611.05    Processing Documents Signed by Someone Other Than the Applicant or the Applicant’s Designated Attorney  

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.  

When it appears that a response to an Office action is signed by an improper party, the USPTO staff must treat the response as incomplete.   See TMEP §611.05(a).

When it appears that a document 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 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 document, unless the applicant or registrant either:  (1) establishes the signatory’s authority; or (2) submits a properly signed document.

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, 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 signed by the individual applicant, someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner.  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, Madrid Processing 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, he or she may simply telephone or send an e-mail 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. If the record does not contain the name of the individual who entered the combination of letters, numbers, spaces, and/or punctuation between two forward slash symbols, a response signed by an authorized party is required. See TMEP §611.

A proper reply to a notice of incomplete response should 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 should set forth his or her title or position.  If the signer is an attorney who may practice before the USPTO pursuant to 37 C.F.R. §11.14(a),the attorney should identify himself or herself as an attorney and indicate the bar of the U.S. state of which he or she is a member in good standing.  If the signer meets the requirements of either 37 C.F.R. §§11.14(b)  or (c), the person should explain how he or she meets these requirements.  For example, a Canadian attorney or agent recognized to practice before the USPTO in trademark cases by OED ( see TMEP §602.03(a)) may simply state he or she has received recognition by OED as a Canadian practitioner under §§11.14(c) and (f).

In a pending application, if the person who signed the response is not an authorized signer, and all proposed amendments in the improperly signed response can be resolved by an examiner’s amendment, 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 submit a response signed by the individual applicant, someone with legal authority to bind a juristic applicant, or a qualified practitioner.  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 §604.03 regarding changes of attorney.

611.05(c)    Unsatisfactory Response or Failure to Respond

Pending Applications.  In a pending application, if an unsatisfactory response or no response is received to the notice of incomplete response, 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 inadequate response or no response to a 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 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.