| Trademark Correspondence and Fees |
Referenced Items (455, 456, 457, 458, 459, 460, 461, 462, 463, 464, 465, 466, 467, 468, 469) |
(455) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Parts 2 and 11
[Docket No. PTO-T-2008-0021]
RIN 0651-AC26
Changes in Requirements for Signature of Documents,
Recognition of Representatives, and
Establishing and Changing the Correspondence
Address in Trademark Cases
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule
SUMMARY: The United States Patent and Trademark Office ("Office") is
revising the Trademark Rules of Practice to set forth the requirements
for signature of documents filed in the Office, recognition of
representatives, and establishing and changing the correspondence address
in trademark cases.
DATES: This rule is effective December 28, 2009.
SUPPLEMENTARY INFORMATION: As noted above, the Office is revising the
Trademark Rules of Practice (37 CFR Part 2) to set forth the requirements
for signature of documents filed in the Office, recognition of
representatives, and establishing and changing the correspondence address
in trademark cases. The purpose of the rule is to codify and clarify current
practice. Practice before the Trademark Trial and Appeal Board ("TTAB")
is largely unaffected by the rule.
References below to "the Act" or "the Trademark Act" refer to the
Trademark Act of 1946, 15 U.S.C. 1051 et seq., as amended. References to
"TMEP" or "Trademark Manual of Examining Procedure" refer to the 5th edition,
September 2007. References to the "TBMP" or "Trademark Trial and Appeal Board
Manual of Procedure" refer to the 2nd edition, Rev. 1, March 12, 2004.
References to a "party to a proceeding" refer to a party to a proceeding
before the TTAB, e.g., an opposer, cancellation petitioner, or party to an
interference or concurrent use proceeding.
On August 14, 2008, the Office published a final rule that, inter alia,
removed 10.14 and 10.18 of this chapter and replaced them with new
11.14 and 11.18; added a definition of "attorney" to 11.1 of this
chapter; added 11.14(f), setting forth the requirements and establishing a
fee for filing a request for reciprocal recognition under 11.14(c) of this
chapter; and changed cross-references in several of the rules in parts
2 and 7 of this chapter, effective September 15, 2008.
See Changes to Representation of Others Before the United States Patent
and Trademark Office, 73 FR 47650 (Aug. 14, 2008).
The cross-references in this notice have been changed accordingly.
The Office has recently published another final rule, Miscellaneous
Changes to Trademark Rules of Practice, RIN 0651-AB89, 73 FR 67759
(November 17, 2008). The changes made therein are reflected in 2.62,
2.74, 2.87, 2.146(c), 2.153, 2.163, 2.167, 2.171(b)(1), and 2.184 below.
Overview of Office Practice
Persons Authorized To Represent Others
Under 37 CFR 11.14 of this chapter, only the following individuals may
represent an applicant, registrant, or party to a proceeding before the
Office in a trademark case:
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An attorney as defined in 11.1 of this chapter, i.e., an attorney who
is a member in good standing of the bar of the highest court of a state in
the United States;
A Canadian patent agent who is registered and in good standing as a patent
agent under 11.6(c) for the limited purpose of representing parties located
in Canada;
A Canadian attorney or agent who has been granted recognition by the
Director of the Office of Enrollment and Discipline of the United States
Patent and Trademark Office ("OED Director") to represent parties located
in Canada, pursuant to 11.14(f) of this chapter; or
An individual who is not an attorney but was recognized to practice
before the Office in trademark cases under this chapter prior to
January 1, 1957.
See Trademark Manual of Examining Procedure ("TMEP") sections 602 and
602.06 et seq.
An individual who does not meet the requirements of § 11.14 of this
chapter cannot: Prepare documents to be filed in the Office; sign
amendments, responses to Office actions, petitions to the Director under
2.146, letters of express abandonment, or notices of change of
correspondence address for applications or registrations; authorize issuance
of examiner's amendments and priority actions; or otherwise represent an
applicant, registrant, or party to a proceeding in the Office. 5 U.S.C.
500(d); 37 CFR 11.14(e); TMEP sections 602.03 and 605.02.
Recognition of Representative
To be recognized as a representative, a practitioner qualified to
practice under § 11.14 of this chapter ("qualified practitioner") may:
File a power of attorney signed by the applicant, registrant, or party
to a proceeding in a trademark case, or by someone with legal authority to
bind the applicant, registrant, or party (e.g., a corporate officer or
general partner of a partnership);
Sign a document on behalf of an applicant, registrant, or party to a
proceeding who is not already represented by a qualified practitioner from
a different firm; or
Appear in person on behalf of an applicant, registrant, or party to a
proceeding who is not already represented by a qualified practitioner from
a different firm.
37 CFR 2.17(c); TMEP sections 602.01 and 602.07.
Once the Office has recognized a qualified practitioner as the
representative of an applicant or registrant, the Office will communicate
and conduct business only with that practitioner, or with another qualified
practitioner from the same firm. The Office will not conduct business
directly with the applicant or registrant, or with another qualified
practitioner from a different firm, unless the applicant or registrant files
a new power of attorney or revocation of the previous power. TMEP sections
601.02, 602.07, and 603.02(a). A motion to withdraw is generally required
when a qualified practitioner recognized by the TTAB will no longer be
representing a party to a proceeding. Trademark Trial and Appeal Board
Manual of Procedure ("TBMP") section 513.
For purposes of recognition as a representative, the Office considers
a power of attorney to end when the mark is registered, when ownership
changes, or when the application is abandoned. TMEP section 602.01. An
appointment of domestic representative, however, remains in effect unless
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specifically revoked or supplanted by appointment of a new domestic
representative.
After a change in ownership has been recorded, if a new qualified
practitioner appears on behalf of the new owner, the Office will
communicate and conduct business with that practitioner even absent a
new power of attorney or revocation of the previous power. If the
previously recognized practitioner appears on behalf of the new owner
(which might occur when the new owner is a related company), the Office
will continue to conduct business and correspond with that
practitioner.
Establishing the Correspondence Address for Application or Registration
Upon receipt of a new application, the Office enters the correspondence
address in accordance with the following guidelines:
If the application is transmitted by a qualified practitioner, or
includes a power of attorney designating a qualified practitioner, the
Office will send correspondence to the practitioner;
If an application is not being prosecuted by a qualified practitioner,
but the applicant designates in writing a correspondence address other than
its own address, the Office will send correspondence to that address if
appropriate;
If an application is not being prosecuted by a qualified practitioner
and the applicant has not designated a correspondence address, but a
domestic representative has been appointed, the Office will send
correspondence to the domestic representative if appropriate;
or
If the application is not being prosecuted by a qualified practitioner,
no domestic representative has been appointed, and the applicant has not
designated a different address for correspondence, the Office will send
correspondence directly to the applicant at its address of record.
37 CFR 2.18; TMEP section 603.01.
The Office reestablishes the correspondence address in accordance with
these guidelines upon the examination of an affidavit under section 8,
12(c), 15, or 71 of the Trademark Act, renewal application under section
9 of the Act, or request for amendment or correction of a registration under
section 7 of the Act. TMEP section 603.02(c). Due to the length of time that
may elapse between registration and filings under sections 7, 8, 9, 12(c),
15, and 71 of the Act (which could be 10 years or more), the Office will
recognize a qualified practitioner who transmits such a filing even absent
a new power of attorney or revocation of a previous power.
Changing the Correspondence Address in an Application or Registration
Once the correspondence address is established as discussed above,
the Office will generally send correspondence to that address until a
written request to change the address is submitted, signed by the
practitioner whom the Office has recognized, or by the applicant or
registrant or someone with legal authority to bind the applicant or
registrant (e.g., a corporate officer or general partner of a partnership)
if the applicant or registrant is not represented by a qualified
practitioner. 37 CFR 2.18(b); TMEP sections 601.02, 602.07, and 603.02(a).
Once the Office recognizes a qualified practitioner as the representative
of an applicant or registrant, only that practitioner or another qualified
practitioner from the same firm may sign a request to change the address,
unless the applicant or registrant files a new power of attorney or
revocation of the previous power, or the recognized practitioner files a
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request to withdraw.TMEP sections 603.02(a) and 605.02.
If a qualified practitioner transmits documents on behalf of an
applicant or registrant who is not already represented by another qualified
practitioner from a different firm, the Office will construe this as
including a request to change the correspondence address to that of the
practitioner. TMEP section 603.02(a).
Documents Must Be Properly Signed
Because an individual who is not authorized under § 11.14 may not
represent an applicant, registrant, or party to a proceeding before the
Office, the Office will not act on documents that are not properly signed.
TMEP sections 602.03 and 605.02. When it is unclear whether a proper person
has signed a response to an Office action, the Office will notify the
applicant or registrant that the response is incomplete. See TMEP sections
605.05(a) and 712.03 regarding notices of incomplete response. When it is
unclear whether a proper person has signed a document other than a response
to an Office action, the Office will notify the applicant or registrant that
no action will be taken on the document unless the applicant or registrant
either establishes the signatory's authority or submits a properly signed
document. See TMEP section 605.05.
Unauthorized Practice
When the Office learns that a person who is not qualified under § 11.14
is acting as the representative of an applicant, registrant, or party
to a proceeding, the Office will notify the affected applicant, registrant,
or party that the individual is not entitled to practice before the Office in
trademark matters and therefore may not represent the applicant, registrant,
or party; that any power of attorney is void ab initio; that the individual
may not sign responses to Office actions; and that all correspondence will
be sent to the domestic representative if appropriate or, alternatively,
to the applicant, registrant, or party at its address of record. If the
Office receives a response signed by such an unqualified person, the response
will be treated as incomplete. This same practice is followed when the Office
learns that a practitioner has been suspended or excluded from practice
before the Office.
Rule Changes
Terminology
Comment: One commenter asserts that the terms "registrant," "owner,"
"owner of a mark" and "owner of the registration" are used interchangeably
throughout the rules, and requests clarification.
Response: These terms are not interchangeable. "Registrant" is broader
than "owner," as it embraces the legal representatives, predecessors,
successors and assigns of the current owner, pursuant to section 45 of the
Trademark Act.
In rules that govern the representation of others and the establishment
of the correspondence address, the Office has used the broader term
"registrant," to encompass all parties who could be represented or receive
correspondence in connection with an application, registration, or proceeding
in the Office. In rules that govern the proper party to sign and file
affidavits under sections 8 and 15 of the Act, and requests for correction,
amendment or surrender under section 7 of the Act, the more specific term
"owner" is used. In § 2.184, which governs renewal applications, the term
"registrant" is used for consistency with section 9 of the Act. Section 9,
as amended by the Trademark Law Treaty Implementation Act, does not require
that a renewal application be filed in the name of the owner of the
registration. Therefore, if a renewal applicant is not the owner of record,
the Office does not require that the renewal applicant show continuity of
title from the original registrant before granting renewal. See TMEP
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section 1606.06.
Discussion of Specific Rules
A proposed rule was published in the Federal Register on June 12,
2008, at 73 FR 33345, and in the Official Gazette on July 8, 2008. The
Office received comments from one law firm and one organization. These
comments are posted on the Office's Web site at http://www.uspto.gov/web/
offices/pac/dapp/opla/comments/tm_comments2008aug20a/index.htm and are
addressed below.
Where appropriate, the Office has reworded and/or reorganized the rules
for clarity, and added headings to facilitate navigation through the rules.
Section 2.17(a) is redesignated as 2.17(b)(2).
Section 2.17(b) is redesignated as 2.17(f).
Section 2.17(c) is redesignated as 2.17(b), and revised to provide that
the Office will recognize a qualified practitioner who signs a document or
appears in person in a trademark case only if the applicant or registrant is
not already represented by a qualified practitioner from a different firm.
This is consistent with TMEP sections 602.01 and 602.07.
Section 2.17(c) sets forth the requirements for powers of attorney.
A power must: (1) Designate by name at least one practitioner qualified
to practice under 37 CFR § 11.14; and (2) be signed by the individual
applicant, registrant, or party to a proceeding pending before the Office,
or by someone with legal authority to bind the applicant, registrant, or
party (e.g., a corporate officer or general partner of a partnership). Once
an applicant, registrant, or party to a proceeding has designated a qualified
practitioner(s), that practitioner may sign an associate power of attorney
appointing another qualified practitioner(s) as an additional person(s)
authorized to represent the applicant, registrant, or party to a proceeding.
This is consistent with TMEP sections 602.01 and 602.01(b).
Section 2.17(c)(2) provides further that if the applicant, registrant, or
party revokes an original power of attorney, the revocation discharges any
associate power signed by the practitioner whose power has been revoked; and
that if the practitioner who signed an associate power withdraws, the
withdrawal discharges any associate power signed by the withdrawing
practitioner upon acceptance of the request for withdrawal by the Office.
Comment: One comment noted that the proposed rule did not address
unrepresented joint applicants.
Response: Section 2.17(c)(2) now states that in the case of joint
applicants or joint registrants, all must sign the power of attorney. This
is consistent with 2.193(e)(3).
Section 2.17(d) is amended to provide that the owner of an application or
registration may appoint an attorney through the Trademark Electronic
Application System ("TEAS") for up to twenty applications or registrations
per TEAS form that have the identical owner and attorney. This is consistent
with TMEP section 602.01(a).
Section 2.17(e) sets forth the circumstances under which a Canadian
attorney or agent may represent parties located in Canada. A Canadian
patent agent who is registered with the Office and in good standing as
a patent agent under 11.6(c) may represent parties located in
Canada before the Office in trademark matters. A Canadian attorney or
agent who is registered or in good standing with the Canadian Intellectual
Property Office, but not registered as a patent agent under § 11.6(c),
may represent parties located in Canada if he or she has been authorized to
do so by the OED Director. Before undertaking to represent an applicant,
registrant, or party before the Office, and before filing a paper with the
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Office, a Canadian attorney or agent who is not registered with the Office
and in good standing as a patent agent under § 11.6(c) must file an
application for and be granted reciprocal recognition to practice before the
Office in trademark cases, pursuant to 11.14(f) of this chapter. The
application for reciprocal recognition must include the fee required by
1.21(a)(1)(i) of this chapter, and proof that the attorney or agent
satisfies the requirements of 35 U.S.C. 32 and 37 CFR 11.14(c).
See notice at 73 FR 47650 (Aug. 14, 2008). The OED Director must grant
the request for reciprocal recognition before representation is undertaken
and before the Canadian attorney or agent files an application or other
document in the Office.
Once recognized by OED, the Canadian attorney or agent may only
represent parties who are located in Canada. He or she cannot represent
Canadian nationals who are not located in Canada. Thus, for example, a
Canadian attorney or agent may not represent a Canadian national who
resides in California and has access to a mailing address in Canada.
Section 2.17(g)(1) is added to provide that the Office considers a
power of attorney to end with respect to a pending application when the
mark is registered, when ownership changes, or when the application is
abandoned. This is consistent with TMEP section 602.01.
Section 2.17(g)(2) provides that the Office considers a power of
attorney filed after registration to end when the registration is
cancelled or expired, or when ownership changes. If the power was filed
in connection with an affidavit under section 8, 12(c), 15 or 71 of the
Trademark Act, renewal application under section 9 of the Act, or
request for amendment or correction under section 7 of the Act, the
power is deemed to end upon acceptance or final rejection of the
filing.
Section 2.18 is reorganized to clarify the procedures for
establishing and changing a correspondence address.
Section 2.18(a)(2) provides that if a qualified practitioner
transmits a document(s) on behalf of an applicant or registrant, the
Office will send correspondence to the practitioner transmitting the
document(s) only if the applicant or registrant is not already
represented by another qualified practitioner from a different firm.
This is consistent with TMEP sections 602.07, 603.01, and 603.02(a).
Section 2.18(a)(6) provides that the Office will send
correspondence to only one address in an ex parte matter. This is
consistent with current 2.18(b).
Comment: If correspondence is being sent electronically, there
would appear to be no reason why the Office cannot send correspondence
to more than one e-mail address. The TTAB sends correspondence to more
than one e-mail address, as requested by the parties who file papers
with the TTAB.
Response: The Office has revised 2.18(a)(6) to indicate that
it applies only to ex parte matters. Sending e-mail correspondence to
more than one address in an ex parte matter would create confusion. It
is important that the Office, as well as any interested third parties,
have one specific address to which correspondence concerning an
application or registration can be sent. It is also important that an
applicant, registrant, or party to a proceeding know where to look for
official correspondence and who is responsible for handling incoming
communications.
Section 2.18(a)(7) provides that once the Office has recognized a
qualified practitioner as the representative of an applicant or
registrant, the Office will communicate and conduct business only with
that practitioner, or with another qualified practitioner from the same
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firm. The Office will not conduct business directly with the applicant
or registrant, or with another qualified practitioner from a different
firm, unless the applicant or registrant files a revocation of the
power of attorney under § 2.19(a) and/or a new power of attorney
that meets the requirements of 2.17(c). The rule provides further
that a written request to change the correspondence address does not
revoke a power of attorney. This is consistent with TMEP sections
Comment: One comment suggests that the Office emphasize that where
practitioners change law firms, the filing of a change of
correspondence address does not revoke any prior powers of attorney or
associate power of attorney. The commenter recommends that the rule
"provide for practitioners to file a revocation/power of attorney when
changing firms to ensure practitioners from the previous firm will not
still be authorized to represent the client." Further, since the
choice of counsel is determined by the applicant, the commenter
recommends "that the rule [provide] for approval by the applicant of
the change in the power of attorney." The commenter notes that the
revocation will automatically update the correspondence address.
Further, this places the burden on the practitioner.
Response: Sections 2.18(a)(7) and 2.19(a)(3) explicitly provide
that a request to change the correspondence address does not revoke a
power of attorney. When more than one qualified practitioner is of
record and one of them changes firms, there is no need to obtain a new
power of attorney or revocation of the previous power, signed by the
client, in every case. If there is ongoing representation by co-counsel
at the original firm, the departing attorney should file a request or,
if applicable, motion with the TTAB, to withdraw, pursuant to 2.19(b).
When more than one qualified practitioner is of record and one or more of
them changes firms, the burden is already on the practitioners to determine
who is responsible for handling pending matters, obtain any necessary powers
of attorney or revocations from the client, and file the necessary documents
in the Office. Rules 2.17(c)(2), 2.18(a)(7) and 2.19(a) require a new power
of attorney or revocation of the previous power, signed by the client, in
order to effect a change in representation, or to send correspondence to a
different firm. When a power is revoked or a practitioner withdraws,
this discharges any associate power signed by the practitioner who
withdraws or whose power has been revoked.
Comment: One commenter suggests that a revocation or new power of
attorney should be required only when a power of attorney is of record
for the previously recognized practitioner, and not where the previous
practitioner was recognized by appearing in person or filing a paper on
behalf of the party thathe or she represents. "We urge the PTO not to adopt
a requirement that an applicant/registrant must file a revocation of power
of attorney in instances when it has not granted a power of attorney in the
first place."
Response: Section 2.17 has long provided three ways in which a
practitioner can be recognized as a representative. There is no logical
basis for treating the termination of such recognition differently
based on the manner in which the representative was recognized.
Comment: One comment notes that, until recently, the Office would
accept a simple "change of address of correspondence" instruction
from a qualified practitioner as sufficient to change the address to
which it directed correspondence. It is unclear why this procedure was
abandoned. The commenter urges the Office to permit either the
applicant/registrant or the new qualified practitioner to sign and file
a request for "Change of Address for Correspondence," instead of a
new power of attorney or revocation of the previous power.
Response: When a qualified practitioner represents an applicant or
registrant, a new practitioner from a different firm could never
properly authorize a change of correspondence address. Prior to 2006,
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the Office would accept a change of correspondence address signed by an
applicant or registrant who was represented by a qualified
practitioner, even if no new power of attorney or revocation of the
previous power was filed. However, to ensure that the record is clear
as to who is authorized to represent applicants and registrants, and to
prevent unauthorized parties from taking actions in connection with
applications and registrations, the better practice is to require a new
power of attorney or revocation of the previous power to change the
address to which official correspondence is sent. Since the Madrid
Protocol was implemented in 2003, an increasing number of persons who
are not qualified under 11.14 of this chapter (e.g., foreign
attorneys) have attempted to represent applicants and registrants.
There have also been several cases in which adverse or unauthorized
parties have attempted to divert correspondence and/or take
inappropriate actions such as express abandonments of applications.
Therefore, the Office seeks to ensure that a proper party signs all
communications and that the record is clear as to who is authorized to
conduct business.
Section 2.18(b)(1) provides that when a physical or e-mail
correspondence address changes, the applicant, registrant, or party to
a proceeding must file a written request to change the correspondence
address. The request should be promptly filed. This is consistent with
TMEP section 603.03.
New 2.18(b)(2) provides that a request to change the correspondence
address must be made in writing, signed by the applicant, registrant, or
party to a proceeding, someone with legal authority to bind the applicant,
registrant, or party (e.g., a corporate officer or general partner of a
partnership), or a qualified practitioner, in accordance with 2.193(e)(9).
This is consistent with current 2.18(b) and TMEP sections 603.02 and
603.02(a).
Section 2.18(b)(3) provides that if an applicant or registrant
files a new power of attorney that meets the requirements of
2.17(c), the Office will change the correspondence address to that of
the practitioner named in the power.
Section 2.18(b)(4) provides that if a qualified practitioner
transmits a document(s) on behalf of an applicant, registrant, or party
to a proceeding who is not already represented by another qualified
practitioner, the Office will construe this as including a request to
change the correspondence address to that of the practitioner, and will
send correspondence to the practitioner. This is consistent with TMEP
section 603.02(a).
Comment: One commenter understands the rule to mean that the
correspondence address of a practitioner filing a document will only be
recognized if the Office has not otherwise recognized a qualified
practitioner at the time the document is filed.
Response: That is correct.
Comment: In some instances, applicants/registrants request outside
counsel to prepare and file responses to Office actions but do not wish
the address for correspondence to be changed to that of counsel. There
is no reason for the Office to "construe" such a filing as a request
for a change of address for correspondence. If that change is desired,
it is simple enough for the applicant/registrant or qualified
practitioner to include specific instructions in this regard in the
filing. Thus, we urge the Office not to adopt a rule that would
establish a default procedure by which the filing of such a response
would be "construed" as including a request for change of
correspondence.
Response: The Office's practice of corresponding with the attorney
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of record is consistent with current § 2.18(a), which has been in
effect for many years and has worked well. The Office sees no reason to
change the practice. If the Office ever did want to change this
practice, it would issue another proposed rule, in order to provide
notice and solicit comment from practitioners who may have come to rely
on existing practice. If an applicant or registrant does not want the
correspondence address to be changed to the address of the outside
counsel who transmits a response to an Office action, counsel should
include clear instructions stating the address to which correspondence
should be sent in the response.
Section 2.18(c)(1) is added to provide that even if there is no new
power of attorney or written request to change the correspondence
address, the Office will change the correspondence address upon the
examination of an affidavit under section 8, 12(c), 15 or 71 of the
Trademark Act, a renewal application under section 9 of the Act, or a
request for amendment or correction under section 7 of the Act. This is
consistent with TMEP section 603.02(c). Due to the length of time that
may elapse between filings under sections 7, 8, 9, 12(c), 15, and 71 of
the Act (which could be ten years or more), the Office automatically
enters a new correspondence address upon examination of each filing.
Section 2.18(c)(2) is added to provide that once the Office
establishes a correspondence address upon examination of an affidavit,
a renewal application or a section 7 request, a written request to
change the address in accordance with 2.18(b)(2) is required to
change the address during the pendency of that filing.
Example 1: Attorney A transmits an affidavit of use under section 8, and
the examiner issues an Office action in connection with the affidavit. If
another attorney from a different firm (Attorney B) wants to respond to the
Office action, Attorney B must file a new power of attorney and/or revocation
of the previous power, signed by the owner of the registration or someone
with legal authority to bind the owner, before the Office will act on the
response and correspond with Attorney B.
Example 2: Attorney A transmits an affidavit of use under section 8, and
the Office accepts the affidavit. If Attorney B later files a request for
amendment under section 7, the Office will recognize and correspond with
Attorney B regardless of whether a new power of attorney or revocation of
the previous power is filed.
Example 3: Attorney A transmits an affidavit of use under section 8, and
the examiner issues an Office action in connection with the affidavit. If
Attorney B wants to file a request for amendment under section 7 before the
Office accepts or issues a final rejection of the section 8 affidavit,
Attorney B must file a new power of attorney and/or revocation of the
previous power, signed by the owner of the registration or someone with legal
authority to bind the owner, before the Office will act on the section 7
request and correspond with Attorney B.
Section 2.19(a) is revised to clarify the requirements for revocation of
a power of attorney. New § 2.19(a)(1) provides that a request to revoke
a power of attorney must be signed by the applicant, registrant, or party to
a proceeding, or by someone with legal authority to bind the applicant,
registrant, or party (e.g., a corporate officer or general partner of a
partnership). This is consistent with TMEP section 602.04.
Comment: The proposed rule does not address the situation of unrepresented
joint applicants.
Response: Section 2.19(a)(1) now states that in the case of joint
applicants or joint registrants, all must sign the revocation. This is
consistent with 2.193(e)(3).
Section 2.19(a)(3) states that a request to change the correspondence
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address does not revoke a power of attorney. This is consistent with
2.18(a)(7), discussed above.
Section 2.19(a)(4) states that a new power of attorney that meets
the requirements of 2.17(c) will be treated as a revocation of
the previous power.
The provision in the current 2.19(a) that the Office will notify the
affected person of the revocation of his or her authorization is removed.
Section 2.19(b) is revised to set forth the requirements for filing
a request to withdraw as attorney. This is consistent with TMEP section
602.05. The withdrawing practitioner should file the request soon after
notifying the client of his/her intent to withdraw, and must include
the application serial number, registration number, or proceeding
number; a statement of the reason(s) for the request to withdraw; and
either (1) a statement that the practitioner has given due notice to
the client that the practitioner is withdrawing from employment and
will be filing the necessary documents with the Office; that the client
was given notice of the withdrawal at least two months before the
expiration of the response period, if applicable; that the practitioner
has delivered to the client all documents and property in the
practitioner's file concerning the application or registration to which
the client is entitled; and that the practitioner has notified the
client of any responses that may be due, and of the deadline for
response; or (2) if there is more than one qualified practitioner of
record, a statement that representation by co-counsel is ongoing.
Section 2.22(a)(11) is amended to change a cross-reference.
Section 2.24 is redesignated as 2.24(a), and amended to provide that if
an applicant is not domiciled in the United States, the applicant may
designate a domestic representative (i.e., a person residing in the United
States on whom notices or process may be served in proceedings affecting the
mark) by either: (1) Setting forth the name and address of the domestic
representative in the initial application; or (2) filing a separate
designation setting forth the name and address of the domestic representative,
signed by the applicant, someone with legal authority to bind the applicant
(e.g., a corporate officer or general partner of a partnership), or a
qualified practitioner.
Where the initial application sets forth the designation of
domestic representative, the designation may be signed by a person
authorized to sign the application on behalf of applicant, pursuant to
new 2.193(e)(1). The Office does not question the authority of
the signatory, unless the record presents an inconsistency as to the
signatory's authority to sign. TMEP section 804.04.
Section 2.24(b) is added to provide that a request to change or
revoke a designation of domestic representative must be signed by the
applicant, someone with legal authority to bind the applicant, or a
qualified practitioner (e.g., a corporate officer or general partner of
a partnership).
Section 2.33(a) is amended to remove the definition of "person
properly authorized to sign" a verification on behalf of applicant,
and replace it with a cross-reference to 2.193(e)(1). The
substance of this definition is unchanged.
Section 2.33(d), which provided for signature of verifications in
applications filed through TEAS, is removed as unnecessary. Section
2.193(c) sets forth the procedure for signing a TEAS document. This
procedure is unchanged.
Section 2.62(b) is amended to add a cross-reference to 2.193(e)(2).
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Section 2.64(b) is amended to add a requirement that a request for
reconsideration of a final action be signed by the applicant, someone
with legal authority to bind the applicant (e.g., a corporate officer
or general partner of a partnership), or a qualified practitioner, in
accordance with the requirements of 2.193(e)(2). This is
consistent with current practice.
Section 2.68 is amended to add a requirement that a request for
express abandonment of an application be signed by the applicant,
someone with legal authority to bind the applicant (e.g., a corporate
officer or general partner of a partnership), or a qualified
practitioner, in accordance with the requirements of § 2.193(e)(2).
This is consistent with TMEP section 718.01.
Sections 2.74(b), 2.76(b)(1), 2.87(f), 2.88(b)(1), 2.89(a)(3),
2.89(b)(3), 2.101(b), 2.102(a), 2.111(b), 2.119(d), and 2.146(c) are
amended to add cross-references to § 2.193.
Section 2.153 is amended to require that an affidavit or
declaration claiming the benefits of the Act of 1946, pursuant to
section 12(c) of the Act, be filed by the current owner and signed by
the owner or by a person properly authorized to sign on behalf of the
owner. This is consistent with TMEP section 1603.
Section 2.161(b) is amended to remove the definition of "person
properly authorized to sign" an affidavit or declaration of use or
excusable nonuse under section 8 of the Trademark Act ("section 8
affidavit") and replace it with a cross-reference to § 2.193(e)(1).
The substance of this definition is unchanged.
Section 2.163(b), 2.167(a), and 2.171(b) are amended to add cross-
references to 2.193.
Section 2.172 is amended to add a provision that a request for
surrender of a registration be filed in the name of the owner of the
registration, and signed by the owner, a person with legal authority to
bind the owner, or a qualified practitioner. This is consistent with
current practice.
Section 2.184(b)(2) is amended to add a cross-reference to 2.193(e)(2).
Section 2.193(a) is redesignated as 2.193(g).
Section 2.193(b) is redesignated as 2.193(h).
Current 2.193(c)(1) is revised and separated into 2.193(a),
(b) and (c).
Section 2.193(a) provides that each piece of correspondence that
requires a signature must bear: (1) A handwritten signature personally
signed in permanent ink by the person named as the signatory, or a true
copy thereof; or (2) an electronic signature that meets the
requirements of paragraph (c). The rule makes clear that a handwritten
signature must be personally signed by the person named as the
signatory, and that an electronic signature must be personally entered
by the person named as the signatory.
Comment: One comment "disagree[s] with the proposed change and
definition of electronic signatures," and asserts that "[s]ince the
attorneys assume liability and responsibility for the signing forms, it
is common legal practice for attorneys to authorize others to sign on
their behalf." To assist with this proposed change, the commenter requests
that the forms be "portable for signature to allow for easier compliance
with this rule."
Response: The requirement that attorneys personally sign documents
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that they file in the Office is not a change, having previously been
required by 10.18(a) of this chapter. See Boyds Collection Ltd.
v. Herrington & Co., 65 USPQ2d 2017, 2018, n.4 (TTAB 2003). Section
10.18(a) was recently replaced by § 11.18(a), which requires that
"each piece of correspondence filed by a practitioner in the Office
must bear a signature, personally signed by such practitioner." See
notice at 73 FR 47650 (Aug. 14, 2008).
Two methods are already in place that can be used to obtain
signatures from clients or reviewers before filing a TEAS document:
The document can be completed on-line and e-mailed to the
signatory for electronic signature from within TEAS. The signatory
signs the document and it is automatically returned via TEAS to the
party who requested the signature; or
The document can be filled out on-line, printed in text
form, and mailed or faxed to the signatory. The signatory signs the
printed document in the traditional pen-and-ink manner. The signature
portion, along with a declaration if required, is scanned to create a
.jpg or .pdf image file that is attached to the TEAS filing.
Section 2.193(a)(2) provides that the Office will accept a
signature that meets the requirements of paragraph (c) on all
correspondence, whether filed on paper, by facsimile transmission, or
through TEAS or the Electronic System for Trademark Trials and Appeals
("ESTTA"). This is consistent with TMEP section 804.05.
Section 2.193(c) sets forth the requirements for signing a document
electronically, previously set forth in § 2.193(c)(1)(iii). The
substance is unchanged.
Section 2.193(c)(2) is redesignated as 2.193(f).
Section 2.193(d) requires that the name of the person who signs a
document in connection with a trademark application, registration, or
proceeding before the TTAB be set forth in printed or typed form
immediately below or adjacent to the signature, or identified elsewhere
in the filing (e.g., in a cover letter or other document that
accompanies the filing).
Section 2.193(d) is redesignated as 2.193(i).
Section 2.193(e) sets forth the proper person(s) to sign various
types of documents that are commonly filed in connection with trademark
applications and registrations.
Section 2.193(e)(1) sets forth the definition of a person who is
properly authorized to sign a verification in support of an application
for registration, amendment to an application, allegation of use under
2.76 or 2.88, request for extension of time to file a
statement of use under 2.89, or an affidavit under section 8,
12(c), 15, or 71 of the Trademark Act. This is consistent with current
§§ 2.33(a) and 2.161(b).
Section 2.193(e)(2) provides that responses to Office actions,
amendments to applications, requests for reconsideration of final
actions, requests for express abandonment, requests to divide, and
notices of change of correspondence address in an application or
registration must be signed by the owner of the application or
registration, someone with legal authority to bind the owner (e.g., a
corporate officer or general partner of a partnership), or a qualified
practitioner. This is consistent with 2.62(b), 2.64(b),
2.68(a), 2.74(b), 2.87(f), and 2.184(b)(2).
Section 2.193(e)(2)(i) provides that if the owner is represented by
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a qualified practitioner, the practitioner must sign, except where the
owner is required to sign the correspondence. This is consistent with
current 11.18(a). This applies to both in-house and outside
counsel.
Section 2.193(e)(2)(ii) provides that if the owner is not
represented by a qualified practitioner, the individual owner or
someone with legal authority to bind the owner (e.g., a corporate
officer or general partner of a partnership) must sign. In the case of
joint owners who are not represented by a qualified practitioner, all
must sign. This is consistent with TMEP sections 605.02, 712.01 and
712.01(a)(i).
Comment: One commenter notes that the requirement for signature by
all joint owners creates an additional burden if the document is being
composed and sent through TEAS or ESTTA, or if examiner's amendments
need to be cleared with each applicant. However, the commenter
understands that the percentage of unrepresented joint owners is small
and that the Office intends to avoid the situation where one
unrepresented joint owner speaks for the other(s) without
authorization.
Response: Since one joint owner does not have authority to bind
another, the Office believes that all must sign.
Section 2.193(e)(3) provides that powers of attorney and
revocations of powers of attorney must be signed by the individual
applicant or registrant or someone with legal authority to bind the
applicant or registrant (e.g., a corporate officer or general partner
of a partnership); that in the case of joint applicants or joint
registrants, all must sign; that once the applicant or registrant has
designated a qualified practitioner(s), the named practitioner may sign
an associate power of attorney appointing another qualified
practitioner(s) as an additional person(s) authorized to prosecute the
application or registration; that if the applicant or registrant
revokes the original power of attorney, the revocation also discharges
any associate power signed by the practitioner whose power has been
revoked; and that if the practitioner who signed an associate power
withdraws, the withdrawal discharges any associate power signed by the
withdrawing practitioner upon acceptance of the request for withdrawal
by the Office. This is consistent with 2.17(c) and 2.19(a),
discussed above.
Comment: Under current practice, when an attorney files an
application, the on-line power of attorney form can be signed by the
filing attorney. The proposed rule would require a change in the on-
line form. If the proposed rule is not intended to apply in the initial
filing stage, but only to subsequent designations, this distinction
should be made clear in the proposed rule.
Response: It is not now and never has been acceptable for an
attorney to sign a power appointing himself or herself as the attorney
of record, even with the initial application. However, if the initial
application is accompanied by an improper power of attorney (e.g., a
power signed by the designated attorney), the Office generally does not
require a properly signed power, because the filing of a power of
attorney is not mandatory in a trademark case under current 2.17(c)
(new 2.17(b)(1)). The Office will disregard the improperly signed
power and recognize the attorney who submitted the application based on the
attorney's signature and appearance on behalf of the applicant. See TMEP
section 602.01. When an applicant is already represented by a qualified
practitioner, and a new practitioner from a different firm takes over,
the Office requires a properly signed power of attorney or revocation of the
previous power before recognizing the new attorney.
Section 2.193(e)(4) provides that a petition to revive under 2.66
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must be signed by someone with firsthand knowledge of the facts regarding
unintentional delay. This is consistent with current 2.66(b)(2) and (c)(2).
Section 2.193(e)(5) provides that a petition to the Director under
2.146 must be signed by the petitioner, someone with legal authority to
bind the petitioner (e.g., a corporate officer or general partner of a
partnership), or a qualified practitioner, in accordance with the
following guidelines:
If the petitioner is represented by a qualified practitioner, the
practitioner must sign; or
If the petitioner is not represented by a qualified practitioner, the
individual petitioner or someone with legal authority to bind the petitioner
(e.g., a corporate officer or general partner of a partnership) must sign.
Section 2.193(e)(6) provides that a request for correction,
amendment, or surrender of a registration must be signed by the owner
of the registration, someone with legal authority to bind the owner
(e.g., a corporate officer or general partner of a partnership), or a
qualified practitioner; and that in the case of joint owners who are
not represented by a qualified practitioner, all must sign.
Section 2.193(e)(7) provides that a renewal application must be
signed by the registrant or the registrant's representative. This is
consistent with 2.183(a).
Section 2.193(e)(8) provides that a designation or revocation of a
domestic representative must be signed by applicant or registrant,
someone with legal authority to bind the applicant or registrant (e.g.,
a corporate officer or general partner of a partnership), or a
qualified practitioner.
Section 2.193(e)(9) provides that a notice of change of
correspondence address in an application or registration must be signed
by the applicant or registrant, someone with legal authority to bind
the applicant or registrant (e.g., a corporate officer or general
partner of a partnership), or a qualified practitioner, in accordance
with the following guidelines:
If the applicant or registrant is represented by a qualified practitioner,
the practitioner must sign; or
If the applicant or registrant is not represented by a qualified practitioner,
the individual applicant or registrant or someone with legal authority
to bind the applicant or registrant (e.g., a corporate officer or general
partner of a partnership) must sign.
Section 2.193(e)(10) provides that the person transmitting paper
documents to the Office may sign a cover letter or transmittal letter,
and that the Office neither requires cover letters nor questions the
authority of a person who signs a communication that merely transmits
documents. This is consistent with TMEP section 605.03.
Comment: One commenter notes that when TTAB documents are filed
through ESTTA, the electronic filing cover sheet must be signed by a
person with authority. If not properly signed, the filing may be
rejected if the attached documents are signed by an unauthorized
person.
Response: The Office has revised 2.193(e)(10) to indicate
that it applies only to paper documents. For documents filed through
TEAS, no cover letter or transmittal letter is generated. In ESTTA, the
system generates a filing form that either stands alone and serves as
the paper being filed, or is integrated with one or more attachments
into a single, combined filing. As the commenter has correctly noted,
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the Board views the ESTTA filing form and any attachments thereto as
comprising a single document, and the signer of the ESTTA form is
responsible for the content of the attachments. See PPG Industries,
Inc. v. Guardian Industries Corp., 73 USPQ2d 1926 (TTAB 2005) regarding
signature of ESTTA documents.
Section 11.18(a) is amended to add cross-references to 1.4(d)(2) and
2.193(a).
Rulemaking Requirements
Executive Order 12866: This rule has been determined not to be significant
for purposes of Executive Order 12866.
Administrative Procedure Act: This rule merely involves rules of
agency practice and procedure within the meaning of 5 U.S.C. 553(b)(A).
Therefore, this rule may be adopted without prior notice and opportunity for
public comment under 5 U.S.C. 553(b) and (c), or thirty-day advance
publication under 5 U.S.C. 553(d). However, the Office has chosen to seek
public comment before implementing the rule.
Regulatory Flexibility Act: The Deputy General Counsel for General
Law of the United States Patent and Trademark Office hereby certifies
to the Chief Counsel for Advocacy of the Small Business Administration
that this final rule, Changes in Requirements for Signature of
Documents, Recognition of Representatives, and Establishing and
Changing the Correspondence Address in Trademark Cases (RIN 0651-AC26),
will not have a significant impact on a substantial number of small
entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)).
As prior notice and an opportunity for public comment are not
required pursuant to 5 U.S.C. 553 (or any other law), neither a
regulatory flexibility analysis nor a certification under the
Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is required. See 5
U.S.C. 603.
The rules clarify certain requirements for signature of documents
filed in the Office, recognition of representatives, and establishing
and changing the correspondence address in trademark cases. In large
part, the rule changes merely codify existing practice. Although the
rules may affect trademark applicants or registrants, because they
codify the existing practice of the Office, the changes set forth in
this notice will not have a significant economic impact on a
substantial number of small entities.
Unfunded Mandates: The Unfunded Mandates Reform Act requires, at 2
U.S.C. 1532, that agencies prepare an assessment of anticipated costs
and benefits before issuing any rule that may result in expenditure by
State, local, and tribal governments, in the aggregate, or by the
private sector, of $100 million or more (adjusted annually for
inflation) in any given year. This rule will have no such effect on
State, local, and tribal governments or the private sector.
Executive Order 13132: This rule does not contain policies with
federalism implications sufficient to warrant preparation of a
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
Paperwork Reduction Act: This rule involves information collection
requirements which are subject to review by the Office of Management
and Budget ("OMB") under the Paperwork Reduction Act of 1995 (44
U.S.C. 3501 et seq.). The collection of information in this rule have
been reviewed and previously approved by the OMB under OMB control
numbers: 0651-0054, 0651-0027, and 0651-0040.
The United States Patent and Trademark Office is not resubmitting
an information collection package to OMB for its review and approval
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because the changes in this rule will not affect the information
collection requirements associated with the information collections
under OMB control numbers 0651-0054, 0651-0027, and 0651-0040. The
changes in this notice are limited to amending the rules of practice to
codify current practice with respect to the proper party to sign
various documents and current procedures for appointment, revocation,
or withdrawal of attorneys and domestic representatives.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reduction of this
burden, to: (1) The Office of Information and Regulatory Affairs,
Office of Management and Budget, NewExecutive Office Building, Room 10202,
725 17th Street, NW., Washington, DC 20503, Attention: Desk Officer for the
Patent and Trademark Office; and (2) Commissioner for Trademarks, P.O. Box
1451, Alexandria, VA 22313-1451 (Attn: Mary Hannon).
Notwithstanding any other provision of law, no person is required
to respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects
37 CFR Part 2
Administrative practice and procedure, Trademarks.
37 CFR Part 11
Administrative practice and procedure, Lawyers.
. For the reasons given in the preamble and under the authority contained
in 5 U.S.C. 500, 15 U.S.C. 1123 and 35 U.S.C. 2 and 32, the Office is
amending parts 2 and 11 of title 37 as follows:
PART 2 - RULES OF PRACTICE IN TRADEMARK CASES
. 1. The authority citation for 37 CFR Part 2 continues to read as
follows:
Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.
. 2. Revise § 2.17 to read as follows:
2.17 Recognition for representation.
(a) Authority to practice in trademark cases. Only an individual
qualified to practice under § 11.14 of this chapter may represent
an applicant, registrant, or party to a proceeding before the Office in
a trademark case.
(b)(1) Recognition of practitioner as representative. To be
recognized as a representative in a trademark case, a practitioner
qualified under § 11.14 of this chapter may:
(i) File a power of attorney that meets the requirements of
paragraph (c) of this section;
(ii) Sign a document on behalf of an applicant, registrant, or
party to a proceeding who is not already represented by a practitioner
qualified under § 11.14 of this chapter from a different firm; or
(iii) Appear in person on behalf of an applicant, registrant, or
party to a proceeding who is not already represented by a practitioner
qualified under § 11.14 of this chapter from a different firm.
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(2) Signature as certificate of authorization to represent. When a
practitioner qualified under 11.14 of this chapter appears in
person or signs a document pursuant to paragraph (b) of this section,
his or her personal appearance or signature shall constitute a
representation to the Office that he or she is authorized to represent
the person or entity on whose behalf he or she acts. The Office may
require further proof of authority to act in a representative capacity.
(c) Requirements for power of attorney. A power of attorney must:
(1) Designate by name at least one practitioner meeting the
requirements of 11.14 of this chapter; and
(2) Be signed by the individual applicant, registrant, or party to
a proceeding pending before the Office, or by someone with legal
authority to bind the applicant, registrant, or party (e.g., a
corporate officer or general partner of a partnership). In the case of
joint applicants or joint registrants, all must sign. Once the
applicant, registrant, or party has designated a practitioner(s)
qualified to practice under 11.14 of this chapter, that
practitioner may sign an associate power of attorney appointing another
qualified practitioner(s) as an additional person(s) authorized to
represent the applicant, registrant, or party. If the applicant,
registrant, or party revokes the original power of attorney ( 2.19(a)),
the revocation discharges any associate power signed by the
practitioner whose power has been revoked. If the practitioner who
signed an associate power withdraws ( 2.19(b)), the withdrawal
discharges any associate power signed by the withdrawing practitioner
upon acceptance of the request for withdrawal by the Office.
(d) Power of attorney relating to multiple applications or
registrations. (1) The owner of an application or registration may
appoint a practitioner(s) qualified to practice under § 11.14 of
this chapter for up to twenty applications or registrations that have
the identical owner name and attorney through TEAS.
(2) The owner of an application or registration may file a power of
attorney that relates to more than one trademark application or
registration, or to all existing and future applications and
registrations of that owner, on paper. A person relying on such a power
of attorney must:
(i) Include a copy of the previously filed power of attorney; or
(ii) Refer to the power of attorney, specifying the filing date of
the previously filed power of attorney; the application serial number
(if known), registration number, or inter partes proceeding number for
which the original power of attorney was filed; and the name of the
person who signed the power of attorney; or, if the application serial
number is not known, submit a copy of the application or a copy of the
mark, and specify the filing date.
(e) Canadian attorneys and agents. (1) A Canadian patent agent who
is registered and in good standing as a patent agent under § 11.6(c)
may represent parties located in Canada before the Office in
trademark matters.
(2) A Canadian attorney or agent who is registered or in good
standing with the Canadian Intellectual Property Office, but not
registered as a patent agent under 11.6(c), may represent parties
located in Canada if he or she has been authorized to do so by the
Director of the Office of Enrollment and Discipline, pursuant to 11.14(f)
of this chapter.
(f) Non-lawyers. A non-lawyer may not act as a representative
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except in the limited circumstances set forth in 11.14(b) of this
chapter. Before any non-lawyer who meets the requirements of 11.14(b)
of this chapter may take action of any kind with respect to an
application, registration or proceeding, a written authorization must
be filed, signed by the applicant, registrant, or party to the
proceeding, or by someone with legal authority to bind the applicant,
registrant, or party (e.g., a corporate officer or general partner of a
partnership).
(g) Duration of power of attorney. (1) For purposes of recognition
as a representative, the Office considers a power of attorney filed
while an application is pending to end when the mark registers, when
ownership changes, or when the application is abandoned.
(2) The Office considers a power of attorney filed after
registration to end when the mark is cancelled or expired, or when
ownership changes. If the power was filed in connection with an
affidavit under section 8, 12(c), 15 or 71 of the Trademark Act,
renewal application under section 9 of the Act, or request for
amendment or correction under section 7 of the Act, the power is deemed
to end upon acceptance or final rejection of the filing.
. 3. Revise § 2.18 to read as follows:
2.18 Correspondence, with whom held.
(a) Establishing the correspondence address. (1) If a written power
of attorney that meets the requirements of 2.17 is filed, the
Office will send correspondence to the practitioner designated in the
power.
(2) If a practitioner qualified under 11.14 of this chapter
transmits a document(s) on behalf of an applicant, registrant, or party
to a proceeding who is not already represented by another qualified
practitioner from a different firm, the Office will send correspondence to
the practitioner transmitting the documents.
(3) If an application, registration or proceeding is not being
prosecuted by a practitioner qualified under 11.14 of this
chapter and the applicant, registrant, or party to the proceeding
designates a correspondence address in writing, the Office will send
correspondence to the designated address if appropriate.
(4) If an application, registration or proceeding is not being
prosecuted by a practitioner qualified under 11.14 of this
chapter and the applicant, registrant, or party to the proceeding has
not designated a correspondence address in writing, but a domestic
representative has been appointed, the Office will send correspondence
to the domestic representative if appropriate.
(5) If the application, registration or proceeding is not being
prosecuted by a practitioner qualified under 11.14 of this
chapter, the applicant, registrant, or party to the proceeding has not
designated a correspondence address, and no domestic representative has
been appointed, the Office will send correspondence directly to the
applicant, registrant, or party to the proceeding.
(6) The Office will send correspondence to only one address in an
ex parte matter.
(7) Once the Office has recognized a practitioner qualified under
11.14 of this chapter as the representative of an applicant or
registrant, the Office will communicate and conduct business only with
that practitioner, or with another qualified practitioner from the same
firm. The Office will not conduct business directly with the applicant
or registrant, or with another practitioner from a different firm,
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unless the applicant or registrant files a revocation of the power of
attorney under 2.19(a), and/or a new power of attorney that meets
the requirements of 2.17(c). A written request to change the
correspondence address does not revoke a power of attorney.
(b) Changing the correspondence address. (1) If a physical or
e-mail correspondence address changes, the applicant, registrant, or
party to a proceeding must file a written request to change the
correspondence address. The request should be promptly filed.
(2) A request to change the correspondence address must be made in
writing, signed by the applicant, registrant, or party to a proceeding,
someone with legal authority to bind the applicant, registrant, or
party (e.g., a corporate officer or general partner of a partnership),
or a practitioner qualified to practice under 11.14 of this
chapter, in accordance with 2.193(e)(9).
(3) If an applicant or registrant files a new power of attorney
that meets the requirements of 2.17(c), the Office will change
the correspondence address to that of the practitioner named in the
power.
(4) If a practitioner qualified under § 11.14 of this chapter
transmits a document(s) on behalf of an applicant, registrant, or party
to a proceeding who is not already represented by another qualified
practitioner, the Office will construe this as including a request to
change the correspondence address to that of the practitioner, and will
send correspondence to the practitioner.
(c) Post registration filings under sections 7, 8, 9, 12(c), 15,
and 71. (1) Even if there is no new power of attorney or written
request to change the correspondence address, the Office will change
the correspondence address upon the examination of an affidavit under
section 8, 12(c), 15 or 71 of the Trademark Act, renewal application
under section 9 of the Act, or request for amendment or correction
under section 7 of the Act. If a practitioner qualified under 11.14
of this chapter transmits the affidavit, renewal application, or
section 7 request, the Office will send correspondence to the
practitioner. If the owner of the registration is not represented by a
qualified practitioner, the Office will send correspondence directly to
the owner, or to the domestic representative if appropriate, in
accordance with paragraph (a).
(2) Once the Office establishes a correspondence address upon
examination of an affidavit, renewal application, or section 7 request,
a written request to change the address in accordance with the
requirements of paragraph (b)(2) of this section is required to change
the address during the pendency of that filing.
. 4. Revise § 2.19 to read as follows:
2.19 Revocation or withdrawal of attorney.
(a) Revocation. (1) Authority to represent an applicant, registrant
or party to a proceeding before the Office may be revoked at any stage
in the proceedings of a trademark case, upon written notification
signed by the applicant, registrant, or party to the proceeding, or by
someone with legal authority to bind the applicant, registrant, or
party (e.g., a corporate officer or general partner of a partnership).
In the case of joint applicants or joint registrants, all must sign.
(2) When a power of attorney is revoked, the Office will
communicate directly with the applicant, registrant, or party to the
proceeding, or with the new attorney or domestic representative if
appropriate.
(3) A request to change the correspondence address does not revoke
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a power of attorney.
(4) A new power of attorney that meets the requirements of 2.17(c)
will be treated as a revocation of the previous power.
(b) Withdrawal of attorney. If the requirements of 10.40 of
this chapter are met, a practitioner authorized to represent an
applicant, registrant, or party to a proceeding in a trademark case may
withdraw upon application to and approval by the Director or, when
applicable, upon motion granted by the Trademark Trial and Appeal
Board. The practitioner should file the request to withdraw soon after
the practitioner notifies the client of his/her intent to withdraw. The
request must include the following:
(1) The application serial number, registration number, or
proceeding number;
(2) A statement of the reason(s) for the request to withdraw; and
(3) Either
(i) A statement that the practitioner has given notice to the
client that the practitioner is withdrawing from employment and will be
filing the necessary documents with the Office; that the client was
given notice of the withdrawal at least two months before the
expiration of the response period, if applicable; that the practitioner
has delivered to the client all documents and property in the
practitioner's file concerning the application, registration or
proceeding to which the client is entitled; and that the practitioner
has notified the client of any responses that may be due, and of the
deadline for response; or
(ii) If more than one qualified practitioner is of record, a
statement that representation by co-counsel is ongoing.
. 5. Revise 2.22(a)(11) to read as follows:
2.22 Filing requirements for a TEAS Plus application.
(a) * * *
(11) A verified statement that meets the requirements of 2.33,
dated and signed by a person properly authorized to sign on
behalf of the owner pursuant to 2.193(e)(1);
* * * * *
. 6. Revise § 2.24 to read as follows:
2.24 Designation and revocation of domestic representative by
foreign applicant.
(a)(1) If an applicant is not domiciled in the United States, the
applicant may designate a domestic representative (i.e., a person
residing in the United States on whom notices or process in proceedings
affecting the mark may be served) by either:
(i) Setting forth the name and address of the domestic
representative in the initial application; or
(ii) Filing a separate designation setting forth the name and
address of the domestic representative, signed by the applicant,
someone with legal authority to bind the applicant (e.g., a corporate
officer or general partner of a partnership), or a practitioner
qualified to practice under § 11.14 of this chapter.
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(2) If the applicant does not file a document designating the name
and address of a person residing in the United States on whom notices
or process in proceedings affecting the mark may be served, or if the
last person designated cannot be found at the address given in the
designation, then notices or process in proceedings affecting the mark
may be served on the Director.
(3) The mere designation of a domestic representative does not
authorize the person designated to represent the applicant unless
qualified under § 11.14 of this chapter.
(b) A request to change or revoke a designation of domestic
representative must be signed by the applicant, someone with legal
authority to bind the applicant (e.g., a corporate officer or general
partner of a partnership), or a practitioner qualified to practice
under § 11.14 of this chapter.
. 7. Amend 2.33 by revising paragraph (a) to read as follows, and
removing and reserving paragraph (d):
2.33 Verified statement.
(a) The application must include a statement that is signed in
accordance with the requirements of 2.193 and verified (sworn to)
or supported by a declaration under 2.20 by a person properly
authorized to sign on behalf of the applicant under § 2.193(e)(1).
* * * * *
. 8. Revise § 2.62(b) to read as follows:
2.62 Procedure for filing response.
* * * * *
(b) Signature. The response must be signed by the applicant,
someone with legal authority to bind the applicant (e.g., a corporate
officer or general partner of a partnership), or a practitioner
qualified to practice under 11.14 of this chapter, in accordance
with the requirements of § 2.193(e)(2).
. 9. Revise 2.64(b) to read as follows:
2.64 Final action.
* * * * *
(b) During the period between a final action and expiration of the
time for filing an appeal, the applicant may request the examiner to
reconsider the final action. The request must be signed by the
applicant, someone with legal authority to bind the applicant (e.g., a
corporate officer or general partner of a partnership), or a
practitioner qualified to practice under 11.14, in accordance
with the requirements of 2.193(e)(2). The filing of a request for
reconsideration will not extend the time for filing an appeal or
petitioning the Director, but normally the examiner will reply to a
request for reconsideration before the end of the six-month period if
the request is filed within three months after the date of the final
action. The Office will enter amendments accompanying requests for
reconsideration after final action if the amendments comply with the
rules of practice in trademark cases and the Act.
* * * * *
. 10. Revise 2.68 to read as follows:
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2.68 Express abandonment (withdrawal) of application.
(a) Written document required. An applicant may expressly abandon
an application by filing a written request for abandonment or
withdrawal of the application, signed by the applicant, someone with
legal authority to bind the applicant (e.g., a corporate officer or
general partner of a partnership), or a practitioner qualified to
practice under 11.14 of this chapter, in accordance with the
requirements of 2.193(e)(2).
(b) Rights in the mark not affected. Except as provided in 2.135,
the fact that an application has been expressly abandoned shall
not, in any proceeding in the Office, affect any rights that the
applicant may have in the mark in the abandoned application.
. 11. Revise 2.74(b) to read as follows:
2.74 Form and signature of amendment.
* * * * *
(b) Signature. A request for amendment of an application must be
signed by the applicant, someone with legal authority to bind the
applicant (e.g., a corporate officer or general partner of a
partnership), or a practitioner qualified to practice under 11.14
of this chapter, in accordance with the requirements of
2.193(e)(2). If the amendment requires verification, the verification
must be sworn to or supported by a declaration under 2.20 by a
person properly authorized to sign on behalf of the applicant under
2.193(e)(1).
. 12. Revise 2.76(b)(1) introductory text to read as follows:
2.76 Amendment to allege use.
* * * * *
(b) * * *
(1) A statement that is signed and verified (sworn to) or supported
by a declaration under 2.20 by a person properly authorized to
sign on behalf of the applicant (see 2.193(e)(1)) that:
* * * * *
. 13. Revise 2.87(f) to read as follows:
2.87 Dividing an application.
* * * * *
(f) Signature. The request to divide must be signed by the
applicant, someone with legal authority to bind the applicant (e.g., a
corporate officer or general partner of a partnership), or a
practitioner who meets the requirements of 11.14, in accordance
with the requirements of 2.193(e)(2).
* * * * *
. 14. Revise 2.88(b)(1) introductory text to read as follows:
2.88 Filing statement of use after notice of allowance.
* * * * *
(b) * * *
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(1) A statement that is signed and verified (sworn to) or supported
by a declaration under § 2.20 by a person properly authorized to
sign on behalf of the applicant (see 2.193(e)(1)) that:
* * * * *
. 15. Revise 2.89(a)(3) and (b)(3) to read as follows:
2.89 Extensions of time for filing a statement of use.
(a) * * *
(3) A statement that the applicant still has a bona fide intention
to use the mark in commerce, specifying the relevant goods or services,
signed and verified (sworn to) or supported by a declaration under
§ 2.20 by a person properly authorized to sign on behalf of the
applicant (see 2.193(e)(1)). If the verification is unsigned or
signed by the wrong party, the applicant must submit a substitute
verification within six months of the date of issuance of the notice of
allowance.
* * * * *
(b) * * *
(3) A statement that the applicant still has a bona fide intention
to use the mark in commerce, specifying the relevant goods or services,
signed and verified (sworn to) or supported by a declaration under
2.20 by a person properly authorized to sign on behalf of the applicant
(see 2.193(e)(1)). If the verification is unsigned or signed by the wrong
party, the applicant must submit a substitute verification before the
expiration of the previously granted extension; and
* * * * *
. 16. Revise 2.101(b) introductory text to read as follows:
2.101 Filing an opposition.
* * * * *
(b) Any person who believes that he, she or it would be damaged by
the registration of a mark on the Principal Register may file an
opposition addressed to the Trademark Trial and Appeal Board and must
serve a copy of the opposition, including any exhibits, on the attorney
of record for the applicant or, if there is no attorney, on the
applicant or on the applicant's domestic representative, if one has
been appointed, at the correspondence address of record in the Office.
The opposer must include with the opposition proof of service pursuant
to 2.119 at the correspondence address of record in the Office.
If any service copy of the opposition is returned to the opposer as
undeliverable, the opposer must notify the Board within ten days of
receipt of the returned copy. The opposition need not be verified, but
must be signed by the opposer or the opposer's attorney, as specified
in 11.1 of this chapter, or other authorized representative, as
specified in 11.14(b) of this chapter. Electronic signatures
pursuant to 2.193(c) are required for oppositions filed through
ESTTA under paragraphs (b)(1) or (2) of this section.
* * * * *
. 17. Revise 2.102(a) introductory text to read as follows:
2.102 Extension of time for filing an opposition.
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(a) Any person who believes that he, she or it would be damaged by
the registration of a mark on the Principal Register may file in the
Office a written request, addressed to the Trademark Trial and Appeal
Board, to extend the time for filing an opposition. The written request
need not be verified, but must be signed by the potential opposer or by
the potential opposer's attorney, as specified in 11.1 of this
chapter, or authorized representative, as specified in 11.14(b)
of this chapter. Electronic signatures pursuant to 2.193(c) are
required for electronically filed extension requests.
* * * * *
. 18. Revise 2.111(b) to read as follows:
2.111 Filing petition for cancellation.
* * * * *
(b) Any person who believes that he, she or it is or will be
damaged by a registration may file a petition, addressed to the
Trademark Trial and Appeal Board, for cancellation of the registration
in whole or in part. Petitioner must serve a copy of the petition,
including any exhibits, on the owner of record for the registration, or
on the owner's domestic representative of record, if one has been
appointed, at the correspondence address of record in the Office. The
petitioner must include with the petition for cancellation proof of
service, pursuant to § 2.119, on the owner of record, or on the
owner's domestic representative of record, if one has been appointed,
at the correspondence address of record in the Office. If any service
copy of the petition for cancellation is returned to the petitioner as
undeliverable, the petitioner must notify the Board within ten days of
receipt of the returned copy. The petition for cancellation need not be
verified, but must be signed by the petitioner or the petitioner's
attorney, as specified in 11.1 of this chapter, or other
authorized representative, as specified in 11.14(b) of this
chapter. Electronic signatures pursuant to 2.193(c) are required
for petitions submitted electronically via ESTTA. The petition for
cancellation may be filed at any time in the case of registrations on
the Supplemental Register or under the Act of 1920, or registrations
under the Act of 1881 or the Act of 1905 which have not been published
under section 12(c) of the Act, or on any ground specified in section
14(3) or (5) of the Act. In all other cases, the petition for
cancellation and the required fee must be filed within five years from
the date of registration of the mark under the Act or from the date of
publication under section 12(c) of the Act.
* * * * *
. 19. Revise 2.119(d) to read as follows:
2.119 Service and signing of papers.
* * * * *
(d) If a party to an inter partes proceeding is not domiciled in
the United States and is not represented by an attorney or other
authorized representative located in the United States, the party may
designate by document filed in the United States Patent and Trademark
Office the name and address of a person residing in the United States
on whom may be served notices or process in the proceeding. If the
party has appointed a domestic representative, official communications
of the United States Patent and Trademark Office will be addressed to
the domestic representative unless the proceeding is being prosecuted
by an attorney at law or other qualified person duly authorized under
11.14(c) of this subchapter. If the party has not appointed a
domestic representative and the proceeding is not being prosecuted by
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an attorney at law or other qualified person, the Office will send
correspondence directly to the party, unless the party designates in
writing another address to which correspondence is to be sent. The mere
designation of a domestic representative does not authorize the person
designated to prosecute the proceeding unless qualified under 11.14(a),
or qualified under 11.14(b) and authorized under 2.17(f).
* * * * *
. 20. Revise 2.146(c) to read as follows:
2.146 Petitions to the Director.
* * * * *
(c) Every petition to the Director shall include a statement of the
facts relevant to the petition, the points to be reviewed, the action
or relief requested, and the fee required by 2.6. Any brief in
support of the petition shall be embodied in or accompany the petition.
The petition must be signed by the petitioner, someone with legal
authority to bind the petitioner (e.g., a corporate officer or general
partner of a partnership), or a practitioner qualified to practice
under 11.14 of this chapter, in accordance with the requirements
of 2.193(e)(5). When facts are to be proved on petition, the
petitioner must submit proof in the form of affidavits or declarations
in accordance with 2.20, signed by someone with firsthand
knowledge of the facts to be proved, and any exhibits.
* * * * *
. 21. Revise 2.153 to read as follows:
2.153 Publication requirements.
The owner of a mark registered under the provisions of the
Trademark Act of 1881 or 1905 may at any time prior to the expiration
of the period for which the registration was issued or renewed, upon
the payment of the prescribed fee, file an affidavit or declaration in
accordance with 2.20 setting forth those goods or services in the
registration on or in connection with which said mark is in use in
commerce, and stating that the owner claims the benefits of the Act of
1946. The affidavit or declaration must be signed by a person properly
authorized to sign on behalf of the owner under 2.193(e)(1).
. 22. Revise 2.161(b) to read as follows:
2.161 Requirements for a complete affidavit or declaration of
continued use or excusable nonuse.
* * * * *
(b) Include a statement that is signed and verified (sworn to) or
supported by a declaration under 2.20 by a person properly
authorized to sign on behalf of the owner under 2.193(e)(1),
attesting to the use or excusable nonuse of the mark within the period
set forth in section 8 of the Act. The verified statement must be
executed on or after the beginning of the filing period specified in
2.160(a).
* * * * *
. 23. Revise 2.163(b) to read as follows:
2.163 Acknowledgment of receipt of affidavit or declaration, and
response to Office action.
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* * * * *
(b) A response to the refusal must be filed within six months of
the date of issuance of the Office action, or before the end of the
filing period set forth in section 8(a) or section 8(b) of the Act,
whichever is later. The response must be signed by the owner, someone
with legal authority to bind the owner (e.g., a corporate officer or
general partner of a partnership), or a practitioner qualified to
practice under 11.14 of this chapter, in accordance with the
requirements of 2.193(e)(2).
* * * * *
. 24. Revise 2.167(a) to read as follows:
2.167 Affidavit or declaration under Section 15.
* * * * *
(a) Be verified (sworn to) or supported by a declaration under
2.20, signed by the owner of the registration or a person properly
authorized to sign on behalf of the owner under 2.193(e)(1);
* * * * *
. 25. Revise 2.171(b)(1) to read as follows:
2.171 New certificate on change of ownership.
* * * * *
(b) * * *
(1) In a registration resulting from an application based on
section 1 or section 44 of the Act, if ownership of a registration has
changed with respect to some but not all of the goods and/or services,
the owner(s) may file a request that the registration be divided into
two or more separate registrations. The assignment or other document
changing title must be recorded in the Office. The request to divide
must include the fee required by 2.6(a)(8) for each new
registration created by the division, and be signed by the owner of the
registration, someone with legal authority to bind the owner (e.g., a
corporate officer or general partner of a partnership), or a
practitioner qualified to practice under 11.14 of this chapter,
in accordance with 2.193(e)(2) of this chapter.
* * * * *
. 26. Revise 2.172 to read as follows:
2.172 Surrender for cancellation.
Upon application by the owner, the Director may permit any
registration to be surrendered for cancellation. The application for
surrender must be signed by the owner of the registration, someone with
legal authority to bind the owner (e.g., a corporate officer or general
partner of a partnership), or a practitioner qualified to practice
under 11.14 of this chapter. When a registration has more than
one class, one or more entire class(es) but fewer than the total number
of classes may be surrendered. Deletion of fewer than all the goods or
services in a single class constitutes amendment of the registration as
to that class (see 2.173), not surrender.
. 27. Revise 2.184(b)(2) to read as follows:
2.184 Refusal of renewal.
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* * * * *
(b) * * *
(2) The response must be signed by the registrant, someone with
legal authority to bind the registrant (e.g., a corporate officer or
general partner of a partnership), or a practitioner who meets the
requirements of 11.14 of this chapter, in accordance with the
requirements of 2.193(e)(2).
* * * * *
. 28. Revise 2.193 to read as follows:
2.193 Trademark correspondence and signature requirements.
(a) Signature required. Each piece of correspondence that requires
a signature must bear:
(1) A handwritten signature personally signed in permanent ink by
the person named as the signatory, or a true copy thereof; or
(2) An electronic signature that meets the requirements of
paragraph (c) of this section, personally entered by the person named
as the signatory. The Office will accept an electronic signature that
meets the requirements of paragraph (c) of this section on
correspondence filed on paper, by facsimile transmission ( 2.195(c)),
or through TEAS or ESTTA.
(b) Copy of original signature. If a copy, such as a photocopy or
facsimile copy of an original signature is filed, the filer should
retain the original as evidence of authenticity. If a question of
authenticity arises, the Office may require submission of the original.
(c) Requirements for electronic signature. A person signing a
document electronically must:
(1) Personally enter any combination of letters, numbers, spaces
and/or punctuation marks that he or she has adopted as a signature,
placed between two forward slash ("/") symbols in the signature block
on the electronic submission; or
(2) Sign the verified statement using some other form of electronic
signature specified by the Director.
(d) Signatory must be identified. The name of the person who signs
a document in connection with a trademark application, registration, or
proceeding before the Trademark Trial and Appeal Board must be set
forth in printed or typed form immediately below or adjacent to the
signature, or identified elsewhere in the filing (e.g., in a cover
letter or other document that accompanies the filing).
(e) Proper person to sign. Documents filed in connection with a
trademark application or registration must be signed by a proper
person. Unless otherwise specified by law, the following requirements
apply:
(1) Verification of facts. A verification in support of an
application for registration, amendment to an application for
registration, allegation of use under § 2.76 or 2.88, request
for extension of time to file a statement of use under 2.89, or
an affidavit under section 8, 12(c), 15, or 71 of the Trademark Act
must be sworn to or supported by a declaration under 2.20, signed
by the owner or a person properly authorized to sign on behalf of the
owner. A person who is properly authorized to verify facts on behalf of
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an owner is:
(i) A person with legal authority to bind the owner (e.g., a
corporate officer or general partner of a partnership);
(ii) A person with firsthand knowledge of the facts and actual or
implied authority to act on behalf of the owner; or
(iii) An attorney as defined in § 11.1 of this chapter who has
an actual written or verbal power of attorney or an implied power of
attorney from the owner.
(2) Responses, amendments to applications, requests for express
abandonment, requests for reconsideration of final actions, and
requests to divide. Responses to Office actions, amendments to
applications, requests for express abandonment, requests for
reconsideration of final actions, and requests to divide must be signed
by the owner of the application or registration, someone with legal
authority to bind the owner (e.g., a corporate officer or general
partner of a partnership), or a practitioner qualified to practice
under 11.14 of this chapter, in accordance with the following
guidelines:
(i) If the owner is represented by a practitioner qualified to
practice before the Office under 11.14 of this chapter, the
practitioner must sign, except where the owner is required to sign the
correspondence; or
(ii) If the owner is not represented by a practitioner qualified to
practice under 11.14 of this chapter, the individual owner or
someone with legal authority to bind the owner (e.g., a corporate
officer or general partner of a partnership) must sign. In the case of
joint owners who are not represented by a qualified practitioner, all
must sign.
(3) Powers of attorney and revocations of powers of attorney.
Powers of attorney and revocations of powers of attorney must be signed
by the individual applicant, registrant or party to a proceeding
pending before the Office, or by someone with legal authority to bind
the applicant, registrant, or party (e.g., a corporate officer or
general partner of a partnership). In the case of joint applicants,
registrants, or parties, all must sign. Once the applicant, registrant
or party has designated a qualified practitioner(s), the named
practitioner may sign an associate power of attorney appointing another
qualified practitioner(s) as an additional person(s) authorized to
prosecute the application or registration. If the applicant,
registrant, or party revokes the original power of attorney, the
revocation discharges any associate power signed by the practitioner
whose power has been revoked. If the practitioner who signed an
associate power withdraws, the withdrawal discharges any associate
power signed by the withdrawing practitioner upon acceptance of the
request for withdrawal by the Office.
(4) Petitions to revive under 2.66. A petition to revive
under 2.66 must be signed by someone with firsthand knowledge of
the facts regarding unintentional delay.
(5) Petitions to Director under 2.146. A petition to the
Director under 2.146 must be signed by the petitioner, someone
with legal authority to bind the petitioner (e.g., a corporate officer
or general partner of a partnership), or a practitioner qualified to
practice under 11.14 of this chapter, in accordance with the
following guidelines:
(i) If the petitioner is represented by a practitioner qualified to
practice before the Office under 11.14 of this chapter, the
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practitioner must sign; or
(ii) If the petitioner is not represented by a practitioner
authorized to practice before the Office under 11.14 of this
chapter, the individual petitioner or someone with legal authority to
bind the petitioner (e.g., a corporate officer or general partner of a
partnership) must sign. In the case of joint petitioners, all must
sign.
(6) Requests for correction, amendment or surrender of
registrations. A request for correction, amendment or surrender of a
registration must be signed by the owner of the registration, someone
with legal authority to bind the owner (e.g., a corporate officer or
general partner of a partnership), or a practitioner qualified to
practice before the Office under 11.14 of this chapter. In the
case of joint owners who are not represented by a qualified
practitioner, all must sign.
(7) Renewal applications. A renewal application must be signed by
the registrant or the registrant's representative.
(8) Designations and revocations of domestic representative. A
designation or revocation of a domestic representative must be signed
by the applicant or registrant, someone with legal authority to bind
the applicant or registrant (e.g., a corporate officer or general
partner of a partnership), or a practitioner qualified to practice
under 11.14 of this chapter. In the case of joint applicants or
registrants, all must sign.
(9) Requests to change correspondence address in an application or
registration. A notice of change of correspondence address in an
application or registration must be signed by the applicant or
registrant, someone with legal authority to bind the applicant or
registrant (e.g., a corporate officer or general partner of a
partnership), or a practitioner qualified to practice under 11.14
of this chapter, in accordance with the following guidelines:
(i) If the applicant or registrant is represented by a practitioner
qualified to practice before the Office under 11.14 of this
chapter, the practitioner must sign; or
(ii) If the applicant or registrant is not represented by a
practitioner qualified to practice before the Office under 11.14,
the individual applicant or registrant or someone with legal authority
to bind the applicant or registrant (e.g., a corporate officer or
general partner of a partnership) must sign. In the case of joint
applicants or joint registrants, all must sign.
(10) Cover letters. A person transmitting paper documents to the
Office may sign a cover letter or transmittal letter. The Office
neither requires cover letters nor questions the authority of a person
who signs a communication that merely transmits paper documents.
(f) Signature as certification. The presentation to the Office
(whether by signing, filing, submitting, or later advocating) of any
document by any person, whether a practitioner or non-practitioner,
constitutes a certification under 11.18(b) of this chapter.
Violations of 11.18(b) of this chapter may jeopardize the
validity of the application or registration, and may result in the
imposition of sanctions under § 11.18(c) of this chapter. Any
practitioner violating § 11.18(b) of this chapter may also be
subject to disciplinary action. See 10.23(c)(15) and
11.18(d) of this chapter.
(g) Separate copies for separate files. (1) Since each file must be
complete in itself, a separate copy of every document to be filed in
| Top of Notices (455) December 26, 2023 |
US PATENT AND TRADEMARK OFFICE |
1517 CNOG 3125 |
connection with a trademark application, registration, or inter partes
proceeding must be furnished for each file to which the document
pertains, even though the contents of the documents filed in multiple
files may be identical.
(2) Parties should not file duplicate copies of correspondence in a
single application, registration, or proceeding file, unless the Office
requires the filing of duplicate copies. The Office may dispose of
duplicate copies of correspondence.
(h) Separate documents for separate branches of the Office. Since
different branches or sections of the Office may consider different
matters, each distinct subject, inquiry or order must be contained in a
separate document to avoid confusion and delay in answering
correspondence.
(i) Certified documents required by statute. When a statute
requires that a document be certified, a copy or facsimile transmission
of the certification is not acceptable.
PART 11 - REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT
AND TRADEMARK OFFICE
. 29. The authority citation for 37 CFR Part 11 continues to read as
follows:
Authority: 5 U.S.C. 500, 15 U.S.C. 1123, 35 U.S.C. 2(b)(2), 32.
. 30. Revise 11.18(a) to read as follows:
11.18 Signature and certificate for correspondence filed in the Office.
(a) For all documents filed in the Office in patent, trademark, and
other non-patent matters, and all documents filed with a hearing
officer in a disciplinary proceeding, except for correspondence that is
required to be signed by the applicant or party, each piece of
correspondence filed by a practitioner in the Office must bear a
signature, personally signed or inserted by such practitioner, in
compliance with 1.4(d)(1), 1.4(d)(2), or 2.193(a) of this chapter.
* * * * *
October 15, 2009 DAVID J. KAPPOS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
[1348 TMOG 311]