Patent Rules Ensnare Foreign Practitioner
The New Jersey Supreme Court reduced a sanction imposed by the United States Patent & Trademark Office in a matter described in a recommendation of the Disciplinary Review Board
Respondent was a registered patent attorney with the USPTO and had routinely practiced before the USPTO in patent and trademark matters. Prior to August 3, 2019, respondent was listed as the attorney of record on approximately 2,000 trademark documents. However, after August 3, 2019, that number significantly increased to more than 13,000 trademark documents.
Notably, effective August 3, 2019, the USPTO implemented a rule change that required all foreign-domiciled trademark applicants, registrants, and parties to be represented by an attorney who was in good standing and licensed to practice law in the United States. 37 C.F.R. § 2.11(a). According to the USPTO, this rule, commonly referred to the “U.S. Counsel Rule,” was necessitated by an increase in the unauthorized practice of law by foreign parties who were not authorized to represent trademark applicants before the USPTO.
The rule change had a significant impact on Respondent due to his foreign clientele
Due, in part, to the time constraints caused by his acceptance of such a large volume of trademark clients over a short period of time, in conjunction with his reliance upon nonlawyer, foreign-domiciled intermediaries to obtain the required information from prospective trademark applicants, respondent admittedly failed to advise or discuss directly with the applicants themselves important legal issues regarding their trademark applications, including the requirements for a proper “specimen” and whether the applicant’s use qualified for “use in commence.”
Respondent admittedly represented numerous trademark applicants who had hired him to prepare and file a trademark application, on their behalf, and provided respondent with the purported specimen. However, in some instances, the specimens provided to respondent as alleged proof of use “were identical to other specimens for different applicants for different marks that also were filed by [r]espondent – sometimes within days of one another.” Respondent failed, however, to conduct an inquiry reasonable under the circumstances to determine whether the specimens he was submitting to the USPTO properly depicted the mark as used in commerce.
Further, in 2020, respondent failed to personally enter his electronic signature on many of the more than 7,000 trademark documents he filed with the USPTO, wherein he represented to be the signatory and attorney of record. Respondent also failed to inform his clients of these impermissibly signed trademark documents; nor did he explain to them the potential adverse consequences to their intellectual property rights occasioned by these impermissible signatures. USPTO trademark signature rules require that all signatures be personally entered by the named signatory and that a person electronically signing a document must personally enter any combination of letters, numbers, spaces, and/or punctuation marks that they have adopted as a signature, between two forward slash (/) symbols in the signature block on the electronic submission.
He was suspended for two years in the ensuing USPTO action but here was censured
On balance, we determine that the mitigation in this case supports a censure as the quantum of discipline necessary to protect the public and preserve confidence in the bar.
(Mike Frisch)