Trademark ethics

Federal Circuit Issues Opinion Reversing USPTO’s Improper Invalidation of Trademark

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On October 18, 2023, the Federal Circuit issued an opinion in GREAT CONCEPTS, LLC, v. CHUTTER, INC., reversing the decision of the USPTO’s Trademark Trial and Appeal Board.  The Court analyzed very crucial point in the progeny of In re Bose— whether alleged fraud on the USPTO that could invalidate a trademark application also applies […]

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Trademark Alert

USPTO Announces Requirement for Support Staff to Obtain Identity Verification

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On September 5, 2023, the USPTO announced in a Federal Register Notice that all non-attorney support staff would be required, beginning on January 20, 2024, to verify their identity to access the USPTO’s Trademark Electronic Application System (“TEAS”).  This follows multiple changes in July 2022 and October 2023 to the USPTO’s Trademark Verified USPTO.gov Account

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Lawyers Who “Dabble” In USPTO Trademark Matters Face Nightmare Of OED Ethics Investigations, Discipline

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“A man’s got to know his limitations”  – Clint Eastwood, Magnum Force  (1973) The USPTO’s Office of Enrollment and Discipline has become increasingly active in the last several years, particularly in investigating business or general practice attorneys who dabble in trademark law.  Many have learned the hard way–through an ethics inquiry and possible disciplinary decisions–regarding

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Trademark Ethics: 5 Things That Might Keep You Up At Night

2 Comments / PTO Ethics Decisions, PTO Ethics Rules, Trademark ethics, USPTO Ethics Investigation, USPTO OED, USPTO Rules of Professional Conduct / By

Emil Ali has been keeping very busy representing trademark practitioners in USPTO ethics investigations and disciplinary proceedings.  Next Thursday, May 12, Emil will be sharing his insights into the perilous ethical landscape faced by trademark counsel, in a live online webinar.  Every trademark practitioner should watch and learn from the mistakes others have made!  This

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Tightrope

Working with Chinese Trademark Agencies – A Dangerous Game, or Delicate Tightrope?

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Following a recent report issued by the Department of Commerce, Office of Inspector General, as well as a plethora of recent disciplinary actions published by the USPTO’s Office of Enrollment and Discipline, many practitioners have done a retrospective analysis of their trademark practices with clients and agencies in China.  But is it time to give

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USPTO Responds to OIG Report – Continues to Blame Attorneys and Foreign Agents

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Last week, we provided commentary regarding a scathing report issued by the Inspector General of the Department of Commerce (“OIG”).  Since that time, the USPTO published a blog post, penned by Drew Hirshfeld, performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director, and David Gooder, Commissioner for Trademarks. 

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DOC OIG Slams USPTO’s Handling of Foreign Trademark Filings, U.S. Counsel Rule

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On August 11, 2021, the Inspector General of the Department of Commerce (“OIG”), which oversees the USPTO, issued a scathing report on the state of the USPTO’s control over the integrity of the Trademark Register.  The report discussed a number of areas of concern, including the enforcement of the U.S. Counsel rule, as well as

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China skyline

Top Three Things IP Practitioners Must Know When Working With Foreign Associates

1 Comment / Foreign Associates, Office of Enrollment and Discipline, Outsourcing, Trademark ethics, Unauthorized Practice of Law, USPTO OED, USPTO Rules of Professional Conduct / By

As we noted in a prior post, the USPTO has gone on record allowing U.S. practitioners to partner with foreign attorneys by way of ownership of law firms, without violating the USPTO Rules of Professional Conduct.  However, practitioners continue to be surprised when they are told that practitioner relationships with foreign associates and agents outside

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