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

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 the intricacies and nuances of practice before the USPTO in trademark matters.  The USPTO’s expectations for practitioners has evolved, particularly in the trademark arena.  Attorneys who practice before the agency every day stand a much better chance of keeping up to date on the landscape of Trademark Office rules, policies, and procedures than those who may appear at the USPTO sporadically.   

What’s the Problem with Dabbling

Ethics and risk management professionals frequently speak about the risks inherent when lawyers practice outside of their own comfort zone, on a sporadic basis, in a field in which they have relatively little experience–sometimes referred to as “dabbling.”  

“I know enough about X to be dangerous” is a mantra I sometimes hear, particularly in the field of intellectual property law–which itself is balkanized into patents, trademarks, copyrights and trade secret law.  A “dabbler,” almost by definition, is dangerous–at least in the sense that he or she has not invested the hours, days and years of regular engagement to achieve mastery of a particular area of law.  

Let’s face it–with limited exceptions, lawyers have a broad right to practice in all fields of law.  But, as time goes on and their careers evolve, most lawyers tend to develop at least some areas of specialization.   The days of the true “general practice” lawyer, one who is reasonably competent enough to take on any subject matter regardless of novelty, are of a bygone era.  There are over 1.3 million licensed attorneys in the United States, according to a 2022 American Bar Association survey.   While theoretically possible for a lawyer to take on “all comers” for all subject matters (subject to geographic licensing restrictions), the fact is that once someone gets comfortable with a particular area of law, they tend to continue their comfort zone work. 

And why not?  The law is vast and it is not reasonable to expect any one lawyer to keep up to date on every development.  Specialists, on the other hand, have invested the time to establish more focused training and skills.   The more time they invest, the more entrenched they become.  They also become more efficient at it and are able to see what lies around the bend more readily based on their developed expertise.  With only so many hours in a day, it becomes that much harder for a lawyer to stray from the areas of law in which they feel most comfortable.  

To Dabble or Not

Lawyers dabble for a variety of reasons.  It can, of course, be purely economic.  Lawyer provides business services for a corporate client who asks for help with a trademark.  Although the lawyer expects no other trademark work from this client–and may have never done any such work before–it is a a revenue generating activity.  Some lawyers, either by virtue of brilliance, hard work, or desire, will readily take on the challenge and of course help their client.

Often, dabbling arises from a desire to help purely for personal instead of pecuniary reasons.  Who hasn’t gotten a request for legal advice from a family member or friend?  For example, in my family, I have received requests for legal help in areas such as family law, immigration, wills and estates, divorce, criminal, real estate, and employment law.  It’s hard to say “no” to mom and dad.

Early on in my career, when I was less comfortable with saying “no”–particularly for someone I cared for–I would (reluctantly) take on some of these matters.   The fact such matters were for no fee was beside the point–it was not about the money.  They were no fun.  I was out of my element.  I felt stupid.  It caused needless stress and sleepless nights.  What if I screwed this up–I have to see this person at holidays!

There is nothing, of course, per se wrong with “dabbling,” provided the lawyer provides competent legal representation.  Dabblers must answer the question:  Even though I may have never done this before, or have only done this service once in a while, do I have (or can I get) the knowledge, education, skill and training to provide the service that is asked of me, and to otherwise accomplish the objectives of my client, all at a reasonable fee (among my other ethical obligations)?

If a lawyer is taking on a matter in a new field, then that lawyer is going to need to get up to speed and may need to “hit the books” to be able to understand the law well enough to provide “competent” representation.  If the lawyer is unable or unwilling to invest the personal time to learn the law, then he or she generally has two choices: (1) decline the representation; or (2) find an experienced practitioner to co-counsel with.

General Practice Lawyers Dabbling in IP

Attorneys who regularly advise clients on corporate, business and similar types of practice areas are, in my experience, much more likely to come across a client who needs IP help.  Moreover, as a lawyer in any field, you may receive a request for legal services relating to intellectual property.  For example, corporate clients want to protect their name and brand from trademark poachers.  The corporate or business client may have created original works that qualify for copyright protection.  They may have inventions they wish to protect.

IP Practice Risks for the Business Attorney

Over the years, I have represented many a “dabbling” IP attorney.  Although there have been some unique instances of “dabbling” in patent law, the complex technical subject matter of patents and less than plain English legal concepts creates a sufficient deterrent for most non-patent practitioners.   Drafting a patent application is not filling out a form or answering a few questions.  It has been stated time and again that a patent is “one of the most difficult legal instruments to draw with accuracy.”  Topliff v. Topliff, 145 U.S. 156, 171 (1892).  Thus, while not non-existent, cases of “dabbling” in patent law are less likely to occur than other areas of IP.  Many business, as well as other subject matter and general practice, attorneys recognize that patent services are too far outside of their field.  Such matters are more likely to be referred out to “real” patent counsel.

Trademarks and copyright applications, on the other hand, present differently.  At first blush, they appear relatively simple.  Those who know know they are anything but.  But to the dabbler, this appears to be very much a pro se practice.  The government provides a pre-printed form, and the applicant must answer a few questions, check some boxes, pay a fee, and generally speaking, they are good to go.   The application preparation and filing process could not be easier.  In fact, because many applicants are pro se, the government provides much content on the USPTO and Copyright Office websites to help the public navigate the trademark or copyright application process.  With all of this structure in place, it is not unreasonable for the non-IP lawyer to conclude they could figure it out.

Some lawyers are deceived by the apparent simplicity of those form-based filing practices.  The truly complexities often do not become apparent until the application is examined and the Office issues a lengthy office action with multiple unexpected rejections.  The dabbler may find themselves looking down a barrel of rejections they barely understand and asking a lot of questions for which they have no answers.  Questions like: What does it mean, “the mark is not being used as a mark”?  Why is there a likelihood of confusion if nobody is confused?  What does descriptive mean and how do I overcome a merely descriptive rejection?  What do you mean my specimens are improper?  What’s this “supplemental register”?  And on and on.

Types of Improper Conduct

The USPTO’s Office of Enrollment and Discipline, which polices compliance with and enforces the agency’s professional conduct rules, has investigated many attorneys for alleged failures to provide competent services particularly in trademark matters (they also do so in patent matters, but for the reasons explained above, there are fewer patent dabblers).  Many of those dabblers were truly just business attorneys who agreed to take on a trademark representation as an additional service.  And it makes perfect business sense for a business attorney to be able to provide that service to their clients.  Unfortunately, many were unaware of some of the unique customs that may seem counter-intuitive, such as the literal “personal signature” entry requirement “by” the named individual or the increased scrutiny to foreign associate activities and specimen reviews.

The types of practices that have caused ethical angst for many a business, corporate, or general practice attorney include:

  • Filing improper specimens, such as digitally altered photographs purporting to show use of the applied-for mark;
  • Failing to understand the extent of applicant’s use and if it qualifies for use in commerce;
  • Failing to see documented proof of the applicant’s claimed date of first use in commerce;
  • Failing to understand whether a mark is being used as an identifier of source of goods or services;
  • Failing to advise the client on the differences between a use-based applications and an intent-to-use application;
  • Failing to verify an applicant’s claim they have a bona fide intention to use a mark;
  • Allowing non-practitioner “middleman” to provide legal advice to applicants;
  • Failing to communicate with the client regarding post-registration obligations; and
  • Allowing unauthorized individuals to sign the application or filing , a putative violation of the USPTO’s “personal” signature requirement.

There have been a wide range of disciplinary sanctions imposed for attorneys who practice on an ad hoc basis at the USPTO.  Those have included reprimands as well as some period of suspension of the practitioner’s right to appear in or practice before the USPTO.

Exposure to Reciprocal Discipline Claims

An attorney who appears before the USPTO is subject to discipline by at least two different authorities:  (1) the USPTO’s Office of Enrollment and Discipline; and (2) the state bar (or bars) in which the attorney is admitted.

An attorney who receives public discipline from the USPTO may downplay the importance of that decision.  “Okay, so I can no longer practice before the USPTO.  I will just continue to practice law outside the USPTO.”

But sadly, that attitude fails to account for the fact that each disciplinary jurisdiction in the United States gives full faith and credit to the disciplinary decisions of every other authority.  And it is a violation of the rules of professional conduct in any state for an attorney to be disciplined by another jurisdiction.  Thus, a license suspension from the USPTO will not just cause the attorney to lose his or her ability to practice before the agency.  It could impact their state law license too.

Every state has its own system of reciprocal discipline.  Reciprocal discipline is designed to prevent a practitioner who has been suspended or disbarred from one jurisdiction to simply move their practice to another jurisdiction (where they have not been disciplined) and continue practicing.  Therefore, when a practitioner is disciplined by the USPTO, they must report that discipline to each of their state and federal bars.  See 37 CFR 11.24.  Every bar has the right to discipline a practitioner based solely on the fact that the practitioner was disciplined by another bar.

Consequently, a suspension from the USPTO, which initially only prevents practice at the agency, could extend to impact the individual’s state bar license.  A state court could impose the same license suspension as the USPTO, or it may deviate from that punishment.  In however the state court case proceeds, the import is that USPTO discipline could impact the lawyer’s right to practice law period (or, as my daughter would say, Periodt.).

Risk Mitigation for the Dabbling IP Attorney

There is no rule that says only experienced specialists in trademarks or copyrights can represent applicants.  On the contrary, any attorney in good standing before a bar of a state, territory, or the District of Columbia is authorized to represent a client in trademark matters before the USPTO and in copyright matters before the Copyright Office.  The question becomes whether they should.

To avoid or mitigate the risk of dabbling, consider the following steps:

Study –  Attorneys have an ethical obligation to apply the skill needed for competent representation in whatever area they practice.  Dabbling attorneys are expected to educate themselves on the relevant law, rules, and procedures.  The less experience, the more study may be necessary.

Partner with Experienced Co-Counsel –  Co-counsel with a practitioner who is more experienced than you in the field and is willing to either take the lead or at least provide you with needed support.  If the client is expecting you to be doing the work, you should have a discussion about your co-counseling arrangement and ensure the client consents.  In this type of arrangement, you will likely need to explain the billing arrangement since a typical trademark or copyright applicant client is probably not going to want to pay two lawyers for the job of one.

Withdraw if Necessary – It may be that you got into a matter with the best of intentions, but as the matter progressed, it became apparent you were out of your depth.  If the issues are beyond your level of competency, and you are unable or unwilling to either put the additional time in to obtain competency or to engage with co-counsel, then withdrawal would most likely be warranted.

Just Say No – Sometimes the best client is the one you never had.  Turning down a client requires discipline, to be sure, and you may feel badly that you are not there for your client.  Don’t be.  You are doing no service to your client by handling a matter in which you feel you may not have the competency.  At the end of the day, it is not about you, it is about the client.  If IP is not your area, then have an honest discussion about the limitations on your practice.   It is okay to decline a request for legal services.  Good clients will appreciate your honesty and will come to you when they have a legal need that is in your area of comfort.

Get Malpractice Insurance – Mistakes happen.  Even when they do not, accusations of mistakes are not uncommon.  Common sense and experience dictate that a lawyer who dabbles in any field of law is more likely to make an error than one who specializes.  If a mistake does happen, a policy of professional liability insurance from a reputable insurance company may mitigate the risk of loss to counsel based on a claim of legal malpractice.  While most states do not require malpractice insurance, there are many reasonably priced policies available.  Moreover, some insurance carriers offer law firm risk management tools and resources.  Lawyers would be wise to investigate these options.

 

 

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