PTO Neglect Draws Reprimand
A recent public reprimand is summarized on the web page of the Massachusetts Board of Bar Overseers
The respondent was the only trademark lawyer at a small law firm. In May 2022, a client entered into a written fee agreement with the firm to file two trademark applications for her business. The fee agreement recited that the respondent would be the attorney responsible for the matter, and that a law clerk would assist him.
On August 22, 2022, the respondent submitted two trademark applications to the United Trademark Office (“USPTO”) on behalf of the client. Each application listed the attorney as the primary correspondent to whom the USPTO should send notices related to the applications. The respondent listed his firm email address and the firm street address on the applications, as well as the firm contact information for the law clerk. On September 15, 2022, the firm billed the client $1,260, which she promptly paid.
By April 2023, both the respondent and the law clerk had left the firm. The firm believed that the respondent had notified the client of his departure, but the respondent did not do so. Nor did the respondent update his contact information with respect to the trademark applications. The USPTO notices regarding the applications continued to be sent to the respondent at the firm. The respondent did not make arrangements for his firm emails to be forwarded to him.
On June 7, 2023, the USPTO issued Nonfinal Office Actions requesting that the respondent amend both trademark applications to clarify the description of goods. Responses to the office actions were due by September 7, 2023. The respondent did not receive the office actions and he did not respond to the office actions.
On or about September 13, 2023, the client attempted to contact the respondent at the firm, and the firm gave her the respondent’s personal email address. She emailed the respondent asking for an update on her trademark applications, but he did not respond.
On October 2, 2023, the USPTO issued Notices of Abandonment of the applications, on account of the respondent’s failure to respond to the office actions. Each notice stated that a petition to revive the application could be filed by December 2, 2023. Sometime in October 2023, the firm forwarded the Notices of Abandonment to the respondent.
Prior to October 22, 2023, the client checked the USPTO website on her own and learned that her trademark applications had been abandoned. She emailed the respondent again and asked for a refund. On November 1, 2023, the respondent responded to the client’s email. The respondent falsely stated that he had already taken steps to revive the applications. In fact, the respondent never filed petitions to revive the trademark applications, nor did he file anything else with the USPTO regarding these applications.
The client sent another email to the respondent on February 8, 2024, complaining that she had not heard from him. The respondent replied on February 12, 2024, assuring her that he would either obtain her trademark registrations or refund her money by the end of February 2024. The respondent took no further actions with regard to the client’s trademark applications and did not take steps to refund the money she had paid.
The firm later learned of the respondent’s neglect of the trademark applications from Bar Counsel and voluntarily refunded the client’s money. The client was able to file new applications for the same trademarks through successor counsel.
(Mike Frisch)