Discover the Power of Electronic Signature Legitimateness for Assignment of Intellectual Property in United States

How to eSign a document: electronic signature legitimateness for Assignment of intellectual property in United States

Good afternoon, thank you all for attending today's trademarks Webinar series presentation representation signatures an ethical issues in trademark prosecution practical information for attorneys. A link to today's slides was included in the email you received with the link to join today's presentation. This session is being recorded and will be made available for viewing on the USPS website and YouTube channel within two to three weeks of the presentation date today. Our presenters for today's Webinar are Kathleen Cooney Porter senior TM advisor to the USPTO director. Robert Lavache senior trademark legal policy Advisor, and David Mayer, a trademark legal policy attorney. If you have any questions during the presentation, simply type them in the chat window to all panelists. There will be time for questions. There will be time for answers from the presenters at the end of the session if we do not get to your question or if you were watching a recording of this presentation, please email your question to tmpolicy@uspto.gov. That email address will be posted on the last slide of the presentation as well. Today's presentation will cover the following topics. General ethical considerations for practitioners recognition as a representative signature requirements an authority to sign Rule 1118 signature as certification. Considerations for proof abuse audits and addressing this conduct before the USPTO. And now I will turn it over to Kathleen. Clean Porter. So good afternoon or good morning everyone and depending on where you're watching, the presentation is a pleasure for for us to be here. So I'll be starting us off with general ethical considerations before practicing before the USPTO. So I turn attorneys practicing before the office are subject to the rules of professional responsibilities set forth by their individual states of condition. All practitioners engaged impacts before the office are subject to disciplinary statistics of the office. So use PTL rules, expressional conduct. A practitioner shall provide competent representation to a client. A practitioner shall reasonably consult with our clients about the means by which the client objectives are to be accomplished. Keep the client recently informed about the status with the batter and she explaine matters to the extent reasonably necessary to permit the client to make informed decisions regarding representation. A practitioner shall not practice law in a jurisdiction in violation of the regulations of the legal profession. After 610 and or assist another in doing so. General ethical considerations. What is packed before the office in trademark matters. Practice before the office is very broad term that includes. Any related? Any law related service that comprehends any matter connected with the representation to the office or any of its officers or employees relating to a client, right privileges, duties or responsibilities under laws or regulations administered by the Office for the Registration of the trademark. So this list may include not exhaustive. Preparing necessary documents in contemplation of filing the documents with the office. Corresponding and communicating with the office. On behalf of the party, consulting with and giving advice to clients concerning matters pending or contemplated to be presented before the office. Planning, preparing and prosecuting application for trademark registration and also preparing an amendment which may require written arguments to establish the legibility of a trademark. So see January 37 CSR, Section 1. 11.5 Most USB key employees that trains communicate, but here are also attorneys and are bound by the rules of threshold contact as well. USPC employees may not provide legal advice or opinions about trademark rights, trademark infringement claims, or the ability of a trademark registration. Yes, speak employees may not discuss an application directly with a represented applicant unless the attorney is also part of the conversation. Yes, pick your employees may not discuss the merits of any particular application or registration with a third party. General ethical information. So additional schema mind. Will two point 11 E providing false petitions or fraudulent information in connection with the requirements. For providing accurate domicile information shall be deemed the bidding at paper or improper progress in violation of section 11, point 18V of his chapter. And subject to sanctions and actions provided. Infections 11.18 feet. Will 2.922 point 192 trademark applicants registered and parties to the proceedings before their trademark Comma Appeal board and their attorneys or agents are required to conduct their business with the CORM and courtesy. Documents presented in violations requirement will be submitted to the director and would return this by the Directores direct Thor Iti. So see generally 3074 X 11.5. I'll hand it back over. Yeah, yeah. Can you hear me now? OK, there we go sorry bout that. So good afternoon everyone. I'm going to talk briefly about but it takes to be recognized as a representative before the office. There are basically three ways that one could be recognized as a representative in a trademark case. They are set forth in Rule 2.17 and these change slightly in connection with the US Council Rule update fairly recently, and it provides great flexibility in how one can appear. The clearest way is to be appointed in a properly signed power of attorney, which is usually done with the car form. The change of address and representation form through TS. Another way to do it is to sign any document on behalf of an applicant, registrant or party to a preceding who's not already represented by another attorney. I'm the 3rd way, which is kind of. The catchall is to appear by being identified as the representative in any document submitted to the office on behalf of an applicant register other party who's not already represented by a qualified practitioner, and the third one is very broad. We do read into that that the attorney has consented to this representation. We have had a few instances where an attorney has been appointed without their knowledge, which is very rare and can be addressed by contacting the Policy office. There's a little delay on the slides, I apologize. So what does it mean to have a party who's already represented representation recognized during the pendency of an application is continue to. It continues until the attorney is either revoked or is replaced by a new attorney at a different firm. But when ownership changes or the mark registers or the application abandons the office considers the recognition of the power of attorney to automatically end. Very often we will have. Information will stay in the record post registration and we do that as a courtesy, but the next attorney then to file a document post registration can technically appear by doing so. So we we understand also that when somebody submits the document in connection with the maintenance filing, we will recognize that attorney to be the attorney of record until that maintenance filing is either accepted or finally rejected. And with that I'm going to pass it on to Bob. Thanks David and good afternoon everyone, so let's talk a little bit about how one which sign of submission to the office. We have two main forms that we accept. One is an electronic signature and that's the electronic signature that is provided for in our rules and that is essentially any combination of letters, numbers, spaces or punctuation marks. That's the signatory has adopted as Sigma. Sure place between two forward slash symbols, so generally if it meets those requirements of the rules, we accept the signature. But of course we'll get to the authority to sign in some later slides. The other form of signature that we accept is the traditional pen and ink signature, and the way that you would submit that signature to us is by. Having whoever signing it sign it along with the declaration verification or environments that are being. Assigned scanning those into a JPEG or PDF file and then upload uploading that as an attachment to the T submission. The other thing I want to mention here is the sort of mechanism for having someone else sign electronically a submission when you're not the one who's going to sign it and you're not with the person who is signing it, and we have what we call E sign on and it's a method of completing the document and then providing a link for the signature to be entered. Two hours of the signatory is once they review that document. And then enter their signature. They can then return it to the party who will be submitting the form. After they complete it. So now let's talk about. What are rules require in terms of the electronic signature and handwritten signature? In both cases, the signature has to be personally entered. In the case of an electronic signature or personally sign, in the case of a pen and ink signature. Now, if you take a look at Rule 2.193, you'll see that it includes the language, indicating that you could use some other form of electronic signature specified by the director. But presently we don't have any such other forms. I know that document signing software is very popular now that currently under our rules for most types of signature are it's not permitted. Currently we are looking into that. Very important here when we're talking about ethics and what are rules require, another person may not sign the name of an attorney or other authorized signatory, so whoever's. Designated as a signatory, actually has to personally enter that signature. That means that a paralegal or legal assistant or secretary or anyone else could not enter us an electronic signature on behalf of the person signing. An important note here, and we'll get more into this sort of ethical obligations later in the presentation, but under Rule 11.303, practitioner owes a duty of candor to the office in May not permit the submission of a false statement or fact of law, so that of course, would or could apply to improperly signed documents submitted to the office. Moving on signatures have to be a real person, so when you identify this signatory, it has to be a person. It can't be the company name, for instance. And our rules also require that the first and last name in the title or position of the person who signs must be set forth below or adjacent to the signature we are. We read that adjacent wording fairly broadly. So in many cases, if it's somewhere else in the filing and it's otherwise properly done, we will accept that. So here are a couple of examples of signatures that are never acceptable. The first example here at the top shows that the signatory signatory name and the signature itself identify a company name. There's no real person identified, so as I mentioned, that would not be an acceptable signature. It should be rejected by the examining attorney and would trigger a requirement in an office action. And in the next example, you see there's no signature provided at all. That also of course would trigger a an office action. I should also note here, under Rule 1118 a each piece of correspondence filed by Practician in the office must bear a signature either personally signed or inserted by the practitioner. Now we don't traditionally strictly enforce that, so if a signature is omitted, we don't necessarily consider that a violation. But if we see a pattern of behavior that could lead to further inquiry. With that I will turn it over to David for authority to sign. Thanks Bob and I I think part of the authority to sign question might actually answer one of the questions we've received from from the audience regarding why we require different people to sign out of attorney at different stages. So let me jump in by saying that. When somebody has to sign a document before the office, we need the proper person to do it. But the proper person will depend on what type of submission we're talking about. We generally split these into four different categories, we have verifications of fact, then the responses, amendments, requests and petitions, and then power attorney. Then this catchall, we say, mixed documents and what is meant by mixed documents is essentially those situations where the document does multiple things. A lot of our forms through tease. Allow you to do things like make an amendment, but also change out the attorney. So. Let's start by verifications affect. These are primarily applications. Allegations of use requests for extensions of to file, a statement of use, a petition to revive, or any sort of declaration. So for these were talking about any person with legal authority to bind the applicant, a qualified attorney representing the applicant or, and this is very broad. Eight person with first hand knowledge of the facts and actual or implied authority to act on behalf of the applicant. And generally we're not going to question the authority of the person who signs any sort of verification of facts. Unless there is some inconsistency in the record. Which is quite rare. For responses, amendments and requests and these are governed by several different rules. This is for any response to office action. Any requests for expense abandonment. Request to divide petitions to the director. Requests to make any real change to the record, so that includes addresses and amendments to the application. If you're changing out the ID. For instance, if there is an attorney appointed, an attorney must sign these types of submissions. If the attorney, if there is no attorney, it has to be signed. By somebody with legal authority to bind the applicant or registrant. Ann for joint applicants or registrants. Everybody must sign for juristic entities. It's not just that the person signs, we also have to know that the person has the authority to represent the juristic entity by virtue of his or her title or position. So for juristic entities and this is relevant for later too. When we're talking about who can bind a juristic entity, for the TMP has a lot of different examples for all different types of these entities. Domestic corporations, of course. Probably the most popular there. We want corporate officer. We want the President, the Chief Financial Officer, somebody with a corporate title for limited liability company. We're looking for somebody who has the title manager, owner, principle, or member. It's a little bit more broad, and for most other types of entities. Again, the person who who combined. Be the company. I will say also that we will take we examining attorneys especially are trained to recognize titles like CEO. They'll say they see VP, they'll understand that that's a senior vice president. It's unacceptable, though for a juristic entity to sign as a trademark coordinator or agent of, or just authorized signatory. The exception being that if the record shows that this person is already been has been recognized, if the president of the Corporation signs the application and then signs later as authorized signatory will presume that they have not changed positions and will accept that. I will note that general counsel and in-house counsel there's there's a couple of things to keep in mind. And in-house counsel, or any sort of general counsel, is qualified to practice before the office as an attorney. However, in less they also have a corporate equivalent title. They can't sign as a corporate officer. So what we're saying by that is that somebody identified as in-house counsel may sign a response in an amendment if that person is currently recognized as the attorney of record. But that person may not revoke the authority of a previously appointed attorney and less they do so in their capacity. As somebody who's able to legally bind the applicant, so if you're trying to as in-house counsel revoke the authority of outside counsel, you have to sign it as general counsel and Senior Vice president. If that's the accurate title. If the general counsel is not an officer, they would have to have an officer sign that particular document. So for a power of attorney, that's a good segue to how do we change out the attorney so that has to be signed by an individual applicant, registrant, or party to a pursuit to the preceding or by somebody with legal authority to bind the Applicant Register party. So once an attorney is designated, the name practitioner is allowed to to sign an associate power of attorney appointing another qualified practitioner. But we know that revocation of the primary attorney attorneys power also revokes any associate power of attorney, so Now's Council could be recognized as the attorney. They're not recognized as someone with legal authority to bind the inner registering unless that person is also an officer. So very often, we would suggest that if an application is filed by the in-house counsel. Later on that in-house counsel can appoint a outside counsel to file responses on their behalf because that would be essentially an associate power of attorney. So what about these mixed submissions? So mix the missions? Are these again, these examples are where the TS form allows multiple things to happen. Each portion of the sub mission has to be considered separately to determine if it's properly signed. So if an attorney is appointed, the attorney must sign the response in the voluntary amendments, but the applicant may sign the declaration that's contained in a response or amendment, but if it's if the response portion is not properly signed, then that declaration can't be considered. This is, this isn't really that. We're planning to provide additional clarification for in the next TMP update. And with that we're going to get to the fun part. We're going to do some interactive stuff, and I'm going to pass it over to Kathleen again. Or if I. Do this correctly. There we go. OK, as David said, now for the fun part. First hypothetical is an individual applicant. How we do it to miss his own application Pro say? After receiving a complicated looking office action, he asked his criminal defense attorneys you gotta help take a close look and see if she could help. So that it takes a look and realize that the issues are fairly straightforward, so she fills out the response without checking out the box to indicate a new attorneys appearing. But personally signs at and identifies herself as applicants. Attorneys for the question is, who is the attorney record and is it properly signed? And pretend there is some jeopardy. Final Jeopardy music going on right now. I don't think the agency licensed music. Alright, so we have to pretend. So we've done the polling. Looks like we have a 6040 split there. 90% say or no? Not quite. Ready for the answer. Yeah. And. So the answer is yes. Ivana is an attorney admitted to practice by the highest court of the USA restriction and therefore authorized to package before the USPTO and trademark matters. Her signature is sufficient to recognize as the attorney of record. Under 370 of our section 2.171, two looks like we have some of the cost is broken off. At the end. I'll read it but but she will draw a new office action. Attorney Bar information is required when a new attorney has appeared, she probably could have avoided this office action if she was a little bit more familiar with the USB to form. And I'll pass it on. Thanks Kathleen. Alright, let's go to number 2 here. In this example, do we file is designated as attorney of record in an intent to use application for domestic juristic entity and its Eastside? By surely you jest the applicants marketing manager. After a notice of allowance issues, the office first receives a change of address or representation form. Appointing carryover apparently applicants in-house counsel. As a new attorney of record. The form is signed again by. Surely you jest still identifying herself as marketing manager and carryover submits a statement of use the next day. So who is the attorney of record an? Is this all properly signed? I see we had a comment that said some people previewed our slide so they know the answers and they didn't want to participate in the polls, but I won't tell anybody if you decide to do that. I also wanted to mention we're getting a lot of questions about signatures and will try to pause after all these high posting to answer some of them. Alright, looks like most of you said no. So what's the answer? Well, when David or IR consulted about these signature issues, we take a look at the entire record and we go through each submission to see who was appointed, who signed, and then we follow it all the way through to see where we end up. So let's start. With the IT you application. Dewey is designated as the attorney there so that right off the bat means easy attorney of record. It's fine for surely you jest to sign the application as marketing Manager, because application as we said is a declaration signature. So she has first hand knowledge or and implied or actual authority, which we presume in most cases she can sign the application so it's good so far. So let's talk about the change of address or representation form. Now we know there's already an attorney of record. Surely you Jeff signs the car form appointing carryover. But there's already an attorney of record, so that means anyone who signs that has to have the proper authority on behalf of the juristic entity to sign in marketing Manager as we said. Is not going to cut it so cannot appoint carryover. So do you? File remains the attorney of record, but then we have a statement of use and carry over submits that in presumably signs it. That's OK, she can sign the statement of use because, again, like applications, the signature in the statement of use is a declaration signature. So kind of a weird result there, but. These can be tough. I think God. He's going to be very surprised to get the registration certificate thinking that carryover should be getting it, but that's the likely outcome here. Alright, so let's do a couple more individual applicant domiciled in the US, submits an application signed by attorney. I forget who's information is filled into the attorney fields. Of course I forget living up to his name abandons the application which only required a new specimen. A timely petition to revive is submitted with the new specimen Anna, properly worded declaration, signed by registration applicants Uncle with a sub mission sink. The signature by Bill am, often attorney at Law, who appears to be from a different firm than Mr Forget. So let's try this one. Who is the attorney of record and is this properly signed? I'm not sure if. All is updating. There we go so. Close split at most people think no. No, but in this case actually maybe a surprising yes. The reason is that when the application abandoned Mr. Forgets power of attorney automatically ended. So the properly worded declaration came from registration applicants Uncle, and as we mentioned before, a declaration of is a verification of facts which can be signed by anybody with first hand knowledge. So unless we have evidence to the contrary, we're going to presume that Mr. Stration can sign the verification effects. Bilham often was named in a document submitted to the office. Submitted by by a person with apparent authority to do so. So we're going to assume that bill more often is now the attorney of record. So maybe a surprise result, but again, that flexibility of the revised to 2.1 seven B at play. Right passing it back to Bob. Alright, and example 4A juristic applicant domiciled in the US submits an application signed by an attorney general counsel who does not enter enter her name in the attorney fields. A response is subsequently filed, making several amendments signed by Know Little of Sanction Law Group who does enter his attorney information in the attorney fields. Who is the attorney of record here and is this all properly signed? So maybe the maybe the names here give something away will see. And again we will. We will pause to answer some questions that we're seeing come in. OK, pretty pretty evenly split. Here we have 69 saying yes 53 saying Now let's see. Now. So. An attorney signed it as general counsel. In that case, we can presume that general Counsel identifies an attorney so. Assuming that an attorney is admitted to United States, she is the primary turn of record because the initial application was a document signed by an attorney on behalf of an otherwise unrepresented applicant. So once we have a recognized attorney, Noah Little cannot submit the response and less either being appointed by and less. He's either appointed by someone with legal authority to bind the applicant or an attorney grants an associate power of attorney to him. I'll turn it back over to David. Alright, we're almost there. This is the last one of these and then will pause for some questions and don't feel bad if you're getting some of these wrong, these are the tough ones we we are. We're trying these these difficult ones, so we have a juristic applicant domiciled in the US and submits an application naming imasu you from her squids and Marsh as the attorney of record. The application is signed by Just Incase trademark coordinator. After we get the after the issuance of an office action we get a a change of address or representation form signed by Willie, Notice Chief in-house counsel in the form that it's bad. From I can't believe it's a law firm is named as the new attorney of record that then later files a response. So is this one properly signed? Think the names are big hand here. More seconds. And we really do appreciate y'all playing along with this. OK, so as most of you notice that the names give it away here, no this is not properly signed, so I'ma Sue you is still the attorney of record because the applications properly signed just in case the Toria trademark coordinator can sign a verification of facts. But Willie notice can't sign a new because he there's no indication that he's the corporate officer or the equivalent. So best response can't be accepted because there's already recognized attorney from a different firm. This could have been fixed if really notice has signed as Chief in-house counsel and corporate Secretary Chief Legal Officer. Some titles that gave him some sort of officer level authority. OK, I'm going to pass it back to Bob. I think we're going to pause for some questions for some questions here though. Yes, so going all the week we had quite a few and. I think someone related to the earlier, much earlier slides. Let's see this one. Says as it relates to signatures, we know that under the rules with requirements are, however, in remedying the situation was the USP toes position for a registered mark, since USB TIO will not invalidate the mark, making additional filings only hurts the clients. Is there an appetite to change the requirements to loosen them? Why do we require a power of attorney for existing applications to be signed by the client but not for new applications? So in terms of remedying an improper signature when something's already registered, we you know we talked to attorneys on the outside, we let them know that that's a decision that they have to make with their client, because there is the Section 7 presumption of validity validity by the office, and we try not to. Enter anything into the record ourselves that would you know potentially calling the question the ability of registration, but to the. Extent that an attorney in his or her client wants to kind of clarify the record they are permitted to do that by filing something post registration. Attempting to sort of cure the record. However they want to do it, but again, that's the decision that the client in the attorney have to make, because once you sort of called into question the signatures that. Were made prior to registration that could potentially open you up to some third party attacks on the registration. In terms of changing the requirements to to loosen them, we don't have any particular plans to do so right now. We do want to sort of maybe help clarify some of the rules in the future because we know that they can be very complicated. In terms of the question of why we require power attorney for existing applications to be signed by the applicant but not for new applications, all in new applications. At that point the applicant is essentially unrepresented and therefore an appearance under our rules designation. Even without signature counts as designating an attorney. However, if there is already attorney appointed, we need someone who has the proper legal authority on behalf of the client too. Revoke the previous attorney in. Appoint a new one, but of course, as David mentioned, if there's already an attorney of record in that attorney wants to appoint associate powers of attorney. They are welcome to do that. Was there anything else David that you add to that no? Yeah. If I could answer the next one, I think we had two related questions about about when representation automatically ends. So again, representation will automatically end up an abandonment of an application, change of ownership or registration of the mark. So one question was whether that is an immediate effect. And yes, it's immediate appointment of the application. So if a different attorney were to file the petition to revive, we could treat the applicant's being unrepresented at that point. And again, that's kind of it's out of convenience to make sure that if the applicant we're having some issue with their attorney that caused the. An office action to go unresponded to that it's convenient and easy for them to appoint a new attorney. We had a follow up question to another related question was whether what who gets the registration certificate if if representation ends that registration. Well, it goes to the current correspondent of record. We leave the attorney information in the record as a courtesy because we do recognize that in many situation. And that representation is going to continue that the attorney is the one who is acting on behalf of this now registrant. We do have a TS form that allows an attorney to tell us my representation has ended. Becaused the mark has registered or the ownership is changed. So Take Me Out. So that can be done, but we leave it to the attorney to do that. And I'm trying to see if there's any other related question here. Yeah, just to add to that with the rule saying that attorney representation is considered to end on registration. And why do we retain the attorneys information that was a choice made. Along time ago actually after we got feedback from stakeholders that they would prefer to stay in there once you're registered so that could continue to receive correspondence. But it is. It is an issue that is commonly raised by stakeholders now. And we certainly are looking into that, and whether there's a better way to do that. We have two very in rapid succession. There were two questions about who may sign a power of attorney form. One asked us to confirm that a newly appointed attorney may sign the change of attorney rather than the trademark owner, applicant and another one asks that they've seen in some cases that the new designated attorney signs him or herself as the new attorney. Is that allowed? So the short answer is no, that is not permitted in an application in the application stage, the trademark owner, the applicant, is the only one who can revoke an ongoing power of attorney. So the new attorney cannot appoint him or herself as the attorney of Record post registration. If an attorney is signing a change of correspondence and essentially saying I'm submitting this on behalf of the registrant. An the new attorney signs that. Request to update the correspondence address that will essentially appoint the new attorney as the Attorney of Record, because again, post registration. The power of attorney has automatically ended, so during the pendency of the application, no, it has to be the trademark owner or somebody with authority to bind a juristic applicant. And I don't think we've answered this yet. The question was what happens if you have a client sign a statement of use declaration? Is this a violation of 1118? Since currently there so you form doesn't allow the attorney to sign. It only has one signature section for the Declaration, so that's right, there is only one signature. In the so you form currently and that's the declaration signature in support of the statement of use. So in that case is that would not be considered a violation, and it's typically, I think what practitioners would prefer to happen is to have the client has more knowledge about how the market is being used. File that declaration. And if you read 1118 about having an attorney, either sign or include a signature, I mean I think that's broad enough to indicate. In situations like this that you know there's compliance because they have, you know, affected a signature by having someone else sign in. Said anything to add to that David, no, no, that's perfect. We also have a couple of questions about. I think there was some confusion about declaration signatures about whether who can sign the declaration, whether it's just the applicant or the attorney. For this I'm going to point everybody to rule 2.193 E and that rule contains all of the everything we're talking about today about who is allowed to sign for which type of document. It's broken down by document, but essentially a verification of facts can be signed by. Someone with legal authority to bind the owner. Somebody with first hand, knowledge of the facts, and the implied authority to sign and or the attorney. So a declaration can be signed by the broadest group of people. It's just the amendments and things like that where we require if there is an attorney for the attorney design. Think. We have a few more here. I think we might want to move on since we've got it said 3:45 now, so let's move on and try to get to the. The rest later. Alright, moving on to Rule 1118 in detail. And what we wanted to highlight here is that under Rule 1118, any party presenting paper, whether they're practitioner or non practitioner an when we say presenting, we mean flying, filing, submiting or even advocating. Our behalf of someone for that submission. Anyone who does that is making certain certifications first is 1. You're probably all familiar with, which is the certification or the environment that all statements made in the submission. Are true and that any sort of willfully false or fraudulent statements or representations are subject to penalties under 18 USC 1001. But there's also in B2B provision that, to the best of the parties knowledge, information in belief formed after an inquiry reasonable under the circumstances of the paper is not being presented for improper purposes, and that is otherwise supported by evidence. So there's no frivolous. Claims being made in this sort of. This sort of mirrors. Yeah, professional ethics. Rules like the model code. So the question that would occur to most after reading that is what is an inquiry reasonable under the circumstances we know from case law that reasonable inquiry includes information known or that can be reasonably incredibly readily obtained that generally an attorney may rely on information provided by a properly educated client unless the attorney has reason to believe that such information is inaccurate or incomplete. So now I'd like to open up for at least a brief discussion. What is a reasonable inquiry for attorney signing declarations supporting specimens? Kathleen. Well, obviously you need to ask the whoever signing if all goods and services are in use in Commerce and for services many practitioners know has had an example for each service. Are you really asking this information on the right person? If you're dealing with a foreign associates, has it for an associate requested the correct information from the client and if the client doesn't understand English, have they translated the documents they know what they're signing. What would you think is a properly educated client? In terms of submitting specimens or or another submission. Do you want to take that? Quote For you know when I was in private practice, I remember there was an instance where where. The client sent us for for maintenance filing a image that appeared to us to be the same image that was in the original application from 10 years prior, and think they're reasonable. Inquiry would mean. Challenging the client that is saying is this still how you're using it? Is it to say it appears to be the same image and in at least one case it turned out that no, they weren't using it with those goods and the market actually change you as a stylized mark. It didn't even look like that and it led to the conversation that maybe we need to file a new application to cover to cover this new variation of the mark. So I think looking at the record is really important in these cases. Reasonable inquiry means. Looking critically at what your client descending you and making sure that. That it makes sense, I think. Common sense is a good show. Right, so it's fair to say that if you have no real idea of how much your client knows about the requirements here, there is some education that you have to do before you can really accept you know some of their answers right. Correct? Right? OK. Alright, why don't we move on to the next slide? And I am collecting more of these questions. By the way, everybody. So when we get to the end we can do that again. So when we're talking Bout Rule 1118 there, there's two big parts of it we talked about. 11:18 a briefly be. He is what Bob was just talking about. Rule 1118 C deals with violations of the of our rules, and. If if one violates Rule 1118, B sanctions could include things like striking the paper, referring conduct to weed the office of enrollment in discipline, precluding parties from submitting documents, or presenting or contesting issues affecting the weight given to the paper, or in the most egregious cases, the office can terminate the proceedings. And for practitioners, very important is actually 1118 D just a reminder that anybody is filing anything before the office is subject to the jurisdiction of the Office and OE can can bring about disciplinary actions for the purposes of the USPTO, but can also contact state bars. And there is reciprocal discipline. We're passing to Kathleen. OK, so now we're going to discuss. Could use audit post registration submissions. So who should sign a Section 8 or 71 affidavit? The attorney in house counsel IT person having first hand knowledge of the fact. So essentially, the declaration attesting that won the marketing used with all of the goods and service identified in the Declaration, and two the specimen shows the mark as currently used in Commerce on our connection with the goods or services. If there's, I think there's very many experienced practitioners listening, and we know that sometimes your client wants to maintain historical registration, and sometimes they just can't because they don't have current currently used goods or services in Commerce will discuss excusable nonuse in one or two more slides. So the signatory to a Section 8 or 7 APFA David is certifying that, to the best of the signatories knowledge, information and belief formed after an inquiry reasonable under the circumstances. The factual contentions has evidentiary support. Most importantly, the signatory is also subject to penalty of perjury for knowingly and willfully making six false statements. A representation to the office. As many of you know, use PCs began a post restoration specimen pilot program in 2012 and then it was made permanent in 2017. Under the proof of use audit program we use PT. Oh, make cancel audit registration with unsubstantiated use claims or to delete unsupported goods or services. Since implementation over 50% of audited registrations are either cancelled or have goods or services removed. Obviously, the troubling statistics to date suggests lack of care, lack of knowledge about what the law requires. Directions are required to submit proof of use for additional goods and services and registration. It registers delete those goods or services. They are then required to provide proof of used for all goods or services. As many of you know, and our proposed rulemaking, there's zero fee for section Seven Amendment requesting deletion of goods or services prior to an audit and no additional fees were deleting goods and services currently with the submission of a section 871 acid. David, but. 2 dollars 200 class via teach for deleting goods or services importantly after submission and prior to acceptance of a Section 8. Or 71 at David. So the attorneys have a responsibility to confirm that the market is in use for each goods and services listed in the registration before signing or filing the declaration of use. So have Russians consulted with sales records to determine if there are ongoing sales of each list? It's good and service. Confirm with your client that sales are for goods services sold in connection with the marks shown in the registration. And consider if there is non use and it may be excusable. Those of you who may be new to trademark practice. Some examples are. Catastrophes like fires or natural disasters or trade embargo or severe illness or death of a person that mainly involved in the business. So there are there are ways to prove excusable nonuse, but the bar is pretty high. Most importantly, attorneys or registrants to routinely delete goods or services after audit may be referred for discipline. So tips for successful post registration submission? Again, confirm that specifying show legitimate use in Commerce. Make reasonable inquiry into how the resident is using the mark. Continue to checklist for particularly long education or. Services that may be difficult to read. For instance, if your client, a pharmaceutical company or a chemical company that has a very long list of goods and you might want to have a checklist. Prepare for a possible audit by suggesting clients keep updated documentation of used in connection with user services. Photograph the mark on product web page examples with the URL and date visible or invoices or photographs of goods being box for transport. Passing by. So going to jump very quickly to addressing misconduct in TMS. Are we doing well when we're talking bout misconduct involving attorneys? The first thing we do is to ask, is this really the attorney where we have evidence that suggested and attorneys information has been used without that attorney's knowledge or consent, we immediately investigate. We try to attempt to contact that attorney and we try to fix that, especially as quickly as possible. If we can't reach an attorney or we're just not sure and we're talking about. Applications we might have an examining attorney actually request additional bar admission information on a case by case basis to make sure that we're actually dealing with the real attorney. Where an attorney is improperly signing submissions an it's a pattern of behavior. We will refer attorneys to the Office of Enrollment in Discipline. As I mentioned before, we does have the power and authority to suspend practitioners. An can refer conduct to an attorney State Bar for reciprocal discipline. The Commissioner for trademarks also issues show cause orders in appropriate cases is essentially that can result in suspension from practice in trademark matters and again under 1118 C. We can end up striking certain documents or terminate a proceeding before the office again. In the most egregious cases, the office will also refer suspected criminal activity to the Office of the Inspector General and sometimes in some cases directly to the Department of Justice. Pastor Bob to talk about one thanks, David. Yeah, and I think we just like to close here with a recommendation to read the exclusion on consent order that. Issued about three 3 1/2 years ago now for Matthew Squires. He was an experienced trademark attorney high volume Filer but pursuant to the consent agreement he did not admit any violations of the rules of professional responsibility or the rules of professional conduct. But he did agree to exclusion while a disciplinary complaint was pending against him alleging at least 31 rules of professional. Responsibility and rules of professional conduct. So we like to call this sort of the baskin-robbins of ethics cases. It's got 31 flavors of alleged violations. It's very informative. It gives you a good idea of things that could potentially go wrong when submiting things to the office. With that will close the presentation, but I know we do have some questions that even though we're at 4:00 o'clock hour, I think we can try to. Answer at least some of those. I know there was a question about the auditing process and whether it's truly random and how they're selected. So a registration can be audited if a Section 8 or section 71 decoration is timely filed. And the registration includes at least one class with four or more goods or services, or at least two classes with two or more goods or service. Yes, so that's how those are selected and then in that case if they are selected, additional proof of use is required. So we we received have been collecting some of these I could ask, ask him anybody. Jump in to answer one question we got. We had we received is if use only requires an offer of goods for sale way must actual sales be confirmed? I can answer this one right away. I think that the person asking this might be completing the patent standard with the trademark standard. Under Section 45 at the Trademark Act used in Commerce for goods requires that the mark is placed in any manner on the goods or their containers or displays, or the tags or labels affixed thereto, or in practical cases, on documents associated with the goods and the goods are sold or transported in Commerce and offered for sale is not necessarily use in Commerce. We received the question is a qualified US attorney required in the case of the Madrid Protocol designation that does not present anything requiring an office action? You wanna feel that one? Ann so I was reading some of the other questions, but in Madrid protocol designation that does not present anything requiring an office action, is a qualified. You miss attorney required. Well, now if it's if it's something that would otherwise be approved for publication, and that's probably what the examining attorney is going to do. If there's an office action, that's when the requirement would be made. I hope that answers the question, not sure that was a question or not. Yeah, I think I think it falls into that exception in the examination guide. Right for US domiciled clients, if they happen to be outside the United States when they signed the Declaration, does that matter? Or do they need to be in the United States with the US IP address when they sign? Do I take that David? Well, sure. So there's no. There's nothing in the rules that requires that a party be in a specific location for signing the matter when we're talking about the domicile rule in the US Council rule for domicile, that's the question of where the applicant is actually domiciled. Is somebody's on vacation outside the country, and find the document from outside the country. That's fine, they can do that. If there is no attorney of record, is it possible for an attorney to sign an file the PEO A? So. That again, that's 217 E 2. E2A2 so yes, if the applicant is unrepresented, then the attorney who signs a peo a esentially is appearing on behalf of signing a document on behalf of an otherwise unrepresented applicant. And yes, that is acceptable. So let me see we have. We have a couple of questions about ownership changes. If a client sells their trademark, can the attorney representing the client submit the assignment agreement and then withdraw representation, or does the new owner need to submit and sign the assignment? Similarly, if during the pendency of the application there's an assignment of the application who may sign the change of power of attorney? But do you wanna take that? You want me to? Couple things that are right. Well, we know that abandonment and ownership changes are triggering events for power of attorney, so those cause power of attorney to end the assignment questions a little bit more complicated and bearing in mind that assignments at the office are sort of a recording process, there's not a lot of substitute examination that goes into them, but typically I think what you want to see assignment is a proper conveyance of the interest to the party, so who's filing it? Whether it's the old attorney, new attorneys, not typically something that we would look into and less, there are some other sort of red flags going on. We also had a question about. As a user, attorneys referred to obedient they delete goods in a statement of use. I understand why they maybe they are deleted post audit, but what about during prosecution? Sometimes clients drop items he truly did intend to use earlier. No? I mean, that's not typically a problem. That's what we want attorneys to do. They want we want them to check with their clients before filing suit. Used to make sure that everything that's listed in the notice of allowance is in use, and if it's not to delete the ones that are not. So now that would not trigger an OBD referral. Alright, let's see. We have, if an attorney left the firm, but the firm is going to continue to represent the client and in the application is the required? Is the applicant signature required so generally, if the if the. Firm is continuing representation. We say normally if the attorney and the leaves, the firm that at that moment we will essentially allow the attorney to update and say that here's my new firm information, or we will presume that somebody signing from the same firm that the attorney was at earlier is just updating to name a new attorney within the same firm so generally. I. Those are sticky, but generally we will presume that if a new attorney at the same firm is signing the , that all they're doing is changing around who's listed on top, and that's acceptable. Will normally take that. Also, I know you can file in the application of power of attorney listing 6 people and that gives me attorney would cause seems to know that. There are authorized. It's it's good practice in general to use that field when you're filing an application or updating correspondence where there are Additionally appointed attorneys. It's helpful to the office because it tells us these people are explicitly permitted to file documents. What can happen in some cases if you get an examining attorney who's just not sure they're going to end up issuing an office action and you know you can head that off by filling in that information so it's a good point, Kathleen. Um? Is it acceptable for someone to sign on behalf of the juristic applicant on the basis that they have power of attorney to sign trademark documents on behalf of the party but are not US attorneys and do not have first hand knowledge of the facts? I think that's just a no. There's not an attorney and doesn't have is not the applicant and does not have first hand knowledge of the facts. No, they cannot sign. Yeah, I think there was a related question about foreign Council. They sometimes are delegated the authority to sort of act on behalf of the foreign juristic entities that would we consider that someone under our rules who has legal authority to bind in. Generally the answer to that is no, we do get asked about that from time to time. What we're typically looking for there is the authority to be set forth in the organizing documents or bylaws or the equivalent. So hopefully that answers that question. We're receiving several questions now about extensions of time to file the statement of use and who can sign those, and generally those are. I believe those are verification because it's a extension of the statement of use. That's anybody with first hand knowledge, the applicant themselves or an officer or the attorney is permitted to sign those. We do have a tricky one here that would like to post everybody. There's a bigger hypothetical maybe. Some corporations grant members of their in-house legal department's power to sign POS and certain documents, such as declarations on behalf of the company. They may not even the in-house legal team may not even be lawyers or if they are made, they may not be corporate officers. Granted power by the company, how can that be effectively communicated to the USPTO? And I think. My take on this and we may have differing minds here, but my take is that I don't think that that matters for our purposes. We we have to be objective about how about these signatures? If a person is signing a PEO, a revocation of another attorney in appointing another, a different person. For it depends on the entity type, what title we're going to accept. So just because in-house somebody has made the determination that this person is authorized, that's not going to cut it for us. Yeah, and we do see in in response to questions from examining attorneys we do see attorneys and napkins admitting you know contracts or agreements that say. Basically that the juristic entity has designated this person to act on their behalf in these circumstances. But again, we're generally looking for there is is the authority to have been granted in the organizing documents or the bylaws of the of the entity. So we typically don't accept those sort of extensions of the 42 to others. Similar question is by somebody else a different situation where all of the in-house counsel are also granted officer titles, and so when they file they don't. They don't actually fill in the attorney information and they don't believe that these are the attorneys of record, but these people are signing the applications and responses. How do they avoid office actions requiring bar information and the like? So I think here it really depends on how the person is identified in the application. If the if the person is signing the application as an officer, then the examining attorney is not necessarily going to include in that. This is an attorney that the person is signing as trademark counsel. Then they're signing with the title. That suggests that this is the attorney in the attorneys representing this applicant, and therefore they're going to require that bar information. Even with mixed titles I. I believe most examining attorneys would require the bar information so to avoid that the turn the in-house counsel should use their corporate corporate title instead. We had a question about the notice of proposed rulemaking and the linked to that. I will say I believe that that proposed rulemaking we had the proposed rule was previously issued. The final rule is forthcoming. I don't believe that it's yet published, so you'll have to keep an eye out for that. Right? It just cleared on the yesterday. OK, yeah, so soon. We can say. Let's see. We have some later questions here. Is it permissible use a care of language for the owner address? So. Generally no. A care of address is not the applicants domicile address as it's defined in the rules. However, there are circumstances where where the. Where that information a post office box or a care of address might need to stay in the record. The forms do have a place to indicate domicile, apart from the applicant, the owner, the owner's correspondence information. So we recommend in most cases that you provide the domicile separate from that character post office dress. In the rare circumstances where placing the address in the record would be harmful to the applicant or registrant for some reason, generally those are handled on petition and we suggest that after you file the petition that you contact the customer service line to let us know so that if something needs to be handled immediately, we can handle that for you. Got another question about the physical location of the person when they sign. Does it matter where the client is physically located when signing? For example, if the client is US domiciled but is traveling through Europe, should the attorney now sign because the client is momentarily based outside of the US when signing? No, we don't, that's not. It's there's no requirement for the person signing to be. In the US when they sign. The only caveat to that to watch out for is that if it's late at night in the United States and the applicant is in Europe and signs or in Asia and signs pay attention to the date, you may draw an office action if it appears that the document was signed the day after the office received it, and you can run into filing date problems or deadline problems if you wait too long. If it's the other direction. So just be aware of that. Generally a statement that's that could be cleared up at the miscellaneous statement. If it's a response to office action or some other form that has that, you can indicate that the signatory was was in a different time zone that caused that issue. Let's see, we have. Question about what to do if the law firm goes out of business and the attorney leaves the practice of law. If the attorney is leaving the practice of law and there are ongoing applications, I would imagine that's a situation where the attorney should be requesting to withdraw. From any active filed an application or registration that the attorney is currently the attorney of record in. Very often that that should require that the attorney is talking to their clients and is passing over the files. If a new attorney is taking over the business generally will we would still need some sort of revocation and appointment of the attorney signed by the applicant for ongoing applications. Sorry there we do have a lot of a lot of questions here we're sorting through, so apologies. Will this web and R be made available for viewing later, yes. We will have a recording posted. We had a question about Canadian attorneys representing Canadian applicants, so the question was why are Canadian attorneys allowed to represent Canadian applicants for US? Trademark registration at the USPTO? This is a complicated question with a complicated answer. The Office of Enrollment in Discipline does have limited recognition of Canadian practitioners representing Canadian applicants. However, the US Council rule. Ascentia Lee changes that dynamic a little bit. A Canadian applicant or registrant is still required to have US Council Canadian recognized Canadian practitioners who are registered with OBD are able to do limited representation. They're able to do some of the things that we as the initial slides indicated we consider practice before the office, which includes advising clients an preparing documents, but the US Attorney is the one who needs to do the actual submission. Of these documents. So a little bit complicated. So I had a question about reporting. specimens. They note that therefore pending application, there's a TM specimen. Protests email pilot program available where third parties can report those. Is there a similar email box for post registration and there is not? But we will look into that. Say we. Is it question about? Post registration and with the use period is what is the time period during which is sales must have been made is the relevant period anytime during the one year period, during which the decoration is do. Yeah, that is generally the answer there. With the statute requires is for you to say that you have been made in that statutory period. So hopefully that generally answers the question. Let's see, can an applicant sign the renewal even when represented? If there is only one declaration signature section as well? Or does the attorney needs assign well? Generally, when we're at the renewal stage? With some exception, generally, representation will have likely ended by as matter of law. So because we're we're usually post post registration or post the filing of some sort of maintenance document before another one is do. But there are circumstances where in attorney may have reappeared in the record. Generally, for a declaration, even if somebody is represented, the person signing and verification of facts may may actually sign. And again with a lot of these signature questions, I do direct everybody to rule 2.193. That's 37 CFR 2.193, which does contain substantive direction over. Which person in which? M stands for which document? Did we answer this one? Is it good practice to have authorized client representatives directly sign applications as so use in Section 8 filings via the email signature? Linkin tease. How do we think about that? I think there's a couple of things to be considered there. Yeah, I think that that raises. That's a good ethics question. No, just because the attorney can sign the document doesn't mean the attorney should sign the document in every case. No the attorney. Again, it's signing under 1118 B there saying that they've made reasonable inquiry that they they believe the statements are true, that the statements are made with knowledge, that understanding that they are subject to penalties of perjury. So if the attorney is not sure that or doesn't have the opportunity to make inquiry, maybe the attorney should sign. And that's the situation where it probably makes more sense to have the client sign. That captain, what do you think is coming from private practice also? Right, I agree. We had just now a question about what happens to documents submitted by non attorney foreigners who may be using attorney information. So information provided to the office is going to be subject to sanction under 1118. See, these are situations that we're we're talking bout attorney information that's egregious conduct. I think in most cases that's going to result in something like a show cause order and the Commissioner potentially ordering termination of the proceedings for anybody who may be involved. That's the type of conduct too that can end up being referred to Ed, or potentially a. Referral to criminal investigator. Let's see, here's an interesting one. Assume I have a suitable specimen showing use on one product for the class, but now I'm conducting due diligence for the remaining items in the class for the Section 8 filing. If I can see the products offered for sale on the client's website, but the website itself would not qualify as an acceptable online point of sale display, I cannot see the market actually fixed the goods in the picture on the website. Must I ask the client to send pictures that show the mark of fixed every single one of those goods? Or their packaging? Kathleen, what do you? What do you think about? What would you have done? In your prior life as the outside practitioner. Wow. I think it would it. Well, obviously, one specimen support, you know, 'cause then in one class is are different so. And less did something very. Sophisticated by computer hardware software, chemicals, I might do that, but if it's like. Something simple like clothing or. Paper product I think I would go with what the clients said David. Yeah, I, I think reasonable inquiry here would be satisfied if you believe that your client is actually selling these things, even if you can't get a good specimen yourself from the website. I think reasonably if you're audited, you'd you'd have a high likelihood of being able to get a specimen from the client, so I think you'd be fine. And I chemical chemical client and we would do declarations from the president attesting to the fact that they are being shipped in containers and the marks not on it. And that usually was sufficient to two. Explain why there's no actual physical specimen. We received a question about. Doing a change of representation after taking over from a different firm who can sign again, these are situations where when you're changing representation. If the representation was on going, then the applicant or registrant must sign. If the. If the representation is ended as a matter of law, than the attorney can sign, but only in those limited circumstances. To the person who thanked us for the funny names. In the hypothetical, we appreciate your compliments on that that fix some thoughtful preparation. All David. He gets the credit and apply. Looks like we have time for maybe a couple more. Yeah, it looks like it. Thanks for everybody. Apologies for the for the delays here between we are reading the questions as they come in. Let's talk about it. In the absence of a reason to think that a client is lying, shouldn't attorney be able to rely on representations from the client to sign, provided the legal standard for submiting SLU decorations, etc. Are provided to the client. What do we think about that? I don't think it's that broad. I think the rule requires reasonable inquiry. No. Unfortunately, clients don't always tell the truth, and they're not always forthcoming with information, I think. If the attorney is signing for, certainly want to make sure if I were signing on behalf of my client, I would want to make sure