Sign Your Own Electronic Trademark Documents

By: DEAN R. KARAU

March 2009

Isn’t the Trademark Electronic Application System (TEAS) from the United States Patent and Trademark Office (USPTO) a vast improvement over the old paper filings? Instead of your trademark attorney mailing a hard copy of a document to you for your signature, your attorney can use TEAS to electronically prepare the application. The USPTO emails it to you, it’s signed and sent back, after which your attorney gets one last chance to review the application before electronically filing it with the USPTO. What could be better?

Maybe having your assistant sign it for you? After all, your assistant receives all of your emails, you’re electronically challenged and, besides, you’re too busy.

Actually, not only would it be better that you electronically sign the document yourself, you are required to do so under USPTO rule and regulations.

The Trademark Manual of Examining Procedure (TMEP) sets out rules and regulations for filing trademark applications, prosecuting them, and maintaining trademark registrations. The TMEP is based on the provisions relating to trademarks found in the Code of Federal Regulations, which is based on federal trademark law. The TMEP unequivocally states that

“[a]n authorized signatory must personally sign his/her name. Another person (e.g., paralegal, legal assistant, secretary) may not sign the name of an attorney or other authorized signatory. In cases of submissions through TEAS, all required electronic signatures must be entered manually by the person(s) identified as the signer(s). Just as signing the name of another person on paper does not serve as the signature of the person whose name is written, typing the electronic signature of another person is not a valid signature by that person.”

That means that only you, not your assistant or anyone else in your office, must type in your own name in the signature box:

The rule does not apply only to trademark applications, but to any electronic paper at the USPTO requiring your signature, including, statements of use, requests for the extension of time to file a statement of use, or any of the electronic papers you need to sign in order to maintain your registration once it is registered.

There is a dearth of case law on the consequences of someone other than the authorized person signing on behalf of the authorized person. We do know that the Trademark Trial and Appeal Board, the USPTO’s judicial tribunal, has taken a strong stance against fraud.

So why take the chance of having someone else e-sign an official trademark document on your behalf? Take a minute, e-sign the document yourself, and avoid creating a problem.