Monday, January 17, 2011

Recommended Reading: "Ethical Issues in U.S. Trademark Prosecution and TTAB Practice"

Linda K. McLeod (former TTAB judge) and Stephanie H. Bald discuss "Ethical Issues in U.S. Trademark Prosecution and TTAB Practice" in the latest issue of the John Marshall Review of Intellectual Property (10 J.MARSHALL REV. INTELL. PROP. L. 365 (2011)). [pdf here].

ABSTRACT: The conduct of practitioners and agents before the U.S. Patent and Trademark Office (“USPTO” or “Office”) is subject to regulation by the Office under 35 U.S.C. § 2(b)(2)(D). This provision grants the Under Secretary of Commerce for Intellectual Property and the Director of the USPTO the authority to establish regulations to govern the conduct of agents, attorneys, or other representatives before the Office, including establishing disciplinary measures for non-compliance with those regulations. The USPTO regulations governing conduct include the Patent and Trademark Office Code of Professional Responsibility. This article summarizes the key canons and disciplinary rules applicable to trademark practitioners and authorized representatives; outlines common ethical issues for practitioners and other authorized representatives that arise in ex parte and inter partes trademark proceedings before the USPTO. This article also discusses the case law that has developed relating to these issues. Although the practice of law is generally regulated by State ethics rules and regulations, trademark practitioners and authorized representatives should be equally familiar with the separate set of USPTO regulations governing their conduct before the Office. Additionally, although the USPTO canons and disciplinary rules are based on the Model Code of Professional Responsibility of the American Bar Association (like some State ethics codes), there are a number of ethical issues unique to the conduct of trademark practitioners and agents before the Office. Failure to adhere to these unique rules and regulations can result in disciplinary action by the USPTO that compounds or even exceeds any disciplinary action by the State.

In the realm of fraud on the USPTO, the authors note that "the USPTO’s regulations governing conduct before the Office require an 'inquiry reasonable under the circumstances' to confirm that 'allegations and other factual contentions have evidentiary support.' Thus a duty to investigate the accuracy of statements made to the USPTO is set forth in the rules." However, there have been "no reported cases of disciplinary action by the Office of Enrollment and Discipline on grounds of misconduct and/or neglect under 37 C.F.R. §§ 10.23 and 10.77 or other violations."


At 1:39 PM, Anonymous Anonymous said...

Ms. McLeod, Judge Bergman, and several others recent gave a presentation on this topic internally to examining attorneys and other interested personnel. It was well received.


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