Alt Legal Connect Session Summary: A Trademark Attorney’s Guide to the OED – and How to Avoid Inadvertent Ethical Violations
Alt Legal Team | October 29, 2020
Thank you to Bryttni Yi for participating as a Law Student Reporter at Alt Legal Connect! Bryttni is a 3L at Brooklyn Law School. Law Student Reporters had the opportunity to attend Alt Legal Connect in exchange for contributing to the social media presence of the conference. Reporters assisted by preparing blog posts and live-posting about sessions and in turn were permitted to attend all Connect sessions including valuable networking and social events to make meaningful connections with trademark professionals.
On Tuesday, October 27, Partner at McCabe & Ali LLP, Emil J. Ali presented the session, “A Trademark Attorney’s Guide to the OED – and How to Avoid Inadvertent Ethical Violations.” He provided a brief introduction to the USPTO’s Office of Enrollment and Discipline (OED) and explained how to ensure compliance with the USPTO Rules of Professional Conduct.
Practicing Before the USPTO
Ali noted that trademark attorneys should act with the most vigilance when practicing because they are not only subject to their state bar but also the USPTO. OED may not be familiar to some trademark attorneys but it is the body within the USPTO that investigates allegations of misconduct. The Administrative Procedure Act governs the basis for practice before the USPTO in non-patent matters. Any licensed attorney in good standing with their state bar and not suspended by the USPTO may file trademarks or otherwise appear on behalf of clients. Under 35 U.S.C. § 2(b)(2)(D), the USPTO may establish regulations governing the conduct of agents and attorneys.
According to 37 CFR § 11.22(a), an investigation may be initiated through information or evidence suggesting grounds for discipline, or through a grievance filed with the office. OED investigations have a clear and convincing evidentiary standard with the Committee on Discipline serving as the “grand jury” on a needed basis. Some investigations may close without action, warning, diversion, public or private discipline, or formal charges.
Common Issues in Trademark Representation
Have you engaged in unethical behavior according to the USPTO? Chances are you very well may have. Some of the most common pitfalls in trademark representation involve: (1) fraudulent specimens or false statements of use; (2) signature discrepancies; (3) foreign filings; (4) unauthorized practice of law. Now you may be thinking, “I would never!” but there have been an increasing number of OED investigations to date for these reasons.
OED is proactive in investigating practitioners who receive multiple specimen rejections. Ali cautions to never submit a specimen that includes a mock-up of product or packaging that has been digitally created or altered to include the mark. OED expects all practitioners to counsel their clients about the requirements for a valid specimen and its use in commerce. If you ever feel unsure, ask for a better specimen.
Foreign application filings have increased dramatically over the last few years. As a result, OED has placed a large focus on trademarks and the results of post-registration audits. Though the USPTO can capture data such as the “Client” country, IP address of filing, and the application status, OED cannot do much with the filers so they go after the practitioners that have helped them. The Office recognized the nature of bad actors and implemented the U.S. Counsel Rule, which requires all foreign filings to be accompanied by the name and information of a U.S. attorney.
Ali emphasized the importance of electronic signatures and how signatures are not delegable. 37 CFR § 2.193(c)(1) states that a person signing an electronic document must personally enter any combination of letters. Some practitioners have been disciplined for conduct allowing someone else to sign the trademark submission. Say you are really busy and you have your paralegal electronically sign your name on the submission for you, under USPTO guidelines, you have just engaged in unethical behavior. This particular situation goes hand-in-hand with unauthorized practice of law.
Unauthorized practice of law typically occurs when attorneys who are not in “good standing” with their state bar continue to practice. If you forgot to pay your bar dues on time, or meet proper CLE requirements, you may not be in “good standing.” Check your local state bar if you are unsure. Another common example would be paralegals or other non-practitioners providing advice to clients without adequate supervision from an attorney.
Best Practices for Trademark Attorneys
Know your client (this is especially prevalent if you’re referred matters for trademark prosecution from third-party companies)
Always use an engagement agreement and keep everything in writing
Counsel clients and and keep in contact
Don’t forget the conflict of interest check
Make sure you are completing your post-registration duties
Conduct a self-assessment or a professional assessment to ensure compliance
Access the Recording and Materials: Click here
Signature examples: https://www.uspto.gov/sites/default/files/documents/sigexamples_alt_text.pdf (Thanks, Leah Halpert!)