By all accounts, Jeremy Blackowicz is a fine trademark attorney with a long and bright future ahead. According to a recent version of his law firm’s website, Mr. Blackowicz was an associate in the Boston, Massachusetts intellectual property department of Day Pitney, LLP. According to the firm’s website, Mr. Blackowicz, a 2001 graduate of Boston University School of Law, has been recognized for several years as a “Rising Star” by Massachusetts Super Lawyers.
That star may have fallen a bit after a USPTO ethics investigation led to the filing of a formal complaint for ethical disciple against him by the USPTO’s Office of Enrollment and Discipline (“OED”).
On May 11, 2015, the disciplinary complaint was settled pursuant to 37 CFR § 11.26, when USPTO Director Michelle Lee signed off on a settlement agreement in which Mr. Blackowicz agreed to a 30-day suspension from practicing before the USPTO in trademark and other non-patent matters. See In re Blackowicz, No. D2015-13 (USPTO Dir. May 11, 2015). In addition to the 30-day suspension, Mr. Blackowicz received a 13-month probated suspension.
This matter started innocuously enough.In February 2013, Day Pitney partner, David Newman, requested that Mr. Blackowicz provide trademark legal services to two co-owners of a trademark application, Client 1 and Client 2. Pursuant to the partner’s request, Mr. Blackowicz undertook the joint representation of Clients 1 and 2.
At the same time Mr. Blackowicz represented Client 1 and Client 2, he was also representing Client 2’s father (Client 3), Client 2’s uncle (Client 4), and Client 4’s company (Client 5). At this point, alarms should have gone off triggering inquiry into whether, due to the nature of the personal and familial relationships of Clients 1-5, a conflict of interest might arise and whether it might be prudent to get all of Clients 1-5 “on board” with regard to Mr. Blackowicz’s joint representation of all of them and the ethical issues such joint representation might create.
According to the USPTO’s settlement agreement, Mr. Blackowicz did not disclose to Clients 1 and 2 the possible effects of his representation of them while also concurrently representing Clients 3, 4, and 5 . Furthermore, prior to undertaking representation of Clients 1 and 2, Mr. Blackowicz failed to run a conflicts check to determine whether any potential conflicts existed with representing Clients 1 and 2 while he and Day Pitney also represented Clients 3, 4, and 5.
Evidently, Mr. Blackowicz failed to disclose to either Clients 1 or 2 the possible risks or benefits of their joint representation and never obtained consent after full disclosure to represent Client 1 and Client 2 jointly. To exacerbate matters, Mr. Blackowicz billed the time for his work on behalf of Clients 1 and 2 to Client 5, and he never disclosed in writing to either Clients 1 or 2 either the fact that a third party (Client 5) was paying their legal fees or that he was not permitted to take instructions or direction from the third party (Client 5).
During prosecution of the trademark application on behalf of Clients 1 and 2, Mr. Blackowicz learned of a dispute between Client 1 and Client 2 regarding their business enterprise. It is unclear from the settlement agreement what, exactly, was the nature of this dispute.
On or around December 30, 2013, and continuing into January 2014, Mr. Blackowicz engaged in a series of email communications and phone conferences with Client 2, Client 3 (Client 2’s father), and Day Pitney partner David Newman, regarding the trademark application co-owned by Clients 1 and 2 and the business dispute between Clients 1 and 2. They discussed filing an Express Abandonment of the trademark application co-owned by Client 1 and 2. Client 1 was not consulted.
At this point, again, red flags should have been raised for Mr. Blackowicz as well as Mr. Newman of the potential for conflicts associated with communicating with Client 3 about Client 1’s intellectual property rights without the permission or presence of Client 1. This is especially troubling since, according to Day Pitney’s website, Mr. Newman is a commercial litigator who has practiced law for approximately 37 years.
Messrs. Newman and Blackowicz also discussed the filing of two new trademark applications on behalf of Client 3 ‘s company (Client 6), seeking registration of the same trademark that Clients 1 and 2 co-owned and had jointly filed, with Mr. Blackowicz’s help, in the USPTO. None of this information was disclosed to Client 1.
The USPTO’s settlement agreement noted that Mr. Blackowicz and Mr. Newman did not include Client 1 in the emails or the phone conferences with Clients 2 or 3. As a result of the email communications and phone conferences with Clients 2 and 3, Mr. Newman and Mr. Blackowicz took direction from Clients 2 and 3 (but not Client 1). This led to Mr. Blackowicz’s filing of an Express Abandonment of the trademark application co-owned by Clients 1 and 2 without the prior knowledge or consent of Client 2. As instructed by Clients 2 and 3, Mr. Blackowicz filed two new trademark applications, identical to Client 1 and 2’s abandoned trademark application, for Client 6.
Client 1 found out. She informed Mr. Blackowicz that she wanted him to file a Petition to reinstate the trademark application for which she and Client 2 were co-owners. Mr. Blackowicz, with senior partner Newman’s blessing, filed the requested Petition. Again it appears no consideration was given to the increasingly tangled web of ethical conflicts.
The USPTO and Mr. Blackowicz agreed as part of the settlement that Mr. Blackowicz and Day Pitney had an irreconcilable conflict of interest between Client 1 and Client 6. Mr. Blackowicz further admitted that he failed to appreciate Client 1’s status as his client, his joint representation of Clients 1 and 2, or his obligation to advise Client 1 regarding potential conflicts of interest.
Mr. Blackowicz agreed that his conduct violated, inter alia, the following USPTO disciplinary rules:
37 C.F.R. § 11.102(a) (failing to abide by a client’s decisions concerning the objectives of representation and failing to consult with the client as to the means by which the objectives are pursued); 37 C.F.R. § 11.104(a)(1)-(2) and (b) (failing to promptly inform the client of any decision or circumstance with respect to which the client’s informed consent is required); 37 C.F.R. § 11.107(a)(1)-(2) and (b)(3)-(4) (representing a client when the representation of one client will be directly adverse to another client); (representing a client when the representation of that client may be materially limited by the lawyer’s responsibilities to another client); (representing a client when the representation involves the assertion of a claim by one client against another client represented by the practitioner in the same proceeding without obtaining consent after full disclosure); 37 C.F.R. § 11.108(f)(1)-(3)(representing a client and accepting compensation for representing that client from one other than the client unless the client gives informed consent); (representing a client and accepting compensation for representing that client from one other than the client when there is interference with the practitioner’s independence, professional judgment, or with the client-practitioner relationship); (representing a client and accepting compensation for representing that client from one other than the client and failing to protect information relating to representation of the client as required under the confidentiality rule, 37 C.F.R. § 11.106); 37 C.F.R. § 11.109(a) (representing a former client and thereafter representing another client in the same or substantially related matter in which the interests of that client are materially adverse to the interests of the former client without obtaining informed consent, confirmed in writing, from the former client); and 37 C.F.R. § 11.504(c) (allowing a person who pays the practitioner to render legal services to another to direct or regulate the practitioner’s professional judgment in rendering such legal services).
This matter serves as a valuable lesson to all USPTO practitioners regarding the perils and ethical responsibilities when representing multiple clients in the same matter. A joint representation is not per se unethical and, in fact, they are quite common. A proper joint representation may result in significant overall cost savings to the jointly represented clients. As long as the joint clients are all in agreement with the representation, there usually is no issue. Ethical problems can, however, arise when the once common interests and objectives of the joint clients diverge.
To help reduce the likelihood of a conflict in a joint client representation, the lawyer must determine who is, and who is not, the lawyer’s client and must clearly communicate this fact to the client or clients. By not defining the roles of the clients, the lawyer may be left with the possibility of receiving different instructions from multiple “clients.” Furthermore, a firm-wide conflict check should be been conducted prior to the commencement of any joint representation. Third, the joint clients should execute a written engagement agreement that makes clear who are the clients, the scope of the representation, the basis for determining fees, the identification of any third-parties who agree to pay the fees, how conflicts between the joint clients should be resolved, and any informed written consent necessitated by the circumstances.
While the OED’s decision focused on the actions and inactions of Mr. Blackowicz, it provides no clue into what happened to Mr. Newman. According to the firm’s website, Mr. Newman is a member of the New York bar and he does not hold himself out as a patent or trademark attorney. Pursuant to 37 C.F.R. § 11.19(a), however, the USPTO’s disciplinary jurisdiction extends to those who “provide or offer to provide any legal services” before the Office. Query whether Mr. Newman’s conduct in advising Client 6 to register a trademark and his role in supervising or directing Mr. Blackowicz to abandon Client 1 and 2’s trademark application for the benefit of Client 6 is sufficient to bring Mr. Newman within the long-arm of the USPTO’s disciplinary jurisdiction. Whether Mr. Newman is being investigated by the OED or any state disciplinary authority for his involvement in this matter remains unknown.