This week marks five years since the USPTO implemented its Requirement of U.S. Licensed Attorney for Trademark Applicants and Registrants. Also known as the “U.S. Counsel Rule”, the USPTO on August 2, 2019 amended its trademark rules of practice to require any non-U.S. domiciled trademark applicant, registrant, or party to a USPTO trademark proceeding to […]
Who are you going to call if you have a question about whether your conduct as a patent or trademark attorney is ethical? Many state bars offer “ethics hotlines” to aid their members in their understanding of, and compliance with, their obligations under applicable rules of professional conduct. Although the USPTO does not advertise a
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
Trademark Ethics: 5 Things That Might Keep You Up At Night Read More »
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
DOC OIG Slams USPTO’s Handling of Foreign Trademark Filings, U.S. Counsel Rule Read More »
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
Top Three Things IP Practitioners Must Know When Working With Foreign Associates Read More »
The letter comes in the mail from OED asking you a few questions about a handful of trademark applications, including whether each form was electronically signed by the respective applicant or attorney. The light bulb still has not hit—you ask yourself who is OED, and why are they asking about signatures. You read further into
Trademark Signature Best Practices and OED Read More »
This article appeared in Law360 on September 23, 2020. (Subscription Required) The rules of ethics adopted by each state are often said to be based upon or modeled after the American Bar Association’s Model Rules of Professional Conduct. While the ABA model rules provide a template for states to consider when adopting their own ethics
Balancing Newly Divergent State, USPTO Ethics Rules Read More »
On Monday, June 1, 2020, I will be moderating an ethics webinar panel discussion on behalf of the ABA’s Intellectual Property Law Section (for which I serve as Chair of the Ethics and Professional Responsibility Committee). The webinar is entitled “A Look at the USPTO’s Focus on Declarations” and will focus on ethics issues relating
New IP Ethics CLE: A Look at the USPTO’s Focus on Declarations Read More »
