The USPTO’s reputation for being focused on signatures is growing almost as fast as pendency. However, with recent court decisions, much is left to the eye of the beholder–leaving practitioners and their clients uncertain regarding the state of the law.
Why Signatures Matter to the USPTO
37 CFR 11.18 mandates a two-part certification process whenever you submit a document to the USPTO. This certification applies to all parties involved, including inventors, applicants, and practitioners. By submitting a document, the signer is confirming they:
- Have the authority to submit the document.
- Have reviewed the information and believe it to be accurate.
But does it matter who actually signs on the dotted line, or enters an electronic signature, if they are authorized by the appropriate party? For example, doesn’t agency law, or the attorney-client relationship permit a lawyer to sign the name of their client? According to the USPTO– NO. See, e.g., 37 CFR 1.4 and 2.193. Specifically, the USPTO’s guidance document states: “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.” See, e.g., TMEP 611.01(c).
Moreover, the USPTO has taken an approach that a signature entered by someone otherwise authorized but not specifically the named signature somehow invalidates the trademark or patent. However, what the USPTO’s non-binding guidance documents suggest this may not be accurate since “The question of validity or invalidity is otherwise exclusively a matter to be determined by a court. Likewise, the question of enforceability or unenforceability is exclusively a matter to be determined by a court.” See MPEP 1701; TMEP 1801 (“The question of the validity of a registered mark is otherwise exclusively a matter to be determined by a court.”).
The Court’s Perspective
As the USPTO has aptly noted, determining validity is solely within the realm of Article III courts. One federal court recently held that a failure to comply with the purported signature requirement on a trademark application is not fatal. In other words, delegation of a signature to a scrivener may not be improper.
In Nallapati v. Justh Holdings, LLC, the parties sought partial summary judgment on an allegation of fraud with respect to certain trademark applications that the Plaintiff had claimed were void ab initio. No. 5:20-CV-47-D, 2023 U.S. Dist. LEXIS 39878 (E.D.N.C. Mar. 9, 2023). The Plaintiffs alleged that the marks were procured by fraud, and that such acts were with an intent to defraud the USPTO, in part because the wife of one of the Defendants typed a Defendant’s name into the trademark application (i.e., signed his name). Id. at 11-16. The Court rejected the argument and further rejected the standard of reckless disregard claimed by the USPTO in Chutter v. Great Mgmt. Group, 2021 TTAB LEXIS 365 (T.T.A.B. Sept. 30, 2021), stating that a knowing standard was applicable. Id. at 11-12. In granting the Defendants’ motion, the court stated: “[a]lthough Prasad’s wife did type Prasad’s name into the online trademark applications, no evidence suggests that she did so with a subjective intent to deceive the USPTO. Rather, the record demonstrates that Prasad directly authorized his wife to type his name and that he personally reviewed and approved the information in the trademark applications.” Id. at 16-17.
In separately evaluating the Plaintiffs’ motion regarding the defect in the applications, the court examined 37 C.F.R. § 2.193, the TMEP, and In re Yusha Zhang, 2021 TTAB LEXIS 465 (T.T.A.B. Dec. 10, 2021), the court rejected the argument that an issue with respect to the signature invalidated the mark. Id. at 18. The court stated that: “[a]lthough such documents clarify the process the USPTO uses in evaluating and adjudicating trademark applications, they do not control what a federal court should do after the USPTO issues a trademark.” Id. at 19. The court noted that the Federal Circuit had not taken up the issue with respect to trademarks, but had done so with respect to patent matters and found the case of Ajinomoto Co. v. Archer-Daniels-Midland Co., 228 F.3d 1338, 1343 (Fed. Cir. 2000) to be persuasive. Id. at 20.
The court found Ajinomoto (and common sense) was applicable as to the correction of defects and noted that: “Prasad failed to personally type his name into the electronic form for the trademark applications. Instead, he expressly directed his wife to type his name into the forms and sign on his behalf. Moreover, Prasad has affirmed the information in the applications in sworn filings in this court. On this record, the court declines Vamsi’s invitation to cancel Prasad’s trademarks based on the signatures in the applications. Therefore, the court denies Vamsi’s motion for summary judgment based on the signatures in the applications.” Id. at 20-21 (internal citations omitted).
While some recent USPTO settlements fly in the face of published guidance documents and Article III courts who have consistently and clearly articulated that who signed a document is not determinative, practitioners should be mindful that the USPTO takes signature violations seriously and continues to crack down on practitioners who sign on behalf of their clients, or allow paralegals and others to sign their names.
Avoiding Problems
Here’s how to avoid signature-related issues with the USPTO:
- Always sign your own documents: Do not delegate signature practices, or take on delegation from others.
- Review everything thoroughly: Before signing, double-check all information for accuracy.
- Understand who can sign what: Only authorized individuals can sign specific documents based on their qualifications. If unsure, consult ethics counsel.
