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Archived updates for Friday, October 12, 2007

A Lesson on the Impropriety of Signing Another Person's Declaration

Thanks to John Welch at the TTABlog for noting In re Dermahose Inc., Serial No. 76585901 (February 13, 2007) where the U.S. Trademark Trial and Appeal Board affirmed a refusal to register where the Statement of Use included the Declaration of the applicant's President that was signed by applicant's attorney, rather than the declarant.

According to the decision by Administrative Trademark Judge Drost,

It is clear that a statement of use must include a “statement that is signed and verified (sworn to) or supported by a declaration under §2.20 by a person properly
authorized to sign on behalf of the applicant.” The rules, however, do not provide authority for attorneys to sign another person’s declaration. It is also clear that persons who may sign the statement of use include, inter alia, a person with legal authority to bind the applicant and an attorney “who has an actual or implied written or verbal power of attorney from the applicant.” 37 CFR § 2.33(a)(1) and (3).

Therefore, both Mr. Zaidman and Mr. Amer had the authority to sign the statement of use. The question then becomes whether Mr. Amer may sign Mr. Zaidman’s declaration. We hold that he cannot.

[FOOTNOTE 3. “Generally, the Office does not question the authority of the person who signs a verification, unless there is an inconsistency in the record as to the signatory's authority to sign.” TMEP § 804.04 (4th ed. rev. April 2005). “President” is considered a title that would indicate that the person has authority to sign on behalf of the corporation. See, e.g., TMEP § 712.01(a)(iv) (4th ed. rev. April 2005) (“A response to an Office action by a corporation that is not represented by an attorney must be signed by a corporate officer. An officer is a person who holds an office established in the articles of incorporation or corporate bylaws. The usual titles for officers are President…”).]

[FOOTNOTE 4. “If an attorney signs a verification on behalf of an applicant, the Office will not require a power of attorney or other documentation stating that the attorney is authorized to sign.” TMEP § 804.04.]

[FOOTNOTE 5. We are aware that this case could also have been subject to a petition to the Commissioner for Trademarks. In re Du Pont Merck Pharmaceutical Co., 34 USPQ2d 1778, 1781 (Comm’r Pat. 1995) (“In the present case, the issue regarding the proper signatory for an application and Statement of Use filed by a partnership Applicant is clearly one of procedure and practice under the rules, and is properly reviewable on petition"). However, there are matters that may be reviewable “by either appeal or petition.” TBMP § 1201.05 (2d ed. rev. 2004). Specifically, an “appeal to the Board may be taken from any final action … issued by the trademark examining attorney … whether the matter involved in the examining attorney’s action is substantive or procedural in nature”).]

. . . Applicant has [also] modified the Rule 2.20 statement to indicate that the undersigned is not declaring or subjecting himself to anything. Therefore, it does not
meet the requirement for a Rule 2.20 declaration or any other form of oath or declaration and applicant has not complied with the requirements for submitting a statement of use under Rule 2.88 and as a result there is material inconsistency in the declaration. TMEP § 804.04. Inasmuch as applicant’s declaration is deficient, we affirm the examining attorney’s refusal to register.

Decision: The examining attorney’s refusal to register the mark is affirmed.

As with John and the TTAB, you too may be wondering "why applicant did not provide a
substitute declaration to satisfy the examining attorney’s requirement and, thereby, avoid this appeal."
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