Exam Guide 2-23

Examination Guide 2-23

Electronic Trademark Submissions Signed Using Document-signing Software

and Compliance with 37 C.F.R. §2.193

July 2023

I. Purpose .............................................................................................................................................. 1

II. Background ....................................................................................................................................... 1

III. Requirements for Third-party Document-signing Software ................................................ 2

IV. Examination Procedures ............................................................................................................... 2

V. Appendix ............................................................................................................................................ 5

I. Purpose

This examination guide addresses the procedures for determining whether an

electronically signed document complies with the requirements stated in Trademark Rule

2.193(c). 37 C.F.R. §2.193(c). Specifically, it sets out when submissions signed using

third-party document-signing software may be accepted under Rule 2.193(c)(2). This

guidance does not change any other requirements for signatures on trademark

documents, including that a signature must be personally entered by the named

signatory. Another person may not use document-signing software to create or generate

the electronic signature of the named signatory. This guidance is effective on July 22,

2023 and supersedes any previous United States Patent and Trademark Office (USPTO)

guidance on this topic to the extent there are any conflicts.

II. Background

Rule 2.193(c) sets forth the requirements for electronic signatures for trademark

correspondence. This rule specifically states that a person signing a submission

electronically must either:

(1) Personally enter any combination of letters, numbers, spaces, and/or

punctuation marks that he or she has adopted as a signature, placed

between two forward slash ("/") symbols in the signature block on the

electronic submission; or

(2) Sign the document using some other form of electronic signature specified

by the Director.

Prior to the issuance of this examination guide, the Director had not specified other forms

of acceptable electronic signatures.

In recent years, other methods of electronic signature, such as those created through

third-party software, have become more prevalent. Some software platforms include

document-signing features with digital certificates or authenticity trails for the electronic

signature, resulting in the increased reliability and security of electronically generated

signatures. Accordingly, the USPTO will now accept trademark documents with electronic

signatures generated via third-party document-signing software that meets the

requirements set forth in this examination guide, in accordance with the Director’s

discretion under Rule 2.193(c)(2). 37 C.F.R. §2.193(c)(2).

III. Requirements for Third-party Document-signing Software

Parties using third-party document-signing software must ensure that the underlying

software:

(1) Preserves signature data for later inspection in the form of a digital

certificate, token, or audit trail. Examining attorneys and post-registration

examiners may presume that the document-signing software retains and

integrates signature data in the final pdf that is uploaded unless the Office

of the Deputy Commissioner for Trademark Examination Policy notifies the

examining attorney otherwise.

(2) Generates or otherwise provides the date on which the signature was

applied. If the software does not include the date of signature, the signatory

must enter it on the electronic form. If the software generates a date and a

different date is separately entered on the electronic form, the date

generated by the software controls.

(3) Indicates that the signature page or electronic submission form was

generated or electronically signed using document-signing software.

(4) Is specifically designed to generate an electronic signature. Signatures

created using other types of software, such as graphic editing software, are

not acceptable.

See attached appendix for examples of acceptable and unacceptable electronic

signatures generated using document-signing software.

IV. Examination Procedures

When reviewing a signature on a document that was generated using document-signing

software, examining attorneys and post-registration examiners must first determine

compliance with other signature requirements, such as whether it was signed by a proper

person under Rule 2.193(e). See TMEP §611.02 for more information on signatures by

proper parties. Submissions also must be personally signed by the individual identified in

the signatory name field. See 37 C.F.R. §2.193(a)(2), (d); TMEP §611.01(b). Another

person may not use document-signing software to enter or electronically generate

someone else's signature. See 37 C.F.R. §2.193(a)(2); In re Dermahose Inc., 82 USPQ2d

1793 (TTAB 2007); In re Cowan, 18 USPQ2d 1407, 1409 (Comm’r Pats. 1990); TMEP

§611.01(b).

Examining attorneys and post-registration examiners must ensure that the signature

block comports with the requirements listed below:

(1) Name and title. The first and last name, and the title or position, of each

person who signed the document must be set forth immediately below or

adjacent to the signatory’s adopted signature. If the signatory’s full name is

not provided, the signatory’s first and last name must be stated for the

record. This information can be entered through a Public Note.

(2) Date signed. The date that the document was signed must appear with the

signature. As noted in the instructions within the electronic form and

appearing on the generated pdf signature page, if the document-signing

software provides a date and timestamp, separate manual entry of the

signature date is not required. If the signature date is manually entered and

disagrees with the software-generated timestamp date, the date generated

by the software controls for purposes of determining the date of signature.

Regardless of the date the form was signed, the filing date for the electronic

submission remains the date and time the USPTO receives the submission,

in Eastern Time.

(3) USPTO timestamp. The pdf signature page generated within the USPTO’s

form must display the timestamp applied by the USPTO’s electronic filing

system that indicates when the signature page was created within the

electronic form (i.e., prior to signature).

(4) Acceptable software type. The software used by the signer must meet the

requirements for third-party document-signing software listed in Section III.

See 37 C.F.R. §2.193(a), (c), (d); TMEP §§303.01, 611.01(b), 804.03.

If the submission is signed by a proper party and all the elements listed above are

satisfied, the examining attorney may presume the signature meets the requirements for

an acceptable electronic signature, unless directed otherwise by the Office of the Deputy

Commissioner for Trademark Examination Policy. If one or more of these requirements

are not met, the signature will be treated as an unacceptable electronic signature. 37

C.F.R. §2.193(c).

Notwithstanding the provisions above, examining attorneys and post-registration

examiners retain the discretion to inquire regarding the acceptability of a signature on an

electronic trademark submission or to require evidence of authenticity of such signature.

The requirements regarding submissions signed using document-signing software apply

only to documents that must be signed in accordance with Rule 2.193(e). 37 C.F.R.

§2.193(e). These requirements do not apply to an agreement between the applicant and

the owner of a cited mark consenting to registration of the applicant’s mark or a consent

to register the name of an individual under Section 2(c). 15 U.S.C. §1052(c)-(d).

V. Appendix

Below is a non-exhaustive collection of examples of acceptable and unacceptable

signatures generated by document-signing software. Other providers of document-

signing software may be accepted if they satisfy the criteria described in this Examination

Guide. Although the examples include a “phone number,” Rule 2.193(d) requires only the

first and last name, and the title or position of the person who signs a document, in

addition to the signature.

Acceptable Example 1

This example is acceptable because it includes the timestamp generated by the USPTO’s

electronic filing system; it indicates that the document was electronically signed using

document-signing software; and it shows the date and time the document was signed,

the signature and the signatory’s name as generated by document-signing software and

also as separately entered, and the signatory’s position.

Acceptable Example 2

This example is acceptable because it includes the timestamp generated by the USPTO’s

electronic filing system; it indicates that the document was electronically signed using

document-signing software; and it shows the date and time the document was signed,

the signature and the signatory’s name as generated by document-signing software, and

the separately entered signatory’s position. Although the signatory did not separately

indicate the signatory’s name or the date this document was signed, those required

elements are included in the digitally generated signature itself.

Acceptable Example 3

This example is acceptable because it includes the timestamp generated by the USPTO’s

electronic filing system; indicates that the document was electronically signed using

document-signing software; and shows the signatory’s name, the date the document was

signed, the signature as generated by document-signing software, and the signatory’s

position. Although the document-signing software did not apply the signatory’s name,

position, or the date this document was signed, the signatory manually entered this

required information in the signature block on the form.

Acceptable Example 4

This example is acceptable because it includes the timestamp generated by the USPTO’s

electronic filing system; it indicates that the document was electronically signed using

document-signing software with identifying information that could be used to ascertain

authenticity; and it shows the signatory’s name, the date the document was signed, the

signature as generated by document-signing software in the form of a digital hand-drawn

signature, and the signatory’s position. Although the document-signing software did not

provide the signatory’s name, position, or the date this document was signed, the

signatory manually entered this required information in the signature block on the form.

Unacceptable Example 1

This example is unacceptable because, although it includes the signature and date

signed, the signatory’s name as entered by the document-signing software, and the

timestamp generated by the USPTO’s electronic filing system, it does not include the

signatory’s position.

Unacceptable Example 2

This example is unacceptable because, although it includes the signature as entered by

the document-signing software and the timestamp generated by the USPTO’s electronic

filing system, it does not include the signatory’s first and last name, the signatory’s

position, or the date the document was signed.

Unacceptable Example 3

This example is unacceptable because, although it includes the signature as entered by

the document-signing software in the form of a digital copy of a hand-drawn signature,

and the timestamp generated by the USPTO’s electronic filing system, it does not

include the signatory’s first and last name, the signatory’s position, or the date the

document was signed.

Unacceptable Example 4

This example is unacceptable because it does not indicate that the signature was created

using document-signing software, but instead appears to have been created by software

that allows users to manually draw elements on a digital document. These types of

signatures are unacceptable because the signature data is not preserved by the software

for later inspection in the form of a digital certificate, token, or audit trail. Therefore, the

document is treated as unsigned. Also, the signature block does not indicate the date of

signature.