:28,210
already recognized attorney
from a different firm.

522
00:35:29,940 --> 00:35:34,846
This could have been fixed if
really notice has signed as

523
00:35:34,846 --> 00:35:37,968
Chief in-house counsel and
corporate Secretary Chief

524
00:35:37,968 --> 00:35:42,428
Legal Officer. Some titles
that gave him some sort of

525
00:35:42,428 --> 00:35:43,766
officer level authority.

526
00:35:46,270 --> 00:35:49,140
OK, I'm going to pass it back
to Bob. I think we're going to

527
00:35:49,140 --> 00:35:50,985
pause for some questions for
some questions here though.

528
00:35:53,250 --> 00:35:57,270
Yes, so going all the week we
had quite a few and.

529
00:35:58,300 --> 00:36:02,120
I think someone related to the
earlier, much earlier slides.

530
00:36:02,120 --> 00:36:03,648
Let's see this one.

531
00:36:04,590 --> 00:36:08,190
Says as it relates to
signatures, we know that under

532
00:36:08,190 --> 00:36:11,430
the rules with requirements are,
however, in remedying the

533
00:36:11,430 --> 00:36:15,030
situation was the USP toes
position for a registered mark,

534
00:36:15,030 --> 00:36:18,270
since USB TIO will not
invalidate the mark, making

535
00:36:18,270 --> 00:36:21,510
additional filings only hurts
the clients. Is there an

536
00:36:21,510 --> 00:36:24,390
appetite to change the
requirements to loosen them?

537
00:36:25,050 --> 00:36:29,010
Why do we require a power of
attorney for existing

538
00:36:29,010 --> 00:36:33,366
applications to be signed by the
client but not for new

539
00:36:33,366 --> 00:36:36,930
applications? So in terms of
remedying an improper signature

540
00:36:36,930 --> 00:36:40,098
when something's already
registered, we you know we

541
00:36:40,098 --> 00:36:44,454
talked to attorneys on the
outside, we let them know that

542
00:36:44,454 --> 00:36:48,810
that's a decision that they have
to make with their client,

543
00:36:48,810 --> 00:36:52,770
because there is the Section 7
presumption of validity validity

544
00:36:52,770 --> 00:36:55,542
by the office, and we try not

545
00:36:55,542 --> 00:36:59,624
to. Enter anything into the
record ourselves that would you

546
00:36:59,624 --> 00:37:02,712
know potentially calling the
question the ability of

547
00:37:02,712 --> 00:37:04,256
registration, but to the.

548
00:37:04,870 --> 00:37:09,810
Extent that an attorney in his
or her client wants to kind of

549
00:37:09,810 --> 00:37:13,990
clarify the record they are
permitted to do that by filing

550
00:37:13,990 --> 00:37:17,410
something post registration.
Attempting to sort of cure the

551
00:37:17,410 --> 00:37:21,590
record. However they want to do
it, but again, that's the

552
00:37:21,590 --> 00:37:25,770
decision that the client in the
attorney have to make, because

553
00:37:25,770 --> 00:37:29,570
once you sort of called into
question the signatures that.

554
00:37:31,290 --> 00:37:35,930
Were made prior to registration
that could potentially open you

555
00:37:35,930 --> 00:37:40,106
up to some third party attacks
on the registration.

556
00:37:42,260 --> 00:37:46,110
In terms of changing the
requirements to to loosen them,

557
00:37:46,110 --> 00:37:50,345
we don't have any particular
plans to do so right now.

558
00:37:51,970 --> 00:37:56,725
We do want to sort of maybe help
clarify some of the rules in the

559
00:37:56,725 --> 00:37:59,895
future because we know that they
can be very complicated.

560
00:38:01,290 --> 00:38:05,934
In terms of the question of why
we require power attorney for

561
00:38:05,934 --> 00:38:09,804
existing applications to be
signed by the applicant but not

562
00:38:09,804 --> 00:38:14,061
for new applications, all in new
applications. At that point the

563
00:38:14,061 --> 00:38:16,770
applicant is essentially
unrepresented and therefore an

564
00:38:16,770 --> 00:38:19,479
appearance under our rules
designation. Even without

565
00:38:19,479 --> 00:38:22,962
signature counts as designating
an attorney. However, if there

566
00:38:22,962 --> 00:38:26,832
is already attorney appointed,
we need someone who has the

567
00:38:26,832 --> 00:38:30,315
proper legal authority on behalf
of the client too.

568
00:38:30,600 --> 00:38:33,610
Revoke the previous attorney
in. Appoint a new one, but

569
00:38:33,610 --> 00:38:35,717
of course, as David
mentioned, if there's

570
00:38:35,717 --> 00:38:38,125
already an attorney of
record in that attorney

571
00:38:38,125 --> 00:38:40,834
wants to appoint associate
powers of attorney. They are

572
00:38:40,834 --> 00:38:42,038
welcome to do that.

573
00:38:43,610 --> 00:38:47,240
Was there anything else David
that you add to that no?

574
00:38:48,950 --> 00:38:49,280
Yeah.

575
00:38:50,840 --> 00:38:54,440
If I could answer the next
one, I think we had two

576
00:38:54,440 --> 00:38:56,240
related questions about
about when representation

577
00:38:56,240 --> 00:38:56,840
automatically ends.

578
00:38:58,190 --> 00:39:01,214
So again, representation will
automatically end up an

579
00:39:01,214 --> 00:39:04,238
abandonment of an application,
change of ownership or

580
00:39:04,238 --> 00:39:05,750
registration of the mark.

581
00:39:07,030 --> 00:39:11,386
So one question was whether that
is an immediate effect. And yes,

582
00:39:11,386 --> 00:39:14,653
it's immediate appointment of
the application. So if a

583
00:39:14,653 --> 00:39:18,646
different attorney were to file
the petition to revive, we could

584
00:39:18,646 --> 00:39:21,913
treat the applicant's being
unrepresented at that point. And

585
00:39:21,913 --> 00:39:26,269
again, that's kind of it's out
of convenience to make sure that

586
00:39:26,269 --> 00:39:29,899
if the applicant we're having
some issue with their attorney

587
00:39:29,899 --> 00:39:30,988
that caused the.

588
00:39:32,490 --> 00:39:35,640
An office action to go
unresponded to that it's

589
00:39:35,640 --> 00:39:39,140
convenient and easy for them to
appoint a new attorney.

590
00:39:40,650 --> 00:39:44,786
We had a follow up question to
another related question was

591
00:39:44,786 --> 00:39:48,170
whether what who gets the
registration certificate if if

592
00:39:48,170 --> 00:39:51,178
representation ends that
registration. Well, it goes to

593
00:39:51,178 --> 00:39:54,562
the current correspondent of
record. We leave the attorney

594
00:39:54,562 --> 00:39:58,698
information in the record as a
courtesy because we do recognize

595
00:39:58,698 --> 00:40:00,202
that in many situation.

596
00:40:00,360 --> 00:40:04,595
And that representation is going
to continue that the attorney is

597
00:40:04,595 --> 00:40:09,600
the one who is acting on behalf
of this now registrant. We do

598
00:40:09,600 --> 00:40:14,220
have a TS form that allows an
attorney to tell us my

599
00:40:14,220 --> 00:40:17,300
representation has ended.
Becaused the mark has registered

600
00:40:17,300 --> 00:40:20,765
or the ownership is changed. So
Take Me Out.

601
00:40:22,380 --> 00:40:25,878
So that can be done,
but we leave it to the

602
00:40:25,878 --> 00:40:27,150
attorney to do that.

603
00:40:29,140 --> 00:40:32,548
And I'm trying to see if there's
any other related question here.

604
00:40:34,760 --> 00:40:39,270
Yeah, just to add to that
with the rule saying that

605
00:40:39,270 --> 00:40:42,140
attorney representation is
considered to end on

606
00:40:42,140 --> 00:40:45,420
registration. And why do we
retain the attorneys

607
00:40:45,420 --> 00:40:47,880
information that was a choice
made.

608
00:40:49,550 --> 00:40:53,645
Along time ago actually after
we got feedback from

609
00:40:53,645 --> 00:40:58,195
stakeholders that they would
prefer to stay in there once

610
00:40:58,195 --> 00:41:01,835
you're registered so that
could continue to receive

611
00:41:01,835 --> 00:41:06,840
correspondence. But it is. It
is an issue that is commonly

612
00:41:06,840 --> 00:41:08,660
raised by stakeholders now.

613
00:41:10,240 --> 00:41:13,848
And we certainly are looking
into that, and whether there's a

614
00:41:13,848 --> 00:41:15,488
better way to do that.

615
00:41:17,540 --> 00:41:20,800
We have two very in rapid
succession. There were two

616
00:41:20,800 --> 00:41:24,386
questions about who may sign a
power of attorney form. One

617
00:41:24,386 --> 00:41:28,298
asked us to confirm that a newly
appointed attorney may sign the

618
00:41:28,298 --> 00:41:31,232
change of attorney rather than
the trademark owner, applicant

619
00:41:31,232 --> 00:41:34,818
and another one asks that
they've seen in some cases that

620
00:41:34,818 --> 00:41:38,404
the new designated attorney
signs him or herself as the new

621
00:41:38,404 --> 00:41:39,708
attorney. Is that allowed?

622
00:41:42,200 --> 00:41:46,652
So the short answer is no, that
is not permitted in an

623
00:41:46,652 --> 00:41:49,991
application in the application
stage, the trademark owner, the

624
00:41:49,991 --> 00:41:54,443
applicant, is the only one who
can revoke an ongoing power of

625
00:41:54,443 --> 00:41:58,524
attorney. So the new attorney
cannot appoint him or herself as

626
00:41:58,524 --> 00:42:02,234
the attorney of Record post
registration. If an attorney is

627
00:42:02,234 --> 00:42:04,831
signing a change of
correspondence and essentially

628
00:42:04,831 --> 00:42:08,170
saying I'm submitting this on
behalf of the registrant.

629
00:42:08,810 --> 00:42:11,480
An the new attorney signs that.

630
00:42:12,150 --> 00:42:15,294
Request to update the
correspondence address that will

631
00:42:15,294 --> 00:42:18,831
essentially appoint the new
attorney as the Attorney of

632
00:42:18,831 --> 00:42:21,975
Record, because again, post
registration. The power of

633
00:42:21,975 --> 00:42:25,512
attorney has automatically
ended, so during the pendency of

634
00:42:25,512 --> 00:42:29,835
the application, no, it has to
be the trademark owner or

635
00:42:29,835 --> 00:42:32,979
somebody with authority to bind
a juristic applicant.

636
00:42:36,840 --> 00:42:40,656
And I don't think we've answered
this yet. The question was what

637
00:42:40,656 --> 00:42:44,154
happens if you have a client
sign a statement of use

638
00:42:44,154 --> 00:42:47,334
declaration? Is this a violation
of 1118? Since currently there

639
00:42:47,334 --> 00:42:51,150
so you form doesn't allow the
attorney to sign. It only has

640
00:42:51,150 --> 00:42:54,012
one signature section for the
Declaration, so that's right,

641
00:42:54,012 --> 00:42:55,602
there is only one signature.

642
00:42:56,900 --> 00:43:00,706
In the so you form currently and
that's the declaration signature

643
00:43:00,706 --> 00:43:05,204
in support of the statement of
use. So in that case is that

644
00:43:05,204 --> 00:43:08,664
would not be considered a
violation, and it's typically, I

645
00:43:08,664 --> 00:43:12,470
think what practitioners would
prefer to happen is to have the

646
00:43:12,470 --> 00:43:16,276
client has more knowledge about
how the market is being used.

647
00:43:16,276 --> 00:43:17,314
File that declaration.

648
00:43:19,180 --> 00:43:23,514
And if you read 1118 about
having an attorney, either sign

649
00:43:23,514 --> 00:43:28,242
or include a signature, I mean I
think that's broad enough to

650
00:43:28,242 --> 00:43:32,450
indicate. In situations like
this that you know there's

651
00:43:32,450 --> 00:43:36,095
compliance because they have,
you know, affected a signature

652
00:43:36,095 --> 00:43:38,525
by having someone else sign in.

653
00:43:39,250 --> 00:43:43,001
Said anything to add to that
David, no, no, that's perfect.

654
00:43:45,250 --> 00:43:49,430
We also have a couple of
questions about. I think there

655
00:43:49,430 --> 00:43:52,090
was some confusion about
declaration signatures about

656
00:43:52,090 --> 00:43:55,510
whether who can sign the
declaration, whether it's just

657
00:43:55,510 --> 00:43:59,690
the applicant or the attorney.
For this I'm going to point

658
00:43:59,690 --> 00:44:04,250
everybody to rule 2.193 E and
that rule contains all of the

659
00:44:04,250 --> 00:44:08,050
everything we're talking about
today about who is allowed to

660
00:44:08,050 --> 00:44:12,230
sign for which type of document.
It's broken down by document,

661
00:44:12,230 --> 00:44:16,030
but essentially a verification
of facts can be signed by.

662
00:44:16,140 --> 00:44:20,090
Someone with legal authority to
bind the owner. Somebody with

663
00:44:20,090 --> 00:44:24,040
first hand, knowledge of the
facts, and the implied authority

664
00:44:24,040 --> 00:44:29,175
to sign and or the attorney. So
a declaration can be signed by

665
00:44:29,175 --> 00:44:33,125
the broadest group of people.
It's just the amendments and

666
00:44:33,125 --> 00:44:37,470
things like that where we
require if there is an attorney

667
00:44:37,470 --> 00:44:39,050
for the attorney design.

668
00:44:41,530 --> 00:44:41,990
Think.

669
00:44:44,230 --> 00:44:45,646
We have a few more here.

670
00:44:47,240 --> 00:44:51,036
I think we might want to move
on since we've got it said

671
00:44:51,036 --> 00:44:54,540
3:45 now, so let's move on
and try to get to the.

672
00:44:55,670 --> 00:44:56,828
The rest later.

673
00:45:01,640 --> 00:45:05,090
Alright, moving on to Rule 1118

674
00:45:05,090 --> 00:45:11,680
in detail. And what we wanted
to highlight here is that under

675
00:45:11,680 --> 00:45:15,440
Rule 1118, any party presenting
paper, whether they're

676
00:45:15,440 --> 00:45:20,140
practitioner or non practitioner
an when we say presenting, we

677
00:45:20,140 --> 00:45:23,430
mean flying, filing, submiting
or even advocating.

678
00:45:25,050 --> 00:45:27,150
Our behalf of someone for that

679
00:45:27,150 --> 00:45:31,042
submission. Anyone who does that
is making certain certifications

680
00:45:31,042 --> 00:45:35,101
first is 1. You're probably all
familiar with, which is the

681
00:45:35,101 --> 00:45:38,791
certification or the environment
that all statements made in the

682
00:45:38,791 --> 00:45:44,220
submission. Are true and that
any sort of willfully false or

683
00:45:44,220 --> 00:45:47,272
fraudulent statements or
representations are subject to

684
00:45:47,272 --> 00:45:49,452
penalties under 18 USC 1001.

685
00:45:50,520 --> 00:45:55,844
But there's also in B2B
provision that, to the best of

686
00:45:55,844 --> 00:45:59,232
the parties knowledge,
information in belief formed

687
00:45:59,232 --> 00:46:03,588
after an inquiry reasonable
under the circumstances of the

688
00:46:03,588 --> 00:46:08,912
paper is not being presented for
improper purposes, and that is

689
00:46:08,912 --> 00:46:12,784
otherwise supported by evidence.
So there's no frivolous.

690
00:46:14,000 --> 00:46:15,464
Claims being made in this sort

691
00:46:15,464 --> 00:46:18,840
of. This sort of mirrors.

692
00:46:19,470 --> 00:46:21,120
Yeah, professional ethics.

693
00:46:22,700 --> 00:46:24,430
Rules like the model code.

694
00:46:28,590 --> 00:46:33,354
So the question that would occur
to most after reading that is

695
00:46:33,354 --> 00:46:37,324
what is an inquiry reasonable
under the circumstances we know

696
00:46:37,324 --> 00:46:40,500
from case law that reasonable
inquiry includes information

697
00:46:40,500 --> 00:46:44,470
known or that can be reasonably
incredibly readily obtained that

698
00:46:44,470 --> 00:46:48,440
generally an attorney may rely
on information provided by a

699
00:46:48,440 --> 00:46:52,013
properly educated client unless
the attorney has reason to

700
00:46:52,013 --> 00:46:55,189
believe that such information is
inaccurate or incomplete.

701
00:46:57,830 --> 00:47:01,821
So now I'd like to open up for
at least a brief discussion.

702
00:47:03,390 --> 00:47:07,566
What is a reasonable inquiry for
attorney signing declarations

703
00:47:07,566 --> 00:47:08,958
supporting specimens? Kathleen.

704
00:47:10,290 --> 00:47:16,098
Well, obviously you need to ask
the whoever signing if all goods

705
00:47:16,098 --> 00:47:21,422
and services are in use in
Commerce and for services many

706
00:47:21,422 --> 00:47:25,778
practitioners know has had an
example for each service.

707
00:47:27,060 --> 00:47:29,967
Are you really asking this
information on the right

708
00:47:29,967 --> 00:47:33,197
person? If you're dealing with
a foreign associates, has it

709
00:47:33,197 --> 00:47:36,104
for an associate requested the
correct information from the

710
00:47:36,104 --> 00:47:38,688
client and if the client
doesn't understand English,

711
00:47:38,688 --> 00:47:41,272
have they translated the
documents they know what

712
00:47:41,272 --> 00:47:41,918
they're signing.

713
00:47:44,940 --> 00:47:48,009
What would you think is a
properly educated client?

714
00:47:49,690 --> 00:47:53,038
In terms of submitting specimens
or or another submission.

715
00:47:55,470 --> 00:47:56,448
Do you want to take that?

716
00:47:58,690 --> 00:48:02,950
Quote For you know when I was in
private practice, I remember

717
00:48:02,950 --> 00:48:04,725
there was an instance where

718
00:48:04,725 --> 00:48:10,760
where. The client sent us for
for maintenance filing a image

719
00:48:10,760 --> 00:48:17,013
that appeared to us to be the
same image that was in the

720
00:48:17,013 --> 00:48:21,342
original application from 10
years prior, and think they're

721
00:48:21,342 --> 00:48:23,266
reasonable. Inquiry would mean.

722
00:48:23,950 --> 00:48:27,272
Challenging the client that is
saying is this still how you're

723
00:48:27,272 --> 00:48:31,500
using it? Is it to say it
appears to be the same image and

724
00:48:31,500 --> 00:48:35,426
in at least one case it turned
out that no, they weren't using

725
00:48:35,426 --> 00:48:39,050
it with those goods and the
market actually change you as a

726
00:48:39,050 --> 00:48:42,976
stylized mark. It didn't even
look like that and it led to the

727
00:48:42,976 --> 00:48:46,298
conversation that maybe we need
to file a new application to

728
00:48:46,298 --> 00:48:49,620
cover to cover this new
variation of the mark. So I

729
00:48:49,620 --> 00:48:52,942
think looking at the record is
really important in these cases.

730
00:48:52,942 --> 00:48:56,360
Reasonable inquiry means.
Looking critically at what

731
00:48:56,360 --> 00:48:59,600
your client descending you
and making sure that.

732
00:49:01,710 --> 00:49:04,050
That it makes sense, I think.

733
00:49:06,070 --> 00:49:07,480
Common sense is a good show.

734
00:49:08,880 --> 00:49:13,976
Right, so it's fair to say
that if you have no real idea

735
00:49:13,976 --> 00:49:17,896
of how much your client knows
about the requirements here,

736
00:49:17,896 --> 00:49:22,600
there is some education that
you have to do before you can

737
00:49:22,600 --> 00:49:26,128
really accept you know some
of their answers right.

738
00:49:27,290 --> 00:49:27,670
Correct?

739
00:49:29,890 --> 00:49:30,270
Right?

740
00:49:31,580 --> 00:49:32,010
OK.

741
00:49:33,880 --> 00:49:36,950
Alright, why don't we move
on to the next slide?

742
00:49:39,900 --> 00:49:42,177
And I am collecting more of
these questions. By the way,

743
00:49:42,177 --> 00:49:44,868
everybody. So when we get to the
end we can do that again.

744
00:49:52,670 --> 00:49:56,674
So when we're talking Bout Rule
1118 there, there's two big

745
00:49:56,674 --> 00:50:00,314
parts of it we talked about.
11:18 a briefly be.

746
00:50:00,390 --> 00:50:01,902
He is what Bob was just talking

747
00:50:01,902 --> 00:50:07,501
about. Rule 1118 C deals
with violations of the of

748
00:50:07,501 --> 00:50:09,058
our rules, and.

749
00:50:10,770 --> 00:50:14,994
If if one violates Rule 1118, B
sanctions could include things

750
00:50:14,994 --> 00:50:18,450
like striking the paper,
referring conduct to weed the

751
00:50:18,450 --> 00:50:21,138
office of enrollment in
discipline, precluding parties

752
00:50:21,138 --> 00:50:24,210
from submitting documents, or
presenting or contesting issues

753
00:50:24,210 --> 00:50:28,434
affecting the weight given to
the paper, or in the most

754
00:50:28,434 --> 00:50:31,506
egregious cases, the office can
terminate the proceedings.

755
00:50:32,700 --> 00:50:36,903
And for practitioners, very
important is actually 1118 D

756
00:50:36,903 --> 00:50:41,573
just a reminder that anybody is
filing anything before the

757
00:50:41,573 --> 00:50:46,243
office is subject to the
jurisdiction of the Office and

758
00:50:46,243 --> 00:50:50,446
OE can can bring about
disciplinary actions for the

759
00:50:50,446 --> 00:50:55,583
purposes of the USPTO, but can
also contact state bars. And

760
00:50:55,583 --> 00:50:57,451
there is reciprocal discipline.

761
00:51:05,180 --> 00:51:06,648
We're passing to Kathleen.

762
00:51:10,910 --> 00:51:12,366
OK, so now we're going
to discuss.

763
00:51:13,800 --> 00:51:16,768
Could use audit post
registration submissions. So who

764
00:51:16,768 --> 00:51:21,220
should sign a Section 8 or 71
affidavit? The attorney in house

765
00:51:21,220 --> 00:51:24,930
counsel IT person having first
hand knowledge of the fact.

766
00:51:25,840 --> 00:51:27,958
So essentially, the
declaration attesting that

767
00:51:27,958 --> 00:51:31,841
won the marketing used with
all of the goods and service

768
00:51:31,841 --> 00:51:34,312
identified in the
Declaration, and two the

769
00:51:34,312 --> 00:51:37,489
specimen shows the mark as
currently used in Commerce

770
00:51:37,489 --> 00:51:40,313
on our connection with the
goods or services.

771
00:51:41,770 --> 00:51:45,514
If there's, I think there's very
many experienced practitioners

772
00:51:45,514 --> 00:51:49,674
listening, and we know that
sometimes your client wants to

773
00:51:49,674 --> 00:51:52,170
maintain historical
registration, and sometimes they

774
00:51:52,170 --> 00:51:55,914
just can't because they don't
have current currently used

775
00:51:55,914 --> 00:52:00,074
goods or services in Commerce
will discuss excusable nonuse in

776
00:52:00,074 --> 00:52:02,154
one or two more slides.

777
00:52:06,260 --> 00:52:12,175
So the signatory to a Section 8
or 7 APFA David is certifying

778
00:52:12,175 --> 00:52:15,815
that, to the best of the
signatories knowledge,

779
00:52:15,815 --> 00:52:19,455
information and belief formed
after an inquiry reasonable

780
00:52:19,455 --> 00:52:20,820
under the circumstances.

781
00:52:21,380 --> 00:52:23,930
The factual contentions
has evidentiary support.

782
00:52:26,070 --> 00:52:29,920
Most importantly, the signatory
is also subject to penalty of

783
00:52:29,920 --> 00:52:33,000
perjury for knowingly and
willfully making six false

784
00:52:33,000 --> 00:52:35,536
statements. A
representation to the

785
00:52:35,536 --> 00:52:35,930
office.

786
00:52:42,380 --> 00:52:46,200
As many of you know, use
PCs began a post

787
00:52:46,200 --> 00:52:48,874
restoration specimen
pilot program in 2012 and

788
00:52:48,874 --> 00:52:51,548
then it was made
permanent in 2017.

789
00:52:52,650 --> 00:52:56,740
Under the proof of use
audit program we use PT.

790
00:52:56,740 --> 00:52:59,194
Oh, make cancel audit
registration with

791
00:52:59,194 --> 00:53:02,057
unsubstantiated use claims
or to delete unsupported

792
00:53:02,057 --> 00:53:03,284
goods or services.

793
00:53:05,240 --> 00:53:08,684
Since implementation over
50% of audited registrations

794
00:53:08,684 --> 00:53:13,112
are either cancelled or have
goods or services removed.

795
00:53:14,790 --> 00:53:17,918
Obviously, the troubling
statistics to date suggests lack

796
00:53:17,918 --> 00:53:21,828
of care, lack of knowledge about
what the law requires.

797
00:53:29,340 --> 00:53:32,184
Directions are required to
submit proof of use for

798
00:53:32,184 --> 00:53:33,448
additional goods and services

799
00:53:33,448 --> 00:53:37,389
and registration. It registers
delete those goods or services.

800
00:53:37,389 --> 00:53:41,096
They are then required to
provide proof of used for all

801
00:53:41,096 --> 00:53:42,107
goods or services.

802
00:53:43,180 --> 00:53:46,900
As many of you know, and our
proposed rulemaking, there's

803
00:53:46,900 --> 00:53:50,248
zero fee for section Seven
Amendment requesting deletion of

804
00:53:50,248 --> 00:53:54,340
goods or services prior to an
audit and no additional fees

805
00:53:54,340 --> 00:53:58,060
were deleting goods and services
currently with the submission of

806
00:53:58,060 --> 00:54:00,292
a section 871 acid. David, but.

807
00:54:01,520 --> 00:54:05,678
2 dollars 200 class via teach
for deleting goods or services

808
00:54:05,678 --> 00:54:09,458
importantly after submission and
prior to acceptance of a Section

809
00:54:09,458 --> 00:54:12,260
8. Or 71 at David.

810
00:54:18,200 --> 00:54:21,044
So the attorneys have a
responsibility to confirm that

811
00:54:21,044 --> 00:54:25,152
the market is in use for each
goods and services listed in the

812
00:54:25,152 --> 00:54:27,996
registration before signing or
filing the declaration of use.

813
00:54:29,470 --> 00:54:32,850
So have Russians consulted with
sales records to determine if

814
00:54:32,850 --> 00:54:36,568
there are ongoing sales of each
list? It's good and service.

815
00:54:37,570 --> 00:54:40,450
Confirm with your client that
sales are for goods services

816
00:54:40,450 --> 00:54:43,330
sold in connection with the
marks shown in the registration.

817
00:54:44,280 --> 00:54:48,264
And consider if there is non use
and it may be excusable.

818
00:54:49,880 --> 00:54:52,905
Those of you who may be new
to trademark practice. Some

819
00:54:52,905 --> 00:54:53,455
examples are.

820
00:54:55,050 --> 00:54:58,986
Catastrophes like fires or
natural disasters or trade

821
00:54:58,986 --> 00:55:04,398
embargo or severe illness or
death of a person that mainly

822
00:55:04,398 --> 00:55:09,810
involved in the business. So
there are there are ways to

823
00:55:09,810 --> 00:55:14,238
prove excusable nonuse, but the
bar is pretty high.

824
00:55:15,280 --> 00:55:18,328
Most importantly, attorneys or
registrants to routinely delete

825
00:55:18,328 --> 00:55:22,138
goods or services after audit
may be referred for discipline.

826
00:55:30,290 --> 00:55:32,730
So tips for successful post

827
00:55:32,730 --> 00:55:36,685
registration submission? Again,
confirm that specifying show

828
00:55:36,685 --> 00:55:38,265
legitimate use in Commerce.

829
00:55:39,030 --> 00:55:42,495
Make reasonable inquiry into how
the resident is using the mark.

830
00:55:43,420 --> 00:55:47,404
Continue to checklist for
particularly long education or.

831
00:55:48,780 --> 00:55:52,344
Services that may be difficult
to read. For instance, if your

832
00:55:52,344 --> 00:55:55,908
client, a pharmaceutical company
or a chemical company that has a

833
00:55:55,908 --> 00:56:00,120
very long list of goods and you
might want to have a checklist.

834
00:56:01,230 --> 00:56:04,580
Prepare for a possible audit by
suggesting clients keep updated

835
00:56:04,580 --> 00:56:07,260
documentation of used in
connection with user services.

836
00:56:08,320 --> 00:56:11,896
Photograph the mark on
product web page examples

837
00:56:11,896 --> 00:56:15,919
with the URL and date
visible or invoices or

838
00:56:15,919 --> 00:56:19,048
photographs of goods being
box for transport.

839
00:56:26,580 --> 00:56:28,360
Passing by.

840
00:56:38,900 --> 00:56:43,190
So going to jump very quickly to
addressing misconduct in TMS.

841
00:56:44,720 --> 00:56:48,176
Are we doing well when we're
talking bout misconduct

842
00:56:48,176 --> 00:56:52,784
involving attorneys? The first
thing we do is to ask, is this

843
00:56:52,784 --> 00:56:56,624
really the attorney where we
have evidence that suggested and

844
00:56:56,624 --> 00:56:59,696
attorneys information has been
used without that attorney's

845
00:56:59,696 --> 00:57:02,768
knowledge or consent, we
immediately investigate. We try

846
00:57:02,768 --> 00:57:07,376
to attempt to contact that
attorney and we try to fix that,

847
00:57:07,376 --> 00:57:11,216
especially as quickly as
possible. If we can't reach an

848
00:57:11,216 --> 00:57:15,056
attorney or we're just not sure
and we're talking about.

849
00:57:15,110 --> 00:57:17,550
Applications we might have an
examining attorney actually

850
00:57:17,550 --> 00:57:19,685
request additional bar
admission information on a

851
00:57:19,685 --> 00:57:22,735
case by case basis to make
sure that we're actually

852
00:57:22,735 --> 00:57:24,260
dealing with the real
attorney.

853
00:57:25,430 --> 00:57:29,200
Where an attorney is improperly
signing submissions an it's a

854
00:57:29,200 --> 00:57:33,347
pattern of behavior. We will
refer attorneys to the Office of

855
00:57:33,347 --> 00:57:37,117
Enrollment in Discipline. As I
mentioned before, we does have

856
00:57:37,117 --> 00:57:40,510
the power and authority to
suspend practitioners. An can

857
00:57:40,510 --> 00:57:43,903
refer conduct to an attorney
State Bar for reciprocal

858
00:57:43,903 --> 00:57:46,919
discipline. The Commissioner for
trademarks also issues show

859
00:57:46,919 --> 00:57:50,312
cause orders in appropriate
cases is essentially that can

860
00:57:50,312 --> 00:57:53,328
result in suspension from
practice in trademark matters

861
00:57:53,328 --> 00:57:55,213
and again under 1118 C.

862
00:57:55,310 --> 00:57:58,770
We can end up striking certain
documents or terminate a

863
00:57:58,770 --> 00:58:01,884
proceeding before the office
again. In the most egregious

864
00:58:01,884 --> 00:58:04,652
cases, the office will also
refer suspected criminal

865
00:58:04,652 --> 00:58:08,112
activity to the Office of the
Inspector General and sometimes

866
00:58:08,112 --> 00:58:11,226
in some cases directly to the
Department of Justice.

867
00:58:16,320 --> 00:58:17,790
Pastor Bob

868
00:58:19,100 --> 00:58:20,906
to talk about one thanks, David.

869
00:58:21,740 --> 00:58:26,888
Yeah, and I think we just like
to close here with a

870
00:58:26,888 --> 00:58:30,749
recommendation to read the
exclusion on consent order that.

871
00:58:31,940 --> 00:58:36,530
Issued about three 3 1/2
years ago now for Matthew

872
00:58:36,530 --> 00:58:39,284
Squires. He was an
experienced trademark

873
00:58:39,284 --> 00:58:43,415
attorney high volume Filer
but pursuant to the consent

874
00:58:43,415 --> 00:58:48,005
agreement he did not admit
any violations of the rules

875
00:58:48,005 --> 00:58:50,759
of professional
responsibility or the rules

876
00:58:50,759 --> 00:58:54,890
of professional conduct. But
he did agree to exclusion

877
00:58:54,890 --> 00:58:58,103
while a disciplinary
complaint was pending against

878
00:58:58,103 --> 00:59:01,775
him alleging at least 31
rules of professional.

879
00:59:03,380 --> 00:59:05,810
Responsibility and rules
of professional conduct.

880
00:59:07,050 --> 00:59:11,382
So we like to call this sort of
the baskin-robbins of ethics

881
00:59:11,382 --> 00:59:14,992
cases. It's got 31 flavors of
alleged violations. It's very

882
00:59:14,992 --> 00:59:18,963
informative. It gives you a good
idea of things that could

883
00:59:18,963 --> 00:59:22,212
potentially go wrong when
submiting things to the office.

884
00:59:23,840 --> 00:59:27,569
With that will close the
presentation, but I know we do

885
00:59:27,569 --> 00:59:30,959
have some questions that even
though we're at 4:00 o'clock

886
00:59:30,959 --> 00:59:33,332
hour, I think we can try to.

887
00:59:34,290 --> 00:59:35,730
Answer at least some of those.

888
00:59:36,680 --> 00:59:40,167
I know there was a question
about the auditing process and

889
00:59:40,167 --> 00:59:42,703
whether it's truly random and
how they're selected.

890
00:59:44,710 --> 00:59:50,586
So a registration can be audited
if a Section 8 or section 71

891
00:59:50,586 --> 00:59:52,394
decoration is timely filed.

892
00:59:52,950 --> 00:59:55,975
And the registration includes at
least one class with four or

893
00:59:55,975 --> 00:59:59,275
more goods or services, or at
least two classes with two or

894
00:59:59,275 --> 01:00:00,375
more goods or service.

895
01:00:00,490 --> 01:00:05,050
Yes, so that's how those are
selected and then in that case

896
01:00:05,050 --> 01:00:08,850
if they are selected, additional
proof of use is required.

897
01:00:11,080 --> 01:00:14,633
So we we received have been
collecting some of these I

898
01:00:14,633 --> 01:00:18,186
could ask, ask him anybody.
Jump in to answer one question

899
01:00:18,186 --> 01:00:22,385
we got. We had we received is
if use only requires an offer

900
01:00:22,385 --> 01:00:25,615
of goods for sale way must
actual sales be confirmed?

901
01:00:27,120 --> 01:00:30,996
I can answer this one right
away. I think that the person

902
01:00:30,996 --> 01:00:33,580
asking this might be
completing the patent standard

903
01:00:33,580 --> 01:00:34,872
with the trademark standard.

904
01:00:36,440 --> 01:00:40,190
Under Section 45 at the
Trademark Act used in Commerce

905
01:00:40,190 --> 01:00:45,065
for goods requires that the mark
is placed in any manner on the

906
01:00:45,065 --> 01:00:49,190
goods or their containers or
displays, or the tags or labels

907
01:00:49,190 --> 01:00:52,565
affixed thereto, or in practical
cases, on documents associated

908
01:00:52,565 --> 01:00:57,065
with the goods and the goods are
sold or transported in Commerce

909
01:00:57,065 --> 01:01:00,815
and offered for sale is not
necessarily use in Commerce.

910
01:01:03,160 --> 01:01:06,640
We received the question is a
qualified US attorney required

911
01:01:06,640 --> 01:01:10,120
in the case of the Madrid
Protocol designation that does

912
01:01:10,120 --> 01:01:12,556
not present anything requiring
an office action?

913
01:01:14,850 --> 01:01:16,040
You wanna feel that one?

914
01:01:18,470 --> 01:01:19,280
Ann

915
01:01:21,100 --> 01:01:24,719
so I was reading some of the
other questions, but in

916
01:01:24,719 --> 01:01:27,022
Madrid protocol designation
that does not present

917
01:01:27,022 --> 01:01:29,983
anything requiring an office
action, is a qualified. You

918
01:01:29,983 --> 01:01:30,970
miss attorney required.

919
01:01:33,160 --> 01:01:36,440
Well, now if it's if it's
something that would otherwise

920
01:01:36,440 --> 01:01:39,392
be approved for publication,
and that's probably what the

921
01:01:39,392 --> 01:01:42,672
examining attorney is going to
do. If there's an office

922
01:01:42,672 --> 01:01:45,296
action, that's when the
requirement would be made.

923
01:01:46,970 --> 01:01:49,310
I hope that answers the
question, not sure that

924
01:01:49,310 --> 01:01:52,170
was a question or not.
Yeah, I think I think it

925
01:01:52,170 --> 01:01:54,250
falls into that exception
in the examination guide.

926
01:01:55,760 --> 01:01:59,072
Right for US domiciled clients,
if they happen to be outside the

927
01:01:59,072 --> 01:02:01,556
United States when they signed
the Declaration, does that

928
01:02:01,556 --> 01:02:05,696
matter? Or do they need to be in
the United States with the US IP

929
01:02:05,696 --> 01:02:06,800
address when they sign?

930
01:02:11,830 --> 01:02:13,818
Do I take that David?
Well, sure.

931
01:02:16,180 --> 01:02:19,410
So there's no. There's nothing
in the rules that requires

932
01:02:19,410 --> 01:02:22,963
that a party be in a specific
location for signing the

933
01:02:22,963 --> 01:02:26,193
matter when we're talking
about the domicile rule in the

934
01:02:26,193 --> 01:02:29,423
US Council rule for domicile,
that's the question of where

935
01:02:29,423 --> 01:02:32,007
the applicant is actually
domiciled. Is somebody's on

936
01:02:32,007 --> 01:02:34,914
vacation outside the country,
and find the document from

937
01:02:34,914 --> 01:02:37,821
outside the country. That's
fine, they can do that.

938
01:02:41,450 --> 01:02:43,862
If there is no attorney
of record, is it

939
01:02:43,862 --> 01:02:45,738
possible for an
attorney to sign an

940
01:02:45,738 --> 01:02:46,810
file the PEO A?

941
01:02:51,390 --> 01:02:56,700
So. That again,
that's 217 E 2.

942
01:02:58,180 --> 01:03:02,436
E2A2 so yes, if the
applicant is unrepresented,

943
01:03:02,436 --> 01:03:07,756
then the attorney who signs
a peo a esentially is

944
01:03:07,756 --> 01:03:12,544
appearing on behalf of
signing a document on behalf

945
01:03:12,544 --> 01:03:15,736
of an otherwise
unrepresented applicant. And

946
01:03:15,736 --> 01:03:17,864
yes, that is acceptable.

947
01:03:20,720 --> 01:03:23,708
So let me see we have.

948
01:03:25,280 --> 01:03:28,701
We have a couple of questions
about ownership changes. If a

949
01:03:28,701 --> 01:03:31,189
client sells their trademark,
can the attorney representing

950
01:03:31,189 --> 01:03:33,677
the client submit the
assignment agreement and then

951
01:03:33,677 --> 01:03:36,476
withdraw representation, or
does the new owner need to

952
01:03:36,476 --> 01:03:38,653
submit and sign the
assignment? Similarly, if

953
01:03:38,653 --> 01:03:41,141
during the pendency of the
application there's an

954
01:03:41,141 --> 01:03:44,251
assignment of the application
who may sign the change of

955
01:03:44,251 --> 01:03:45,184
power of attorney?

956
01:03:51,200 --> 01:03:53,300
But do you wanna take
that? You want me to?

957
01:03:54,570 --> 01:03:58,130
Couple things that are right.
Well, we know that abandonment

958
01:03:58,130 --> 01:04:01,334
and ownership changes are
triggering events for power of

959
01:04:01,334 --> 01:04:04,894
attorney, so those cause power
of attorney to end the

960
01:04:04,894 --> 01:04:08,098
assignment questions a little
bit more complicated and bearing

961
01:04:08,098 --> 01:04:12,370
in mind that assignments at the
office are sort of a recording

962
01:04:12,370 --> 01:04:15,930
process, there's not a lot of
substitute examination that goes

963
01:04:15,930 --> 01:04:20,202
into them, but typically I think
what you want to see assignment

964
01:04:20,202 --> 01:04:24,474
is a proper conveyance of the
interest to the party, so who's

965
01:04:24,474 --> 01:04:27,564
filing it? Whether it's the
old attorney, new attorneys,

966
01:04:27,564 --> 01:04:30,484
not typically something that
we would look into and less,

967
01:04:30,484 --> 01:04:33,404
there are some other sort of
red flags going on.

968
01:04:37,900 --> 01:04:39,358
We also had a question about.

969
01:04:40,040 --> 01:04:43,340
As a user, attorneys referred
to obedient they delete goods

970
01:04:43,340 --> 01:04:44,990
in a statement of use.

971
01:04:46,070 --> 01:04:50,006
I understand why they maybe they
are deleted post audit, but what

972
01:04:50,006 --> 01:04:52,630
about during prosecution?
Sometimes clients drop items he

973
01:04:52,630 --> 01:04:56,566
truly did intend to use earlier.
No? I mean, that's not typically

974
01:04:56,566 --> 01:05:00,502
a problem. That's what we want
attorneys to do. They want we

975
01:05:00,502 --> 01:05:04,110
want them to check with their
clients before filing suit. Used

976
01:05:04,110 --> 01:05:07,718
to make sure that everything
that's listed in the notice of

977
01:05:07,718 --> 01:05:12,310
allowance is in use, and if it's
not to delete the ones that are

978
01:05:12,310 --> 01:05:15,590
not. So now that would not
trigger an OBD referral.

979
01:05:20,780 --> 01:05:25,304
Alright, let's see. We have, if
an attorney left the firm, but

980
01:05:25,304 --> 01:05:30,205
the firm is going to continue to
represent the client and in the

981
01:05:30,205 --> 01:05:33,598
application is the car form
required? Is the applicant

982
01:05:33,598 --> 01:05:36,614
signature required so generally,
if the if the.

983
01:05:37,220 --> 01:05:39,908
Firm is continuing
representation. We say normally

984
01:05:39,908 --> 01:05:44,900
if the attorney and the leaves,
the firm that at that moment we

985
01:05:44,900 --> 01:05:48,740
will essentially allow the
attorney to update and say that

986
01:05:48,740 --> 01:05:52,964
here's my new firm information,
or we will presume that somebody

987
01:05:52,964 --> 01:05:57,572
signing from the same firm that
the attorney was at earlier is

988
01:05:57,572 --> 01:06:02,180
just updating to name a new
attorney within the same firm so

989
01:06:02,180 --> 01:06:03,720
generally. I.

990
01:06:04,820 --> 01:06:09,812
Those are sticky, but generally
we will presume that if a new

991
01:06:09,812 --> 01:06:14,804
attorney at the same firm is
signing the car form, that all

992
01:06:14,804 --> 01:06:19,380
they're doing is changing around
who's listed on top, and that's

993
01:06:19,380 --> 01:06:21,044
acceptable. Will normally take

994
01:06:21,044 --> 01:06:26,318
that. Also, I know you can file
in the application of power of

995
01:06:26,318 --> 01:06:29,608
attorney listing 6 people and
that gives me attorney would

996
01:06:29,608 --> 01:06:31,253
cause seems to know that.

997
01:06:32,170 --> 01:06:33,088
There are authorized.

998
01:06:34,150 --> 01:06:38,121
It's it's good practice in
general to use that field when

999
01:06:38,121 --> 01:06:41,009
you're filing an application or
updating correspondence where

1000
01:06:41,009 --> 01:06:44,258
there are Additionally appointed
attorneys. It's helpful to the

1001
01:06:44,258 --> 01:06:47,868
office because it tells us these
people are explicitly permitted

1002
01:06:47,868 --> 01:06:48,951
to file documents.

1003
01:06:51,050 --> 01:06:54,207
What can happen in some cases
if you get an examining

1004
01:06:54,207 --> 01:06:57,077
attorney who's just not sure
they're going to end up

1005
01:06:57,077 --> 01:07:00,521
issuing an office action and
you know you can head that off

1006
01:07:00,521 --> 01:07:03,391
by filling in that information
so it's a good point,

1007
01:07:03,391 --> 01:07:03,678
Kathleen.

1008
01:07:04,960 --> 01:07:05,430
Um?

1009
01:07:07,010 --> 01:07:10,022
Is it acceptable for someone to
sign on behalf of the juristic

1010
01:07:10,022 --> 01:07:13,034
applicant on the basis that they
have power of attorney to sign

1011
01:07:13,034 --> 01:07:15,795
trademark documents on behalf of
the party but are not US

1012
01:07:15,795 --> 01:07:18,556
attorneys and do not have first
hand knowledge of the facts?

1013
01:07:19,790 --> 01:07:22,058
I think that's just a no.

1014
01:07:23,680 --> 01:07:25,990
There's not an attorney and
doesn't have is not the

1015
01:07:25,990 --> 01:07:28,300
applicant and does not have
first hand knowledge of the

1016
01:07:28,300 --> 01:07:29,455
facts. No, they cannot sign.

1017
01:07:30,850 --> 01:07:34,450
Yeah, I think there was a
related question about foreign

1018
01:07:34,450 --> 01:07:37,690
Council. They sometimes are
delegated the authority to sort

1019
01:07:37,690 --> 01:07:42,010
of act on behalf of the foreign
juristic entities that would we

1020
01:07:42,010 --> 01:07:45,610
consider that someone under our
rules who has legal authority

1021
01:07:45,610 --> 01:07:50,290
to bind in. Generally the
answer to that is no, we do get

1022
01:07:50,290 --> 01:07:53,890
asked about that from time to
time. What we're typically

1023
01:07:53,890 --> 01:07:57,850
looking for there is the
authority to be set forth in

1024
01:07:57,850 --> 01:08:00,730
the organizing documents or
bylaws or the equivalent.

1025
01:08:03,800 --> 01:08:05,726
So hopefully that answers
that question.

1026
01:08:07,200 --> 01:08:10,294
We're receiving several
questions now about extensions

1027
01:08:10,294 --> 01:08:16,482
of time to file the statement of
use and who can sign those, and

1028
01:08:16,482 --> 01:08:20,460
generally those are. I believe
those are verification because

1029
01:08:20,460 --> 01:08:24,880
it's a extension of the
statement of use. That's anybody

1030
01:08:24,880 --> 01:08:28,858
with first hand knowledge, the
applicant themselves or an

1031
01:08:28,858 --> 01:08:32,836
officer or the attorney is
permitted to sign those.

1032
01:08:37,390 --> 01:08:41,482
We do have a tricky one here
that would like to post

1033
01:08:41,482 --> 01:08:42,846
everybody. There's a bigger

1034
01:08:42,846 --> 01:08:45,565
hypothetical maybe. Some
corporations grant members of

1035
01:08:45,565 --> 01:08:47,925
their in-house legal
department's power to sign POS

1036
01:08:47,925 --> 01:08:50,875
and certain documents, such as
declarations on behalf of the

1037
01:08:50,875 --> 01:08:54,120
company. They may not even the
in-house legal team may not

1038
01:08:54,120 --> 01:08:57,660
even be lawyers or if they are
made, they may not be

1039
01:08:57,660 --> 01:08:58,250
corporate officers.

1040
01:08:59,670 --> 01:09:04,070
Granted power by the company,
how can that be effectively

1041
01:09:04,070 --> 01:09:05,830
communicated to the USPTO?

1042
01:09:07,090 --> 01:09:08,458
And I think.

1043
01:09:09,210 --> 01:09:13,578
My take on this and we may have
differing minds here, but my

1044
01:09:13,578 --> 01:09:17,610
take is that I don't think that
that matters for our purposes.

1045
01:09:19,740 --> 01:09:23,510
We we have to be objective
about how about these

1046
01:09:23,510 --> 01:09:27,657
signatures? If a person is
signing a PEO, a revocation of

1047
01:09:27,657 --> 01:09:30,673
another attorney in appointing
another, a different person.

1048
01:09:32,280 --> 01:09:37,008
For it depends on the entity
type, what title we're going to

1049
01:09:37,008 --> 01:09:40,554
accept. So just because in-house
somebody has made the

1050
01:09:40,554 --> 01:09:44,100
determination that this person
is authorized, that's not going

1051
01:09:44,100 --> 01:09:46,070
to cut it for us.

1052
01:09:47,530 --> 01:09:52,777
Yeah, and we do see in in
response to questions from

1053
01:09:52,777 --> 01:09:57,070
examining attorneys we do see
attorneys and napkins admitting

1054
01:09:57,070 --> 01:09:59,455
you know contracts or agreements

1055
01:09:59,455 --> 01:10:03,526
that say. Basically that the
juristic entity has designated

1056
01:10:03,526 --> 01:10:07,606
this person to act on their
behalf in these circumstances.

1057
01:10:07,606 --> 01:10:11,686
But again, we're generally
looking for there is is the

1058
01:10:11,686 --> 01:10:15,766
authority to have been granted
in the organizing documents or

1059
01:10:15,766 --> 01:10:20,662
the bylaws of the of the entity.
So we typically don't accept

1060
01:10:20,662 --> 01:10:24,334
those sort of extensions of the
42 to others.

1061
01:10:26,320 --> 01:10:29,656
Similar question is by
somebody else a different

1062
01:10:29,656 --> 01:10:33,409
situation where all of the
in-house counsel are also

1063
01:10:33,409 --> 01:10:37,579
granted officer titles, and so
when they file they don't.

1064
01:10:37,579 --> 01:10:41,332
They don't actually fill in
the attorney information and

1065
01:10:41,332 --> 01:10:45,502
they don't believe that these
are the attorneys of record,

1066
01:10:45,502 --> 01:10:48,838
but these people are signing
the applications and

1067
01:10:48,838 --> 01:10:52,591
responses. How do they avoid
office actions requiring bar

1068
01:10:52,591 --> 01:10:54,259
information and the like?

1069
01:10:57,220 --> 01:11:01,408
So I think here it really
depends on how the person is

1070
01:11:01,408 --> 01:11:05,247
identified in the application.
If the if the person is signing

1071
01:11:05,247 --> 01:11:08,737
the application as an officer,
then the examining attorney is

1072
01:11:08,737 --> 01:11:12,576
not necessarily going to include
in that. This is an attorney

1073
01:11:12,576 --> 01:11:16,066
that the person is signing as
trademark counsel. Then they're

1074
01:11:16,066 --> 01:11:19,556
signing with the title. That
suggests that this is the

1075
01:11:19,556 --> 01:11:22,348
attorney in the attorneys
representing this applicant, and

1076
01:11:22,348 --> 01:11:25,140
therefore they're going to
require that bar information.

1077
01:11:25,140 --> 01:11:26,885
Even with mixed titles I.

1078
01:11:27,050 --> 01:11:30,458
I believe most examining
attorneys would require the

1079
01:11:30,458 --> 01:11:34,718
bar information so to avoid
that the turn the in-house

1080
01:11:34,718 --> 01:11:37,700
counsel should use their
corporate corporate title

1081
01:11:37,700 --> 01:11:38,126
instead.

1082
01:11:40,050 --> 01:11:43,690
We had a question about the
notice of proposed rulemaking

1083
01:11:43,690 --> 01:11:48,422
and the linked to that. I will
say I believe that that proposed

1084
01:11:48,422 --> 01:11:52,062
rulemaking we had the proposed
rule was previously issued. The

1085
01:11:52,062 --> 01:11:55,702
final rule is forthcoming. I
don't believe that it's yet

1086
01:11:55,702 --> 01:11:59,706
published, so you'll have to
keep an eye out for that.

1087
01:12:00,780 --> 01:12:04,230
Right? It just cleared on the

1088
01:12:04,230 --> 01:12:07,908
yesterday. OK, yeah, so soon.

1089
01:12:09,450 --> 01:12:09,948
We can say.

1090
01:12:13,020 --> 01:12:13,620
Let's see.

1091
01:12:16,440 --> 01:12:19,248
We have some later
questions here.

1092
01:12:26,650 --> 01:12:29,938
Is it permissible use a care of
language for the owner address?

1093
01:12:32,890 --> 01:12:33,480
So.

1094
01:12:35,300 --> 01:12:36,490
Generally no.

1095
01:12:37,900 --> 01:12:42,597
A care of address is not the
applicants domicile address as

1096
01:12:42,597 --> 01:12:46,440
it's defined in the rules.
However, there are circumstances

1097
01:12:46,440 --> 01:12:47,721
where where the.

1098
01:12:48,640 --> 01:12:53,029
Where that information a post
office box or a care of

1099
01:12:53,029 --> 01:12:57,817
address might need to stay in
the record. The forms do have

1100
01:12:57,817 --> 01:13:01,807
a place to indicate domicile,
apart from the applicant, the

1101
01:13:01,807 --> 01:13:03,802
owner, the owner's
correspondence information.

1102
01:13:05,040 --> 01:13:08,956
So we recommend in most cases
that you provide the domicile

1103
01:13:08,956 --> 01:13:11,448
separate from that character
post office dress.

1104
01:13:12,100 --> 01:13:15,920
In the rare circumstances where
placing the address in the

1105
01:13:15,920 --> 01:13:20,122
record would be harmful to the
applicant or registrant for some

1106
01:13:20,122 --> 01:13:23,560
reason, generally those are
handled on petition and we

1107
01:13:23,560 --> 01:13:27,762
suggest that after you file the
petition that you contact the

1108
01:13:27,762 --> 01:13:32,346
customer service line to let us
know so that if something needs

1109
01:13:32,346 --> 01:13:36,166
to be handled immediately, we
can handle that for you.

1110
01:13:42,320 --> 01:13:46,350
Got another question about the
physical location of the person

1111
01:13:46,350 --> 01:13:47,559
when they sign.

1112
01:13:48,670 --> 01:13:52,000
Does it matter where the client
is physically located when

1113
01:13:52,000 --> 01:13:55,663
signing? For example, if the
client is US domiciled but is

1114
01:13:55,663 --> 01:13:58,660
traveling through Europe, should
the attorney now sign because

1115
01:13:58,660 --> 01:14:02,323
the client is momentarily based
outside of the US when signing?

1116
01:14:02,323 --> 01:14:03,988
No, we don't, that's not.

1117
01:14:04,640 --> 01:14:07,460
It's there's no requirement for
the person signing to be.

1118
01:14:09,100 --> 01:14:10,318
In the US when they sign.

1119
01:14:11,080 --> 01:14:16,645
The only caveat to that to watch
out for is that if it's late at

1120
01:14:16,645 --> 01:14:21,097
night in the United States and
the applicant is in Europe and

1121
01:14:21,097 --> 01:14:25,920
signs or in Asia and signs pay
attention to the date, you may

1122
01:14:25,920 --> 01:14:30,001
draw an office action if it
appears that the document was

1123
01:14:30,001 --> 01:14:34,453
signed the day after the office
received it, and you can run

1124
01:14:34,453 --> 01:14:38,163
into filing date problems or
deadline problems if you wait

1125
01:14:38,163 --> 01:14:40,389
too long. If it's the other

1126
01:14:40,389 --> 01:14:43,808
direction. So just be aware
of that. Generally a

1127
01:14:43,808 --> 01:14:46,787
statement that's that could
be cleared up at the

1128
01:14:46,787 --> 01:14:49,435
miscellaneous statement. If
it's a response to office

1129
01:14:49,435 --> 01:14:52,745
action or some other form
that has that, you can

1130
01:14:52,745 --> 01:14:56,055
indicate that the signatory
was was in a different time

1131
01:14:56,055 --> 01:14:57,710
zone that caused that issue.

1132
01:15:02,260 --> 01:15:03,520
Let's see, we have.

1133
01:15:05,600 --> 01:15:09,799
Question about what to do if the
law firm goes out of business

1134
01:15:09,799 --> 01:15:13,352
and the attorney leaves the
practice of law. If the attorney

1135
01:15:13,352 --> 01:15:16,582
is leaving the practice of law
and there are ongoing

1136
01:15:16,582 --> 01:15:19,489
applications, I would imagine
that's a situation where the

1137
01:15:19,489 --> 01:15:21,104
attorney should be requesting to

1138
01:15:21,104 --> 01:15:26,438
withdraw. From any active filed
an application or registration

1139
01:15:26,438 --> 01:15:31,498
that the attorney is currently
the attorney of record in.

1140
01:15:33,500 --> 01:15:37,240
Very often that that should
require that the attorney is

1141
01:15:37,240 --> 01:15:41,354
talking to their clients and
is passing over the files. If

1142
01:15:41,354 --> 01:15:45,468
a new attorney is taking over
the business generally will we

1143
01:15:45,468 --> 01:15:49,208
would still need some sort of
revocation and appointment of

1144
01:15:49,208 --> 01:15:52,200
the attorney signed by the
applicant for ongoing

1145
01:15:52,200 --> 01:15:52,574
applications.

1146
01:15:58,160 --> 01:16:01,338
Sorry there we do have a lot of
a lot of questions here we're

1147
01:16:01,338 --> 01:16:02,246
sorting through, so apologies.

1148
01:16:07,020 --> 01:16:10,342
Will this web and R be made
available for viewing later,

1149
01:16:10,342 --> 01:16:13,868
yes. We will have a
recording posted.

1150
01:16:25,310 --> 01:16:28,730
We had a question about Canadian
attorneys representing Canadian

1151
01:16:28,730 --> 01:16:32,150
applicants, so the question was
why are Canadian attorneys

1152
01:16:32,150 --> 01:16:35,190
allowed to represent Canadian
applicants for US? Trademark

1153
01:16:35,190 --> 01:16:36,710
registration at the USPTO?

1154
01:16:39,290 --> 01:16:45,300
This is a complicated question
with a complicated answer. The

1155
01:16:45,300 --> 01:16:50,108
Office of Enrollment in
Discipline does have limited

1156
01:16:50,108 --> 01:16:53,113
recognition of Canadian
practitioners representing

1157
01:16:53,113 --> 01:16:57,660
Canadian applicants. However,
the US Council rule.

1158
01:17:00,040 --> 01:17:03,990
Ascentia Lee changes that
dynamic a little bit. A Canadian

1159
01:17:03,990 --> 01:17:07,940
applicant or registrant is still
required to have US Council

1160
01:17:07,940 --> 01:17:10,705
Canadian recognized Canadian
practitioners who are registered

1161
01:17:10,705 --> 01:17:15,050
with OBD are able to do limited
representation. They're able to

1162
01:17:15,050 --> 01:17:20,185
do some of the things that we as
the initial slides indicated we

1163
01:17:20,185 --> 01:17:23,345
consider practice before the
office, which includes advising

1164
01:17:23,345 --> 01:17:27,690
clients an preparing documents,
but the US Attorney is the one

1165
01:17:27,690 --> 01:17:30,060
who needs to do the actual

1166
01:17:30,060 --> 01:17:31,428
submission. Of these documents.

1167
01:17:32,910 --> 01:17:34,500
So a little bit complicated.

1168
01:17:39,230 --> 01:17:42,758
So I had a question about

1169
01:17:42,758 --> 01:17:45,570
reporting. Fake specimens.

1170
01:17:47,140 --> 01:17:50,570
They note that therefore
pending application, there's

1171
01:17:50,570 --> 01:17:54,980
a TM specimen. Protests email
pilot program available where

1172
01:17:54,980 --> 01:17:59,390
third parties can report
those. Is there a similar

1173
01:17:59,390 --> 01:18:03,310
email box for post
registration and there is

1174
01:18:03,310 --> 01:18:03,800
not?

1175
01:18:06,810 --> 01:18:08,940
But we will look into that.

1176
01:18:17,280 --> 01:18:18,080
Say we.

1177
01:18:22,340 --> 01:18:23,520
Is it question about?

1178
01:18:26,050 --> 01:18:30,394
Post registration and with the
use period is what is the time

1179
01:18:30,394 --> 01:18:34,376
period during which is sales
must have been made is the

1180
01:18:34,376 --> 01:18:37,634
relevant period anytime during
the one year period, during

1181
01:18:37,634 --> 01:18:41,254
which the decoration is do.
Yeah, that is generally the

1182
01:18:41,254 --> 01:18:41,978
answer there.

1183
01:18:43,140 --> 01:18:47,352
With the statute requires is for
you to say that you have been

1184
01:18:47,352 --> 01:18:48,972
made in that statutory period.

1185
01:18:50,410 --> 01:18:53,238
So hopefully that generally
answers the question.

1186
01:18:58,650 --> 01:19:01,820
Let's see, can an applicant
sign the renewal even when

1187
01:19:01,820 --> 01:19:04,356
represented? If there is only
one declaration signature

1188
01:19:04,356 --> 01:19:07,526
section as well? Or does the
attorney needs assign well?

1189
01:19:07,526 --> 01:19:09,745
Generally, when we're at the
renewal stage?

1190
01:19:11,480 --> 01:19:14,624
With some exception, generally,
representation will have likely

1191
01:19:14,624 --> 01:19:19,340
ended by as matter of law. So
because we're we're usually post

1192
01:19:19,340 --> 01:19:23,270
post registration or post the
filing of some sort of

1193
01:19:23,270 --> 01:19:27,200
maintenance document before
another one is do. But there are

1194
01:19:27,200 --> 01:19:30,737
circumstances where in attorney
may have reappeared in the

1195
01:19:30,737 --> 01:19:34,274
record. Generally, for a
declaration, even if somebody is

1196
01:19:34,274 --> 01:19:37,811
represented, the person signing
and verification of facts may

1197
01:19:37,811 --> 01:19:38,990
may actually sign.

1198
01:19:43,530 --> 01:19:49,890
And again with a lot of these
signature questions, I do direct

1199
01:19:49,890 --> 01:19:55,720
everybody to rule 2.193. That's
37 CFR 2.193, which does contain

1200
01:19:55,720 --> 01:19:57,310
substantive direction over.

1201
01:19:58,920 --> 01:20:00,500
Which person in which?

1202
01:20:00,670 --> 01:20:02,040
M stands for which document?

1203
01:20:11,870 --> 01:20:16,298
Did we answer this one? Is it
good practice to have authorized

1204
01:20:16,298 --> 01:20:19,619
client representatives directly
sign applications as so use in

1205
01:20:19,619 --> 01:20:22,940
Section 8 filings via the email
signature? Linkin tease.

1206
01:20:25,590 --> 01:20:27,918
How do we think about that? I
think there's a couple of

1207
01:20:27,918 --> 01:20:28,888
things to be considered there.

1208
01:20:30,660 --> 01:20:33,443
Yeah, I think that that raises.
That's a good ethics question.

1209
01:20:35,020 --> 01:20:38,270
No, just because the attorney
can sign the document doesn't

1210
01:20:38,270 --> 01:20:41,520
mean the attorney should sign
the document in every case.

1211
01:20:42,830 --> 01:20:46,660
No the attorney. Again, it's
signing under 1118 B there

1212
01:20:46,660 --> 01:20:49,724
saying that they've made
reasonable inquiry that they

1213
01:20:49,724 --> 01:20:53,554
they believe the statements are
true, that the statements are

1214
01:20:53,554 --> 01:20:56,618
made with knowledge, that
understanding that they are

1215
01:20:56,618 --> 01:21:01,214
subject to penalties of perjury.
So if the attorney is not sure

1216
01:21:01,214 --> 01:21:04,661
that or doesn't have the
opportunity to make inquiry,

1217
01:21:04,661 --> 01:21:08,491
maybe the attorney should sign.
And that's the situation where

1218
01:21:08,491 --> 01:21:12,321
it probably makes more sense to
have the client sign.

1219
01:21:16,840 --> 01:21:20,437
That captain, what do you think
is coming from private practice

1220
01:21:20,437 --> 01:21:22,740
also? Right, I agree.

1221
01:21:41,970 --> 01:21:47,470
We had just now a question
about what happens to

1222
01:21:47,470 --> 01:21:52,420
documents submitted by non
attorney foreigners who may be

1223
01:21:52,420 --> 01:21:54,620
using fake attorney
information.

1224
01:21:56,200 --> 01:22:00,149
So fake information provided
to the office is going to be

1225
01:22:00,149 --> 01:22:03,021
subject to sanction under
1118. See, these are

1226
01:22:03,021 --> 01:22:05,893
situations that we're we're
talking bout fake fake

1227
01:22:05,893 --> 01:22:08,765
attorney information that's
egregious conduct. I think in

1228
01:22:08,765 --> 01:22:12,355
most cases that's going to
result in something like a

1229
01:22:12,355 --> 01:22:14,868
show cause order and the
Commissioner potentially

1230
01:22:14,868 --> 01:22:17,740
ordering termination of the
proceedings for anybody who

1231
01:22:17,740 --> 01:22:21,689
may be involved. That's the
type of conduct too that can

1232
01:22:21,689 --> 01:22:24,920
end up being referred to Ed,
or potentially a.

1233
01:22:26,350 --> 01:22:28,778
Referral to criminal
investigator.

1234
01:22:32,610 --> 01:22:35,888
Let's see, here's an interesting
one. Assume I have a suitable

1235
01:22:35,888 --> 01:22:39,166
specimen showing use on one
product for the class, but now

1236
01:22:39,166 --> 01:22:42,444
I'm conducting due diligence for
the remaining items in the class

1237
01:22:42,444 --> 01:22:46,318
for the Section 8 filing. If I
can see the products offered for

1238
01:22:46,318 --> 01:22:49,596
sale on the client's website,
but the website itself would not

1239
01:22:49,596 --> 01:22:52,874
qualify as an acceptable online
point of sale display, I cannot

1240
01:22:52,874 --> 01:22:56,450
see the market actually fixed
the goods in the picture on the

1241
01:22:56,450 --> 01:23:00,026
website. Must I ask the client
to send pictures that show the

1242
01:23:00,026 --> 01:23:01,814
mark of fixed every single one

1243
01:23:01,814 --> 01:23:03,878
of those goods? Or their
packaging?

1244
01:23:07,590 --> 01:23:09,588
Kathleen, what do you?
What do you think about?

1245
01:23:09,588 --> 01:23:10,698
What would you have done?

1246
01:23:12,430 --> 01:23:15,470
In your prior life as the
outside practitioner.

1247
01:23:16,580 --> 01:23:17,130
Wow.

1248
01:23:21,200 --> 01:23:24,920
I think it would it. Well,
obviously, one specimen support,

1249
01:23:24,920 --> 01:23:29,012
you know, 'cause then in one
class is are different so.

1250
01:23:29,950 --> 01:23:31,580
And less did something very.

1251
01:23:32,160 --> 01:23:35,023
Sophisticated by computer
hardware software, chemicals, I

1252
01:23:35,023 --> 01:23:37,886
might do that, but if it's like.

1253
01:23:39,000 --> 01:23:40,850
Something simple
like clothing or.

1254
01:23:42,320 --> 01:23:45,656
Paper product I think I would go
with what the clients said

1255
01:23:45,656 --> 01:23:49,838
David. Yeah, I, I think
reasonable inquiry here would be

1256
01:23:49,838 --> 01:23:53,458
satisfied if you believe that
your client is actually selling

1257
01:23:53,458 --> 01:23:57,440
these things, even if you can't
get a good specimen yourself

1258
01:23:57,440 --> 01:24:00,698
from the website. I think
reasonably if you're audited,

1259
01:24:00,698 --> 01:24:04,680
you'd you'd have a high
likelihood of being able to get

1260
01:24:04,680 --> 01:24:08,662
a specimen from the client, so I
think you'd be fine.

1261
01:24:09,780 --> 01:24:13,900
And I chemical chemical client
and we would do declarations

1262
01:24:13,900 --> 01:24:18,432
from the president attesting to
the fact that they are being

1263
01:24:18,432 --> 01:24:22,964
shipped in containers and the
marks not on it. And that

1264
01:24:22,964 --> 01:24:25,024
usually was sufficient to two.

1265
01:24:25,980 --> 01:24:28,290
Explain why there's no
actual physical specimen.

1266
01:24:31,270 --> 01:24:33,180
We received a question about.

1267
01:24:34,140 --> 01:24:38,130
Doing a change of representation
after taking over from a

1268
01:24:38,130 --> 01:24:41,721
different firm who can sign
again, these are situations

1269
01:24:41,721 --> 01:24:43,317
where when you're changing

1270
01:24:43,317 --> 01:24:47,430
representation. If the
representation was on going,

1271
01:24:47,430 --> 01:24:51,840
then the applicant or registrant
must sign. If the.

1272
01:24:53,610 --> 01:24:57,558
If the representation is ended
as a matter of law, than the

1273
01:24:57,558 --> 01:25:00,519
attorney can sign, but only in
those limited circumstances.

1274
01:25:08,450 --> 01:25:14,006
To the person who thanked us
for the funny names. In the

1275
01:25:14,006 --> 01:25:17,710
hypothetical, we appreciate
your compliments on that that

1276
01:25:17,710 --> 01:25:20,951
fix some thoughtful
preparation. All David. He

1277
01:25:20,951 --> 01:25:23,266
gets the credit and apply.

1278
01:25:31,390 --> 01:25:32,602
Looks like we have time for

1279
01:25:32,602 --> 01:25:35,776
maybe a couple more. Yeah,
it looks like it. Thanks

1280
01:25:35,776 --> 01:25:38,395
for everybody. Apologies
for the for the delays here

1281
01:25:38,395 --> 01:25:41,305
between we are reading the
questions as they come in.

1282
01:25:43,880 --> 01:25:47,120
Let's talk about it. In the
absence of a reason to think

1283
01:25:47,120 --> 01:25:49,820
that a client is lying,
shouldn't attorney be able to

1284
01:25:49,820 --> 01:25:52,520
rely on representations from the
client to sign, provided the

1285
01:25:52,520 --> 01:25:53,870
legal standard for submiting SLU

1286
01:25:53,870 --> 01:25:56,650
decorations, etc. Are provided
to the client.

1287
01:25:57,950 --> 01:25:59,006
What do we think about that?

1288
01:26:00,200 --> 01:26:03,230
I don't think it's that
broad. I think the rule

1289
01:26:03,230 --> 01:26:04,139
requires reasonable inquiry.

1290
01:26:06,100 --> 01:26:06,460
No.

1291
01:26:09,530 --> 01:26:13,138
Unfortunately, clients don't
always tell the truth, and

1292
01:26:13,138 --> 01:26:16,746
they're not always forthcoming
with information, I think.

1293
01:26:18,680 --> 01:26:23,516
If the attorney is signing for,
certainly want to make sure if I

1294
01:26:23,516 --> 01:26:27,980
were signing on behalf of my
client, I would want to make

1295
01:26:27,980 --> 01:26:31,700
sure that I was reasonably
certain that I wasn't committing

1296
01:26:31,700 --> 01:26:33,560
something false to the office.

1297
01:26:35,990 --> 01:26:39,520
Yeah, and I think as a
matter of good practice.

1298
01:26:41,400 --> 01:26:45,264
And you know you are Kathleen
can chime in, but it's probably

1299
01:26:45,264 --> 01:26:49,128
good to document some of these
things. You know what? What did

1300
01:26:49,128 --> 01:26:52,992
you do in terms of due diligence
in terms of reasonable inquiry

1301
01:26:52,992 --> 01:26:54,602
before you submit it something

1302
01:26:54,602 --> 01:26:57,982
or sign something? I think
that's just good practice,

1303
01:26:57,982 --> 01:27:01,084
and it's sort of an insurance
policy in case anything comes

1304
01:27:01,084 --> 01:27:01,930
into question later.

1305
01:27:03,360 --> 01:27:05,320
That's great, yes, great

1306
01:27:05,320 --> 01:27:08,175
practice. Don't take a
lot of time so.

1307
01:27:11,220 --> 01:27:15,913
If we have a US lcy, but the
actual domicile is outside the

1308
01:27:15,913 --> 01:27:17,718
United States, what can they

1309
01:27:17,718 --> 01:27:22,072
sign so? The you're talking bout
a foreign domiciled company.

1310
01:27:22,072 --> 01:27:26,380
Even though it's formed in the
United States if its domicile as

1311
01:27:26,380 --> 01:27:30,688
defined under a rule is outside
the United States, they need a

1312
01:27:30,688 --> 01:27:34,637
US attorney. So that means that
documents that should be signed

1313
01:27:34,637 --> 01:27:38,227
by an attorney need to be signed
by that attorney.

1314
01:27:38,890 --> 01:27:43,186
A document though, that is that
the applicant can sign would be

1315
01:27:43,186 --> 01:27:46,408
something like the revocation
and appointment of a new

1316
01:27:46,408 --> 01:27:49,630
attorney. The applicant is still
responsible for signing those.

1317
01:27:49,630 --> 01:27:52,852
The applicant can still also
sign a declaration or

1318
01:27:52,852 --> 01:27:56,432
verification of fact if it's a
mixed submission. That's the

1319
01:27:56,432 --> 01:27:59,654
situation where you might have
the applicant sign the

1320
01:27:59,654 --> 01:28:02,876
verification of the Declaration
statement, but they have the

1321
01:28:02,876 --> 01:28:05,740
attorney assigned the submission
against certain forms that

1322
01:28:05,740 --> 01:28:06,814
applies to but.

1323
01:28:07,540 --> 01:28:11,930
I'm. Yeah, the interplay doesn't
change for if the company is

1324
01:28:11,930 --> 01:28:15,250
represented by an attorney.
Doesn't matter if the company is

1325
01:28:15,250 --> 01:28:18,570
inside the United States or
outside the United States. The

1326
01:28:18,570 --> 01:28:21,890
attorney is the one who should
be submitting anything that

1327
01:28:21,890 --> 01:28:25,210
that's an amendment or change to
the application or registration.

1328
01:28:31,630 --> 01:28:34,380
We've had some kovid related
questions. I think that might be

1329
01:28:34,380 --> 01:28:36,130
a good thing to finish up on.

1330
01:28:37,910 --> 01:28:43,562
Just a generally, maybe we can
Bob if maybe you could address

1331
01:28:43,562 --> 01:28:47,626
are. Covid relief and what the
offices has done.

1332
01:28:51,000 --> 01:28:57,118
Well, yeah, I think in the in
the past we did have some cover

1333
01:28:57,118 --> 01:29:01,925
relief in terms of extension of
deadlines, so those come into

1334
01:29:01,925 --> 01:29:05,858
play in certain circumstances.
We've also had some initiatives

1335
01:29:05,858 --> 01:29:09,354
including petitions to make
special for certain kovid

1336
01:29:09,354 --> 01:29:13,724
related goods and services where
you could maybe advanced those

1337
01:29:13,724 --> 01:29:18,094
two assignment two oven to an
examining attorney little bit

1338
01:29:18,094 --> 01:29:19,842
more quickly than usually.

1339
01:29:20,170 --> 01:29:21,610
What would occur?

1340
01:29:23,630 --> 01:29:27,502
But I cannot look to see what
the specific questions about

1341
01:29:27,502 --> 01:29:31,022
Covid were. So 'cause my
questions are not advancing so.

1342
01:29:32,760 --> 01:29:35,466
We do have quite a bit of
information on the website

1343
01:29:35,466 --> 01:29:36,204
if you need.

1344
01:29:37,460 --> 01:29:39,268
To have that information.

1345
01:29:39,940 --> 01:29:43,876
As I think we've said at the
beginning, if there are any

1346
01:29:43,876 --> 01:29:47,156
questions that we didn't
answer here or that occur to

1347
01:29:47,156 --> 01:29:50,108
you later, please feel free to
send them to

1348
01:29:50,108 --> 01:29:50,436
tmpolicy@uspto.gov.

1349
01:29:52,200 --> 01:29:55,456
Upcoming events slide one more.
I think it is the email.

1350
01:29:57,760 --> 01:29:58,348
There we go.

1351
01:30:02,540 --> 01:30:02,860
Right?

1352
01:30:03,970 --> 01:30:07,074
Thank you for everyone for
attending our presentation

1353
01:30:07,074 --> 01:30:10,954
today. You should already have
received an email with the

1354
01:30:10,954 --> 01:30:15,610
survey. We hope that you will
complete the survey to let us

1355
01:30:15,610 --> 01:30:19,878
know how we did today and any
suggestions for future webinar

1356
01:30:19,878 --> 01:30:23,370
topics for those viewing the
recorded version of this

1357
01:30:23,370 --> 01:30:26,862
presentation, please feel free
to email your feedback and

1358
01:30:26,862 --> 01:30:28,026
suggestions to
tmunderscorewebinar@uspto.gov.

1359
01:30:28,026 --> 01:30:31,906
Thank you and have a great rest
of your day.