OED Disciplines Lawyer for not Personally Signing TM Documents

By David Hricik

Trademark regulations require that the lawyer sign — even type in the electronic signature — all documents. A lawyer had been letting non-practitioner legal assistants sign various documents.  She realized that this was improper, but waited several months before doing anything. As a result, she was publicly reprimanded and placed on a year’s probation. The decision in In re Sapp is here.

In addition to being a reminder about signature requirements, I wonder if this is the way the Office will get at the various TM filings that have made the news lately…

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

5 thoughts on “OED Disciplines Lawyer for not Personally Signing TM Documents

  1. 3

    Trademark regulations require that the lawyer sign — even type in the electronic signature — all documents. A lawyer had been letting non-practitioner legal assistants sign various documents.

    I think the bigger issue is that the legal assistants were signing *client* names (Numerals 9, 11)

    Also it’s not a suspension as Kasbah says (Numeral 18c), and she can still practice.

    Seems pretty unsurprising…

  2. 2

    So patent practitioner requirements are looser?

  3. 1

    It’s not entirely clear how this violation came to OED’s attention, but the opinion does suggest that the disciplined attorney herself may have come forward to OED as a whistleblower after she was terminated from the firm that was involved in this misbehavior. If so, it seems profoundly unfair for the USPTO to apply such severe discipline (1 year probation/suspension) to the attorney who was taking steps to rectify the problem, even before she was terminated. And what steps have they taken to investigate and discipline other attorneys at her former firm?

    1. 1.1

      I think a clarification may need to be made here. It kind of reads like you’re saying only lawyers can sign all filings in regards to trademarks. That isn’t true. The issue here is that the person signing the document must sign their own name (you cannot endorse for another person). Non-attorneys are permitted to sign certain trademark filings with the USPTO. See 37 C.F.R 2.193(e). Many filings simply must be “a person properly authorized to sign on behalf of the owner” further . . “a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner.” Certain types of files must be filed by a lawyer (e.g. Responses to Office Actions, amendments, etc.)

      1. 1.1.1

        Good point of clarification, although I assume you meant to reply to RandomGuy’s email, not mine.

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