Emil J. Ali
Can I Borrow Your Bar License and Put it on the Line?
Updated: Aug 1, 2020
“Bruce from China” wants to do just that and his e-mails on February 21, 2019 were clear:
Can I use your attorney address? We help customers apply for US trademarks, but we need you to provide attorney information and US recipient address. About submit US trademark, and reply to review comments are submitted by us, authorized email also writes us. Just use your attorney information, how much is it for one class/one trademark? I am looking forward to your reply. Thank you very much.
Bruce likely had heard about the USPTO’s proposed rule requiring foreign trademark filers to be represented by U.S. trademark practitioners, covered by our blog here. While Bruce may not have realized the rule has not been finalized, he appears to be thinking ahead. Multiple members of the trademark bar clearly received the same e-mail and the word spread like wildfire to the USPTO.
On February 22, 2019, the USPTO sent out a Trademark Alert warning practitioners about the practice and how it likely violates the USPTO Rules of Professional Conduct, including the prohibitions on aiding in the Unauthorized Practice of Law before the USPTO.
We've learned that U.S. attorneys are receiving emails from people in China and perhaps elsewhere, offering to pay to use their information in trademark filings. These solicitations appear to be an attempt to circumvent the proposed U.S.-counsel rulemaking.
Agreeing to such arrangements would likely be aiding unauthorized practice of law and violating federal rules, including the USPTO Rules of Professional Conduct, 37 C.F.R. Part 11. Attorneys who violate these rules may receive discipline, including exclusion or suspension from practice before the USPTO, reprimand, censure, or probation. Attorneys disciplined by the USPTO may also be reciprocally disciplined by their state bar.
We'd like to know about these solicitations. If you receive a solicitation asking to use your information, please forward it to TMFeedback@uspto.gov.
It is important to understand that the USPTO, and the Office of Enrollment and Discipline (OED) desire to protect the trademark register from inappropriately filed marks. To the extent an attorney offers to “rent their license” to a foreign entity that mass files trademarks, such action implicates multiple provisions of the USPTO Rules of Professional Conduct.
For example, OED has disciplined practitioners for similar conduct involving aiding in the unauthorized practice of law in trademark matters. See, e.g., In re Alia, Proceeding No. D2016-32 (USPTO, March 3, 2017). Of course, on the patent side, this conduct has been addressed through affiliation with entities commonly known as invention promotion companies. See, e.g, In re Mikhailova, Proceeding No. D2017-18 (USPTO, June 16, 2017). It is important for practitioners to fully understand their obligations concerning, inter alia, communicating the scope of the representation and basis of fee to the clients (37 CFR § 11.105); obtaining informed consent in light of actual or potential conflicts of interest (37 CFR § 11.107); explaining matters to the extent reasonably necessary to permit clients to make informed decisions (37 CFR § 11.104); and of course, aiding others in the unauthorized practice of law before the USPTO (37 CFR § 11.505). So steer clear of renting your license to foreign trademark filers. After all, do you really want to put your ability to practice before the USPTO on the line?
For additional information, please contact McCabe & Ali, LLP at 877-OED-4097.
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