Friday, April 10, 2015

TTAB Denies Petition to Disqualify Opposer's Attorney for Signing Applications

The TTAB, under authority delegated by the USPTO Director, decides petitions for disqualification of counsel. Here, the Board denied a petition to disqualify counsel for Opposer INTS, ruling that, although the attorney had signed and verified certain documents pursuant to a power of attorney from opposer, he was not the sole source for information regarding those documents and therefore was not a "necessary witness." INTS It Is Not The Same, GmbH v. Disidual Clothing, LLC, Opposition No. 91212768 (March 28, 2015) [not precedential].

Oppposer's counsel signed and filed applications, statements of use, renewals, and/or declarations of use and incontestability, in connection with opposer's pleaded registrations, pursuant to a Power of Attorney from opposer. He was identified in opposer's initial disclosures as a person likely to have discoverable information about "Opposer's knowledge of Opposer's registrations; matters related to the filing of Opposer's Notice of Opposition against Applicant's application; information related to the current opposition proceeding."

Section 11.307(a) of the USPTO Rules of Professional Conduct indicates when a "practitioner for a party" who may become a witness in a USPTO proceeding should be disqualified:

(a) A practitioner shall not act as advocate at a proceeding before a tribunal in which the practitioner is likely to be a necessary witness unless:
(1) The testimony relates to an uncontested issue;
(2) The testimony relates to the nature and value of legal services rendered in the case; or
(3) Disqualification of the practitioner would work substantial hardship on the client.

Thus the first question was whether opposer's attorney was a "necessary witness," i.e., whether "no other person is available to testify in his place." In other words, "[a] necessary witness is one who offers evidence that is not available from another source."

The Trademark Rules specifically state that an attorney may sign verifications on behalf of an applicant or registrant. "Indeed, it is common for attorneys to do so." The mere signing of a document on behalf of an applicant does not make an attorney a "necessary witness."

Here, there was no showing that opposer's counsel alone would need to testify to the contents of the documents he signed. "Evidence and information as to the contents of those submissions can be found elsewhere." Thus opposer's attorney was not a necessary witness. The Board observed:

In passing, a policy of disqualifying an attorney for signing a declaration on behalf of his client, especially where it is permitted by the Trademark Rules of Practice, without anything more, would have an undesired consequence of rendering many attorneys practicing before the Board eligible for disqualification.

With regard to the identification of the attorney in Opposer's initial disclosures, the stated topics were merely ministerial aspects associated with the filing of the application and subsequent submissions. That information is available from USPTO databases and from opposer. The identification of the attorney in the initial disclosures, although unusual, did not make him a "necessary witness" in light of the nature of the topics listed.

And so the petition for disqualification was denied.

Read comments and post your comment here

TTABlog note: Many practitioners are reluctant to verify documents on behalf of a client for fear of possible disqualification in subsequent proceedings. Maybe that fear is unwarranted. Hat tip to FOBs John Egbert and Kevin Wilson for tipping me off to this ruling.

Text Copyright John L. Welch 2015.


At 7:31 AM, Anonymous Mike Zall said...

Much needed decision.

At 1:14 PM, Blogger TMBaron said...

It is nice that this issue has finally been clarified. Maybe now there will be less time and clients' money spent on obtaining signatures from the client, when the issues are perfectly clear and obvious to counsel.

At 1:35 PM, Anonymous Anonymous said...

Why is this decision non-precedential? I've seen the petition to disqualify threat brought up many times during the discovery phase of TTAB proceedings. Maybe because the TTAB wasn't unaware of these threats, since no one has actually followed through until now?

At 2:51 PM, Anonymous Anonymous said...

I always wonder why any attorney would take a chance on this issue when USPTO has made it soooo easy to forward the email for signature by some other authorized representative of a client or attach a jpg signature.

A slight hassle but not that hard and it keeps the client in the loop too.

I understand harder to prove fraud perhaps when an attorney signs it, but if there is even a chance of that I would not want to sign it anyway!

I think the time has come to not allow attorneys to sign on behalf of their clients.

I have not asked, but I would venture a guess my insurance carrier would recommend I not to do it either. In today's world where most people check their email constantly, a client is that hard to get a signature from may be a clear sign of a possible problem client.

I am going to try and never sign again, except in an emergency.

At 3:23 PM, Anonymous Anonymous said...

The party that filed the motion to disqualify was admonished by the TTAB. The Board said that the attorneys that filed the motion should read the rules and understand TTAB practice. The Board did not sanction the party for the motion but stated that they would consider sanctions if further motions, such as this, would be filed in the future.

At 7:23 PM, Anonymous Anonymous said...

Three cheers for some common sense!

At 2:51 PM, Anonymous Anonymous said...

To Anonymous post at 2:51PM. I think if you read the decision, you will answer your own question as to why an attorney would "take a chance" on this issue. It is because the USPTO rules allow such action to occur, and because motions like the one filed by Applicant in this case will not be well taken by the TTAB. The answer is that no "chance" is being taken by the attorneys in instances such as these. For you to still have some sort of "fear" of signing such documents after reading this particular decision seems a bit unnecessary. Obviously, that is your prerogative, though.


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