The Ethics of Signing Trademark Documents for the USPTO
Ellen Lockwood, ACP, RP
Ellen Lockwood, ACP, RP
Clients and attorneys want everything done even more quickly these days. Many of us also telecommute rather than gathering in an office each day. While electronic filing and email may be more convenient, it also provides more opportunities for shortcuts and may make it more difficult for attorneys to properly supervise their staff.
The United States Patent and Trademark Office (USPTO) regulations require the person named as the signatory on an electronic trademark document to be filed with the USPTO to personally enter his or her electronic signature on the documents (either the attorney or the party) (17 C.F.R. § 2.193(a)(2), (c) and (e)). The signatory must manually enter the elements of the electronic signature, another person may not sign for the signer, and non-attorneys may not sign the attorney’s name (TMEP 611.01(b)). Further, many of these filings include important warning language such as the following:
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.
Recently, the USPTO issued a public reprimand and citation against an attorney. The attorney worked for a worldwide law firm that specializes in handling intellectual property matters, offering these services at a drastically reduced cost. In the USPTO’s order, the attorney admitted she had learned that paralegals were signing clients’ names to USPTO trademark filings. She stated the practice began before she joined the firm and she asserted that at that time she did not understand the USPTO regulations that prohibited this practice. The attorney testified she notified her superiors of the practice when she became aware of it but was told corrective action was not needed at that time.
In another recent order, the USPTO issued a public reprimand of an attorney who was the CEO and president of a virtual paralegal service. The order states that there were 35 applications where paralegals typed the electronic signatures of the named signatories. As in the matter mentioned above, the attorney stated he did not adequately understand the rules and relied on a consent from each signatory. He also agreed the paralegals were not adequately supervised.
The USPTO also issued an order this year regarding a Texas attorney and acknowledged his resignation. The attorney was the general counsel, one of the owners, and the only licensed attorney involved with an online firm that handles U.S. trademark applications and related matters. The attorney stated that without his knowledge, paralegals began cutting and pasting electronic client signatures onto trademark documents instead of having the clients electronically sign the documents. In one instance, paralegals submitted an Express Abandonment on behalf of a client without the client’s knowledge or consent, cutting and pasting the client’s electronic signature. Paralegals were also giving legal advice to customers regarding their trademark applications.
The ease with which these paralegals violated these rules is, unfortunately, a byproduct of electronic filings, but it also a result of the lack of or ineffective supervision. These situations are another example of the need for strict policies and procedures for electronic filings to ensure the rules are always followed. If your firm does not have such policies and procedures in place, please discuss the need for them with your supervising attorney, paralegal manager, or office managing shareholder.
Ellen Lockwood, ACP, RP, is the Chair of the Professional Ethics Committee of the Paralegal Division and a past president of the Division. She is a frequent speaker on paralegal ethics and intellectual property and the lead author of the Division’s Paralegal Ethics Handbook published by Thomson Reuters.
If you have any questions regarding any ethical issue, please contact the Professional Ethics Committee.
Originally published in the Texas Paralegal Journal © Copyright 2019 by the Paralegal Division, State Bar of Texas.