[E-trademarks] Renewal Rejected Because of...Huh?

[Gordon, Michael]

Are they objecting because you signed the 8 & 15 declaration without a valid PoA on file, or because John Q. Client signed the 8 & 15 declaration without stating their title or position?

37 C.F.R. § 2.193(e)(1) requires that a section 8 & 15 declaration “be signed by . . . a person properly authorized to sign on behalf of the owner,” and subsection (d) requires that “[t]he first and last name, and the title or position, of the person who signs a document” (emphasis added) has to be placed on it. TMEP § 804.04 states that “[i]f a signatory’s name and/or title or position is not set forth in a document, the USPTO may require that it be stated for the record.” “On behalf of” is not a “title or position,” and without stating that, technically the PoA is non-compliant with Rule 2.193(d).

You should be able file a response to the OA with a replacement 8 & 15 declaration signed by “John Q. Client, Manager of Client Company, LLC” by marking the appropriate boxes in the TEAS Post-Reg Office Action Response form.
[cid:image007.png at 01DBAFC5.1D65A3A0]
That’s probably the simplest resolution.


[A picture containing person, person, wall, indoor  Description automatically generated][A picture containing text, screen  Description automatically generated]<https://www.cfraresearch.com/>
Michael R. Gordon
Assistant General Counsel
Licensed to practice only in Maryland, North Carolina, and the District of Columbia
michael.gordon at cfraresearch.com<mailto:michael.gordon at cfraresearch.com>
o: +1.646.517.2461<tel:+1.646.517.2461>
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Sam Castree via E-trademarks
Sent: Thursday, April 17, 2025 4:55 PM
To: for trademark practitioners <e-trademarks at oppedahl-lists.com>
Cc: Sam Castree <sam at castreelaw.com>
Subject: [E-trademarks] Renewal Rejected Because of...Huh?

CAUTION: EXTERNAL MESSAGE
Dear Listmates,

You'll never guess why my §§ 8&15 filings drew an office action today.  So, back in December of 2022, the principal of the client company signed off on a change of representation, naming me as the attorney of record on a couple of registrations.  He signed the power-of-attorney as "John Q. Client, on behalf of Client Company, LLC."  I assumed that this filing was accepted because I have indeed been the attorney of record for the past couple years and all of my information shows up on the "Attorney of Record" area in the PTO system for the marks in question.  We filed the renewals a few months ago.

I just got an office action today, which reads as follows:  "The Sections 8 & 15 Combined Affidavit submitted on January 6, 2025, cannot be accepted or acknowledged for the reasons set forth below.  The owner must specify the title of the person who signed the verification.  See 37 C.F.R. §2.193(d).  In this case the owner filed (December 28, 2022, [John Q. Client], on behalf of [Client Company, LLC]) a verification that did not identify the signer’s title.  Documents filed with the USPTO must identify the title or position of the individual who signed the document. See 37 C.F.R. §2.193(d)."

So...my 2025 renewals are being rejected because the change of representation form from 2022 didn't say "John Q. Client, as Manager of Client Company, LLC."  Am...am I reading this right?  Does this make sense to anyone?  If anyone has ever heard of something like this, then please let me know.  I don't understand how the one has any bearing on the other.  I don't even exactly know what the examiner wants me to do about this.  I'm definitely going to call her and ask, but more than anything, I'm just confused beyond confusion.  Your wisdom and insights are ever welcome.

Cheers,

Sam Castree, III

Sam Castree Law, LLC
3421 W. Elm St.
McHenry, IL 60050
(815) 344-6300

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