712.03 Response Signed by an Unauthorized Person
Notice of Incomplete Response. When it appears that a response to an Office action was signed by an improper party (e.g., a foreign attorney who is not authorized to practice before the USPTO, a corporate employee who does not have legal authority to bind the applicant, or, when the applicant is represented by a qualified practitioner, someone other than the practitioner or another qualified practitioner from the same firm), the examining attorney must treat the response as incomplete. The examining attorney must issue a notice of incomplete response granting the applicant 30 days, or to the end of the six-month response period set forth in the previous Office action, whichever is longer, to perfect the response, pursuant to 37 C.F.R. §2.65(a)(2) (see TMEP §§ 611.05(a), 718.03(b)). Note that if the correspondence address was changed as the result of a submission by an unauthorized party (e.g., a revocation and new power of attorney signed by the new attorney or other unauthorized signatory), the examining attorney must ensure that the new address is removed from the Trademark electronic record and that the notice of incomplete response is sent to the last previous correct correspondence address. The examining attorney must defer action on the merits of the response until a properly signed response is filed.
Applicant’s Reply to Notice of Incomplete Response. If the person who signed the response was authorized to sign, the applicant’s reply to the notice of incomplete response should state the nature of the relationship of the signer to the applicant. If the signer has legal authority to bind the applicant, the person should so state, and should set forth his or her title or position. If the signer is an attorney authorized to practice before the USPTO pursuant to 37 C.F.R. §11.14(a), the attorney should identify him or herself as an attorney and indicate the United States state bar of which he or she is a member in good standing. If the signer meets the requirements of either 37 C.F.R. §11.14(b) or (c), the person should explain how he or she meets these requirements. See TMEP §611.05(b) for further information.
If the person who signed the response is not an authorized signer, the applicant is unrepresented, and all proposed amendments in the improperly signed response can be resolved by an examiner’s amendment, the individual applicant or a person with legal authority to bind a juristic applicant may telephone the examining attorney to authorize such an amendment. If the applicant is represented by a qualified practitioner, that practitioner must authorize any examiner’s amendment. Otherwise, the applicant must submit a response signed by the applicant or someone with legal authority to bind the applicant ( see TMEP §§712.01 et seq.), or by a qualified practitioner. This should be done through TEAS (using either the "Response to Office Action" or "Request for Reconsideration after Final Office Action" form, as appropriate), or may be done by fax (unless it is excluded by 37 C.F.R. §2.195(d) ). In a TEAS Plus or TEAS RF application, the response must be filed through TEAS, or the application will lose TEAS Plus or TEAS RF status ( see TMEP §§819.02(b), 820.02(b)). See TMEP §611.01(c) regarding signature of documents submitted through TEAS. When a response is signed by an unauthorized party, it is not acceptable for the applicant to ratify the response through an examiner’s amendment.
Unsatisfactory Response or No Response. If no acceptable response is received within the time granted under 37 C.F.R. §2.65(a)(2), the examining attorney must hold the application abandoned for failure to file a complete response. See TMEP §718.03. In this situation, the applicant cannot file a petition to revive under 37 C.F.R. §2.66. The applicant’s recourse is to file a petition to the Director to reverse the examining attorney’s holding of abandonment under 37 C.F.R. §2.146. See TMEP §1713.01 regarding the standard of review for reversing an examining attorney’s holding of abandonment due to incomplete response.