T.M.E.P. § 712.01
Persons Who Can Sign Response

Executive summary:

This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.

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712.01 Persons Who Can Sign Response

If the applicant has an attorney who is authorized to practice before the USPTO under 37 C.F.R. 10.14(e) (see TMEP §602) , the attorney must sign the response. 37 C.F.R. 10.18(a).

If the applicant is not represented by an attorney who is authorized to practice before the USPTO, the response must be signed by someone with legal authority to bind the applicant (e.g., a corporate officer or general partner of a partnership). A non-attorney who is authorized to verify facts on behalf of an applicant under 37 C.F.R. 2.33(a)(2) (see TMEP §804.04) is not entitled to sign responses to Office actions, or to authorize examiner's amendments and priority actions, unless he or she has legal authority to bind the applicant.

Example: A corporate manager might have the firsthand knowledge and implied authority to act on behalf of the applicant that are required to verify facts under 37 C.F.R. 2.33(a)(2), but not have legal authority to bind the applicant. See TMEP §712.01(a)(iv) regarding signature of responses filed by corporations.

Authorizing an amendment to an application, or responding to an Office action, constitutes representation of the applicant in a trademark matter. Under 5 U.S.C. §500(d) and 37 C.F.R. 10.14(e), non-attorneys may not represent a party in a trademark proceeding before the USPTO.

See TMEP §§712.01(a) et seq. for guidelines on persons who have legal authority to bind various types of applicants. Generally, the examining attorney should presume that a proper person signed the response unless there is evidence in the record indicating that the person was not authorized to sign.

If a response to an Office action is signed by an unauthorized person (e.g., a foreign attorney who is not licensed to practice before the USPTO or a corporate employee who does not have legal authority to bind the applicant), the examining attorney should treat the response as incomplete, and require the applicant to submit a properly signed response. The response cannot be ratified by an examiner's amendment. See TMEP §712.03. See also TMEP §602.03 regarding the situation in which an examining attorney suspects that an individual who does not meet the requirements of 37 C.F.R. 10.14 is representing an applicant in the prosecution of a trademark application.

These same principles apply to authorizations of examiner's amendments and priority actions. If the applicant has a qualified attorney of record, the examining attorney must speak to the attorney. If the applicant is pro se, the examining attorney must speak to the individual applicant, or to someone with legal authority to bind a juristic applicant. See TMEP §§707.01 and 708.02.

712.01(a) Guidelines on Who Should Sign Response to Office Action

As noted in TMEP §712.01 , if the applicant has an attorney, the attorney must sign the response. 37 C.F.R. 10.18(a). This section provides guidelines for determining who should sign a response to an Office action, or authorize an examiner's amendment or priority action on behalf of a juristic applicant who is not represented by an attorney. This section does not apply to verification of an application, or other verifications of facts by an applicant. See 37 C.F.R. 2.33(a) and TMEP §804.04 regarding persons who can verify facts on behalf of an applicant.

The examining attorney may presume that a proper person signed the response unless there is evidence in the record indicating that the person was not authorized to sign.

712.01(a)(i) Signature By Joint Applicants

A response to an Office action by joint applicants who are not represented by an attorney must be signed by each of the applicants, since they are individual parties and not a single entity.

712.01(a)(ii) Signature By Partnership

A response to an Office action by a partnership that is not represented by an attorney must be signed by a general partner of the applicant. Signature by all the general partners is not necessary.

In appropriate cases, a response by a partnership may be signed by an official other than a general partner, if the record contains an explanation or documentation indicating that the person signing the response is duly authorized to act for the partnership.

712.01(a)(iii) Signature By Joint Venture

A response to an Office action by a joint venture that is not represented by an attorney must be signed by each party to the venture. Although a joint venture has many attributes of a partnership, it is a special partnership, which is very limited in nature and scope. Generally, signature by each party to the joint venture is necessary.

In appropriate cases, a response by a joint venture may be signed by a general manager or other official rather than by each of the joint venturers, if the applicant states that the person who signed the response is duly authorized to act for the joint venture under relevant state law.

712.01(a)(iv) Signature By Corporation

A response to an Office action by a corporation that is not represented by an attorney must be signed by a corporate officer. An officer is a person who holds an office established in the articles of incorporation or corporate bylaws.

The usual titles for officers are President, Vice-President, Secretary, Treasurer, Chief Executive Officer, Chief Operating Officer and Chief Financial Officer. Modifications of these basic titles are acceptable, such as Vice-President for Sales; Executive Vice-President; Assistant Treasurer; Vice-Chairman of the Board of Directors. In some organizations the Treasurer is called a Comptroller or Controller, and those terms are acceptable.

In Maine and Massachusetts the term "Clerk" identifies an officer of a corporation. The signature of the "Chairman" or "Chairman of the Board of Directors" is also acceptable, but not the signature of an individual director. The terms "Executive Secretary" and "Administrative Secretary" are acceptable, because they include the officer-title "Secretary."

There are some titles that are generally not accepted because they usually are not officers. For instance, a General Manager, or any other type of manager, is usually merely an employee, not an officer. The corporation cannot delegate authority to sign responses to someone who is not a corporate officer. In re Textron, Inc., 183 USPQ 301 (Comm'r Pats. 1974).

If the applicant states that the person who signed the response is authorized to bind the applicant under the articles of incorporation or bylaws, the examining attorney should accept the signature.

712.01(a)(v) Signature By Foreign Companies and Corporations

There are significant differences between the legal entities established under the laws of the United States and legal entities established and recognized under the laws of foreign countries, and the titles and duties of officers of foreign corporations and companies often differ from those in the United States. In the case of foreign entities that are in the nature of corporations, the USPTO will accept the signature of a person considered to be equivalent to an officer under the law of the foreign country.

In foreign countries, a person who holds the title "Manager" or "Director" is normally an officer or the equivalent of an officer.

The term "Procurist" is used in a number of countries to indicate an officer. For British companies, the terms "Registrar" and "Confidential Clerk" are the equivalent of officers.

If the applicant or the applicant's attorney states that the person who signed the response holds a position equivalent to that of an officer of a U.S. corporation, the USPTO will accept the signature.

See TMEP §803.03(i) regarding terms used to identify a foreign entity as applicant.

712.01(a)(vi) Signature By Unincorporated Association

For organizations that are less formally organized than corporations (e.g. fraternal societies, unions, unincorporated associations and governmental bodies), the titles for officers are less standardized. These organizations frequently use more individualistic terms for titles than the terms customarily used by corporations, and the officer positions themselves may not be as clearly or as formally provided for as is the case with corporations. Regardless of how unfamiliar the title is or how informal the position seems to be, the USPTO will accept the signature if the signer has, within the framework of the particular organization, authority equivalent to that of an officer to act on behalf of the organization. Some titles that have been accepted are Director, National Director, National Commander, Permanent Chairman, International Sponsor, Supreme Ruler, Royal Impresario, Chairman of the Steering Committee.

712.01(a)(vii) Signature By Limited Liability Company

A limited liability company has attributes of both a corporation and a partnership. See TMEP §803.03(h). Laws vary to some extent as to the authority conferred on various individuals associated with the limited liability company. Generally, a "manager" has authority equivalent to an officer in a corporation. Therefore, anyone identified as a manager, or equivalent, may sign a response to an Office action on behalf of a limited liability company that is not represented by an attorney. In addition, anyone with a corporate-officer-type title may sign. In some states the members, who are the owners, also have authority to act on behalf of the limited liability company.