611.05 Processing Documents Signed by an Improper Party
When examining a document filed in connection with a trademark application or registration, the USPTO staff must ensure that all documents are signed by a proper party. See TMEP §611.02.
Responses in examination. When it appears that a response to an Office action is signed by an improper party, the examining attorney must generally treat the response as incomplete and follow the procedures in TMEP §611.05(a)-(c). The response may not be ratified by an examiner’s amendment. See TMEP §611.03(b) regarding who can sign a response. The examining attorney must ensure that the record establishes a proper party signed the response.
For a response to an Office action signed by an applicant who was required to appoint a qualified U.S. attorney but did not do so, the examining attorney will issue a final Office action, if appropriate, reiterating the requirement to appoint a qualified U.S. attorney and indicating all issues that are made final. See TMEP §601.01(a) regarding amendments to an application by an applicant required to appoint a U.S. attorney.
Responses in post registration. When it appears that a response to an Office action is signed by an improper party, the post registration staff must treat the response as incomplete and follow the procedures in TMEP §611.05(a)-(c). See TMEP §611.03(b) regarding who can sign a response.
For a response to an Office action signed by a registrant who has been required to appoint a qualified U.S. attorney but did not do so, the post registration specialist will issue a second Office action reiterating the requirement to appoint a qualified U.S. attorney.
Other submissions. If a submission other than a response to an Office action (e.g., a proposed amendment to an application that is not responsive to an Office action, a petition to the Director under 37 C.F.R. §2.146 or §2.147, or an express abandonment) is signed by an improper party, the USPTO will notify the applicant or registrant that no action will be taken on the submission, unless the applicant or registrant either: (1) establishes the signatory’s authority; or (2) provides a properly signed submission.
See TBMP §106.02 for information about signature of documents filed in Board proceedings.
611.05(a) Notice of Incomplete Response when Authority of Person Signing Response Is Unclear
If it appears that a response to an examining attorney’s Office action is signed by an improper party, and the applicant is not required to be represented by a qualified U.S. attorney, the examining attorney must treat the response as an incomplete response, and grant the applicant 30 days, or to the end of the response period set forth in the previous Office action, whichever is longer, to perfect the response, pursuant to 37 C.F.R. §2.65(a)(2). See TMEP §718.03(b). The applicant must submit a response properly signed in accordance with the guidelines in TMEP §611.03(b). These same principles and procedures apply to responses to Office actions issued by other USPTO employees (e.g., staff in the Post Registration Section, ITU/Divisional Unit, or Office of Petitions).
See also TMEP §712.03.
611.05(b) Replying to a Notice of Incomplete Response
If the individual whose name appears beneath the signature is an authorized signer, and the applicant is not represented by a qualified U.S. attorney or required to be represented by a qualified U.S. attorney, he or she may simply telephone or send an email message to clarify the record, and the USPTO staff will make an appropriate Note to the File in the record, review the previously submitted response, and take the appropriate action.
A proper reply to a notice of incomplete response must state the nature of the relationship of the signer to the applicant or registrant. If the signer has legal authority to bind the applicant or registrant, the person should so state, and must set forth his or her title or position. If the signer is a qualified U.S. attorney who may practice before the USPTO pursuant to 37 C.F.R. §11.14(a),the attorney should identify himself or herself as such an attorney and must provide the required bar information and statement of good standing. See TMEP §§602.01, 602.01(a). If the signer meets the requirements of 37 C.F.R. §§11.14(b) or (c), the person should explain how he or she meets these requirements.
In a pending application, if the person who signed the response is not an authorized signer, the applicant is not represented by a qualified U.S. attorney or required to be represented by a qualified U.S. attorney, and all proposed amendments in the improperly signed response can be resolved by an examiner’s amendment, then the individual applicant or a person with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership) may telephone the examining attorney to authorize such an amendment. Otherwise, when the person who signed the response is not an authorized signer, the applicant must timely submit a properly signed response. See TMEP §§611.03(b), 611.06–611.06(h), and 712.01 regarding the proper party to sign a response to an Office action.
See TMEP §604.04 regarding changes of attorney.
611.05(c) Unsatisfactory Response or Failure to Respond
Pending Applications. If there is an unsatisfactory response or no response is received to the notice of incomplete response issued in connection with the application, the USPTO will abandon the application for incomplete response. See TMEP §718.03(a) for procedures for holding an application abandoned for failure to respond completely.
Post Registration. If there is an unsatisfactory response or no response is received to the notice of incomplete response issued in connection with an affidavit of use or excusable nonuse under §8 or §71, or a §9 renewal application, the USPTO will notify the registrant that the affidavit or renewal application remains unacceptable, and that the registration will be cancelled and/or expired in due course. In the case of a §7 request, the USPTO will notify the registrant that the request for amendment or correction is abandoned.