Who can sign trademark applications?
- a person with legal authority to bind the owner (e.g., corporate officer or general partner of a partnership);
- a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; or
- an attorney licensed to practice in the U.S. as defined in Section 11.1 (“individual who is an active member in good standing of the bar of the highest court of any State”) who has an actual written or verbal power of attorney or an implied power of attorney from the owner.
Who can sign a Statement of Use?
A statement of use can be signed by the same persons above. The reason for imposing such strict requirements for signature is because a Statement of Use requires a verified statement under 37 CFR 2.2(n) which states:
The term verified statement, and the terms verify, verified, or verification as used in this part refers to a statement that is sworn to, made under oath or in an affidavit, or supported by a declaration under § 2.20 or 28 U.S.C. 1746, and signed in accordance with the requirements of § 2.193.
Instead of an oath, the language of 28 USC 1746 or the following language may be used:
The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.37 CFR 2.20
Who can sign trademark Office Action responses?
A response to a trademark Office Action may not always require a verified statement. It depends on what the response requires. Where a verified statement is not required, it is simply more expedient to have the US attorney sign and file the response.
If a verified statement is required, it would be best practice to have the client sign since they would have either legal authority to bind the trademark owner or firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner.
The problem with having a US attorney sign a verified statement is that the US lawyer might not have firsthand knowledge of the facts, which could raise issues later on if and when the mark is litigated.
What can go wrong when US lawyers sign trademark applications and statements?
A lot can go wrong when US attorneys sign trademark filings. The USPTO has published disciplinary decisions and orders against US practitioners here.
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