Feature

Ethical Issues for Trademark Lawyers Practicing before the U.S. Patent and Trademark Office

Stephanie H. Bald And Linda K. McLeod

©2013. Published in Landslide, Vol. 5, No. 5, May/June 2013, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

As a trademark practitioner, it is not enough to familiarize yourself with the ethics codes, rules, and regulations of the state in which you practice. You must also know and understand the separate set of rules and regulations governing trademark practice before the U.S. Patent and Trademark Office (USPTO). Failure to adhere to these rules can result in disciplinary action by the USPTO in addition to, and potentially exceeding, any disciplinary action by the state. Further, disciplinary action before the USPTO can trigger state disciplinary proceedings, as the USPTO is required to notify the appropriate state authorities of any final decision reprimanding, suspending, or excluding an attorney from practice before the USPTO.

This article provides an overview of the USPTO’s ethics rules, regulations, and enforcement mechanisms, discusses several areas of trademark practice before the USPTO that have ethical implications, and outlines best practices for trademark practitioners for compliance with the applicable ethics rules and regulations.

The USPTO’s Code of Professional Responsibility and Its Enforcement

The USPTO has its own ethics rules, namely, the Patent and Trademark Office Code of Professional Responsibility (PTO Code), which is based on the ABA Model Code of Professional Responsibility (Model Code).1 The PTO Code is codified in Part 10 of 37 C.F.R. and includes nine “canons” of professional conduct and certain disciplinary “rules.”2 The preamble to Rule 10.1 provides that the canons and rules apply to the practice of law before the USPTO and that “[n]othing in this part shall be construed to preempt the authority of each State to regulate the practice of law.” In other words, a practitioner may be subject to concurrent disciplinary action before both the USPTO and the state.

Disciplinary actions arising out of violations of the USPTO Code are handled through the Office of Enrollment and Discipline (OED). The OED director investigates allegations of misconduct.3 After investigation, if the director believes that there has been a violation, the matter is referred to the USPTO’s Committee on Discipline, which is comprised of a body of at least three USPTO attorneys appointed by the OED director.4 If the committee then finds “probable cause” that a rule has been violated,5 a formal disciplinary proceeding may be initiated.6

A hearing officer is appointed by the OED director to conduct contested disciplinary proceedings.7 The director has the burden of proving a rule violation by clear and convincing evidence.8 The disciplinary proceedings may result in a warning, reprimand, suspension, or exclusion (i.e., disbarment or prohibition) from practice before the USPTO.9 The OED director is required to notify the appropriate authorities of any state in which an attorney is admitted to practice of any final decision reprimanding, suspending, or excluding that attorney from practice before the USPTO.10

The Unauthorized Practice of Trademark Law before the USPTO

Who May and May Not Practice Trademark Law before the USPTO

A trademark owner may file and prosecute its own trademark application or be represented by an attorney or domestic representative.11 A party may likewise represent itself or engage an attorney for representation in proceedings before the Trademark Trial and Appeal Board (TTAB).12 Unlike patent practice before the USPTO, there is no requirement for an attorney to obtain a registration or special recognition to practice before the USPTO in trademark matters.13 An attorney need only be a member in “good standing” of any bar of any U.S. court or the highest court of any state.14

To the extent an attorney is no longer in “good standing” because he or she has been disciplined by state authorities due to an ethics violation, 37 C.F.R. § 11.24 generally applies. Section 11.24 codifies the standards for imposing reciprocal discipline by the USPTO based on a state’s disciplinary adjudication and provides that the USPTO director

shall impose the identical public censure, public reprimand, probation, disbarment, suspension or disciplinary disqualification [as the state] unless the practitioner clearly and convincingly demonstrates, and the USPTO Director finds there is a genuine issue of material fact that:
(i) The procedure elsewhere was so lacking in notice or opportunity to be heard as to constitute a deprivation of due process;
(ii) There was such infirmity of proof establishing the conduct as to give rise to the clear conviction that the Office could not, consistently with its duty, accept as final the conclusion on that subject;
(iii) The imposition of the same public censure, public reprimand, probation, disbarment, suspension or disciplinary disqualification by the Office would result in grave injustice; or
(iv) Any argument that the practitioner was not publicly censured, publicly reprimanded, placed on probation, disbarred, suspended or disciplinarily disqualified.

The USPTO will impose reciprocal discipline regardless of whether the ethics violation before the state related to the practice of trademark law. In In re Shippey, the OED director sought to impose reciprocal discipline on the respondent as a result of her suspension from the practice of law in California.15 The respondent argued that reciprocal discipline was inappropriate because the basis for discipline in the California state action related to mortgage negotiations and allegedly did not affect her trademark practice. The OED director disagreed, finding that the plain language of § 11.24 “does not restrict the imposition of reciprocal discipline only to matters where the original censure, public reprimand, probation, disbarment or suspension occurred in connection with a trademark matter.”16

Certain foreign attorneys or agents from Canada may also represent a party in proceedings before the USPTO and the TTAB. A foreign attorney or agent who is a nonresident must file an application for reciprocal recognition and prove that he or she is registered or in “good standing before the patent or trademark office of the country in which he or she resides and practices and is possessed of good moral character and reputation.”17 Currently, a Canadian attorney or agent who is registered or in good standing with the Canadian Intellectual Property Office is the only foreign attorney or agent who may qualify for reciprocal recognition.18

One factor considered in determining whether a foreign applicant is of “good moral character” is whether the applicant has previously engaged in the unauthorized practice of law, including before the USPTO.19 The OED director denied a Canadian practitioner’s request for reciprocal recognition because he had engaged in the unauthorized practice of law in more than 50 cases before the USPTO over the span of more than a decade before seeking reciprocal recognition. Further, the applicant continued to prosecute trademark applications at the USPTO even after being informed that foreign attorneys are not permitted to practice before the USPTO, unless they are properly authorized Canadian attorneys.20

Registration as a patent practitioner before the USPTO generally does not itself entitle an individual to practice before the USPTO in trademark matters.21 In In re Seto, the respondent, who was a patent agent registered to practice before the USPTO, was suspended from practice before the USPTO for, among other things, engaging in the unauthorized practice of trademark law by assisting in the preparation of trademark applications, assisting with amendments to trademark applications, and receiving payment for assisting with the preparation of trademark applications and related submissions.22

What Constitutes the Practice of Trademark Law before the USPTO

The practice of law before the USPTO in trademark matters includes, but is not limited to, consulting with or giving advice to a client in contemplation of filing a trademark application or other document with the office; preparing and prosecuting an application for trademark registration; preparing an amendment that may require written argument to establish the registrability of the mark; and conducting an opposition, cancellation, concurrent use proceeding, or appeal to the TTAB.23 An individual who does not meet the requirements for practicing trademark law before the USPTO may not prepare an application, response, or other document to be filed in the USPTO; sign amendments, responses to office actions, petitions to the USPTO director, requests to change the correspondence address, or letters of express abandonment; authorize issuance of examiner’s amendments and priority actions; or otherwise represent an applicant, registrant, or party to a proceeding in the USPTO.24

Notwithstanding the above restrictions, a nonpractitioner employee of a qualified practitioner may work under the supervision of the practitioner to prepare documents for review and signature and assist the practitioner in trademark matters before the USPTO.25 If working with nonpractitioners, however, a qualified practitioner must ensure that he or she is not aiding in the unauthorized practice of law.26 In In re Jensen, the OED director issued a notice of reprimand against a practitioner because he directed a third-party company to file a trademark application and the employee at that company who prepared, signed, and filed the application was not an attorney.27 Because the respondent knew that the employee was not an attorney, the OED director found that the respondent knew or should have known that the employee’s actions constituted the unauthorized practice of law.28

Similarly, in In re Meyer, the respondent developed a business relationship with the company Trademarks to Go (TTG) and prepared trademark applications on behalf of clients referred to him by TTG, returned the completed applications to TTG for filing at the USPTO, and requested and received payment from TTG for having prepared the applications on behalf of the clients.29 After preparing the trademark applications, the respondent did not always adequately supervise the filing of the applications or monitor TTG’s activities. As it turned out, an employee at TTG who was not a lawyer had listed her name in the space denoted “Attorney” on at least 12 trademark applications, had signed responses to office actions or other documents filed for those applications, and had attempted to conduct one interview on behalf of a trademark applicant with a USPTO trademark examining attorney in another trademark application.30 The OED director issued a notice of public reprimand and probation to the respondent for having aided in the unauthorized practice of law, among other things.

USPTO Reporting Mechanisms for Violations

If a USPTO employee suspects that an individual is engaging in the widespread unauthorized practice of law by representing applicants or registrants, he or she should bring the matter to the attention of the Administrator for Trademark Policy and Procedure in the Office of the Deputy Commissioner for Trademark Examination Policy.31 The administrator will notify the USPTO staff accordingly, and the USPTO will send a written notice to the affected applicant or registrant.32

If an office action is outstanding and no response has been received, the examining attorney or post registration staff will issue a supplemental action, addressed to the applicant or registrant, that restates any outstanding refusals and/or requirements, includes a new six-month response period, and states that a response signed by the individual applicant or registrant, someone with legal authority to bind the applicant or registrant (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner must be submitted within the response period.33

If the TTAB becomes aware that an individual who is not entitled to practice before the USPTO in trademark cases is attempting to represent a client in a board proceeding, the board will similarly notify the individual that he or she is not entitled to do so.34 If the individual signs and files a submission on behalf of a client to a board proceeding, the submission will not be considered unless a new copy, signed by the party or by an authorized representative entitled to practice before the USPTO in trademark cases, is filed. No board correspondence intended for the party will be sent to that individual; rather, the board will send such correspondence to the party itself, or to the party’s attorney or other authorized representative entitled to practice before the USPTO in trademark cases.35 The board should also bring the unauthorized representative’s actions to the attention of the Chief Administrative Trademark Judge, who will coordinate appropriate action with the OED.36

Contact with USPTO Officials and Employees

Inter Partes Proceedings before the TTAB

In an adversarial proceeding, including an inter partes proceeding before the TTAB, a practitioner must not:

communicate, or cause another to communicate, as to the merits of the cause with a judge, official, or Office employee before whom the proceeding is pending, except:
(1) In the course of official proceeding in the cause.
(2) In writing if the practitioner promptly delivers a copy of the writing to opposing counsel or to the adverse party if the adverse party is not represented by a practitioner.
(3) Orally upon adequate notice to opposing counsel or to the adverse party if the adverse party is not represented by a practitioner.
(4) As otherwise authorized by law.37

The Trademark Trial and Appeal Board Manual of Procedure (TBMP) provides additional exceptions to the general prohibition on ex parte contact. TBMP section 105 provides that parties and attorneys may contact the board to inquire about the status of a case or ask general procedural information, but not to discuss the merits of a case or any particular issue. A party should not communicate with the board via e-mail unless specifically instructed by the board attorney to do so.38 Rather, a party should use the telephone for all procedural questions, status inquiries, or requests for phone conferences.39 Additionally, parties are prohibited from directly or indirectly attempting to influence board personnel by an offer of special inducement or promise of advantage or by improperly bestowing any gift, favor, or thing of value.40

A party or practitioner may contact the TTAB or interlocutory attorney responsible for a particular case to initiate a telephone conference hearing on a motion.41 The standard institution order for every inter partes proceeding instructs: “The parties must note that the Board allows them to utilize telephone conferences to discuss or resolve a wide range of interlocutory matters that may arise during this case.”42 The board encourages parties to request a phone conference “whenever, despite good faith efforts to resolve a dispute, they reach an impasse in regard to their conferencing obligation, disclosure requirements or discovery.”43 In fact, a telephone conference may be requested even before filing the underlying motion.44 The TTAB has made clear that complaints about an adversary’s ex parte contact with the board to request a telephone conference are generally unwarranted,45 provided that the initial contact is “limited to a simple statement of the nature of the issues proposed to be decided by telephone conference, with no discussion of the merits.”46

Regarding conduct during the telephone conference, the TTAB will not record the conference, nor may the parties record the contents of the telephone conference.47 Parties are also prohibited from engaging in “undignified or discourteous” conduct before the USPTO, including in communications with the board. Parties should conduct themselves with appropriate decorum during teleconferences and interruptions are to be avoided.48

In In re Tassan, the OED formally reprimanded an attorney for, among other things, making improper ex parte contact with the TTAB by leaving a series of voicemail messages for various judges and TTAB employees, including messages that contained a number of curse words and other unprofessional language.49 For two years after issuance of the final disciplinary order, the respondent was prohibited from communicating personally by telephone or in person with the TTAB with any matter in which he was representing a client, except for hearings before the board, and was ordered to complete a course of treatment for anger management.50

In addition to any disciplinary action, failure to comply with the USPTO’s guidelines regarding ex parte contact in adversarial TTAB proceedings can result in sanctions. For example, in Carrini Inc. v. Carla Carini S.R.L., the TTAB sanctioned both parties for their attorneys’ misconduct, including attempts to initiate ex parte contact with the board to discuss material issues in the case, by dismissing the case without prejudice.51 To the extent that a party is asserting a violation of a USPTO ethics rule, however, any such complaint should be brought to the OED director because the OED, not the TTAB, is charged with the enforcement of these rules.52

Prosecution of Application or Registration

During the prosecution of a trademark application, applicants and qualified practitioners may telephone or e-mail examining attorneys. However, such “informal” communications should be conducted “only if they serve to develop and clarify specific issues and lead to a mutual understanding between the examining attorney and the applicant.”53 Informal communications may not be used to request advisory opinions as to the likelihood of overcoming a substantive refusal or as a substitute for filing a formal response with arguments relating to a substantive refusal. Notably, an informal communication does not constitute a response to an outstanding office action and does not extend the deadline for a response.54

The Trademark Manual of Examining Procedure (TMEP) prohibits an examining attorney or other USPTO employee from discussing the merits of any particular application or registration with a third party. If a third party attempts to contact an examining attorney about an ex parte matter, either orally or in writing, the examining attorney should refer the third party to the Office of the Deputy Commissioner for Trademark Examination Policy.55

Duty of Candor and Disclosure and Fraud

There is a duty of candor and disclosure in practice before the USPTO.56 In certain cases, clear and convincing evidence of false statements of material fact made to or withheld from the USPTO, with an intent to deceive, may rise to a level of fraud, resulting in the refusal of registration or cancellation of an existing trademark registration.57 Although there are no published decisions on the subject, an attorney or authorized representative who makes such false statements, withholds material information from the USPTO, or fails to correct a misrepresentation once known may be subject to disciplinary action under USPTO regulations.58

In In re Bose Corp., the Court of Appeals for the Federal Circuit clarified that “a trademark is obtained fraudulently under the Lanham Act only if the applicant or registrant knowingly makes a false, material representation with the intent to deceive the [US]PTO.”59 The court recognized, among other things, that “[m]ere negligence is not sufficient to infer fraud or dishonesty,” and gross negligence may not “itself justify an inference of intent to deceive.”60 The court also held that fraud must be proven “to the hilt” by clear and convincing evidence, and that there is “no room for speculation, inference or surmise.”61

While intent to deceive and fraud may be more difficult to plead and prove post-Bose, this does not necessarily mean that misstatements before the USPTO can never amount to fraud. And although the question of whether a “reckless disregard of the truth” may constitute fraud is still open,62 under the proposed new USPTO Rules of Professional Conduct, “fraud” or “fraudulent” means:

conduct that involves a misrepresentation of material fact made with intent to deceive or a state of mind so reckless respecting consequences as to be the equivalent of intent, where there is justifiable reliance on the misrepresentation by the party deceived, inducing the party to act thereon, and where there is injury to the party deceived resulting from reliance on the misrepresentation.63

Further, some commentators have suggested that failure to read a filing or investigate the accuracy of declarations of use in commerce could amount to a “reckless disregard of the truth” and fraud.64

In any event, the USPTO’s regulations governing conduct before the USPTO already require an “inquiry reasonable under the circumstances” to confirm that “allegations and other factual contentions have evidentiary support.”65 As such, a client’s fraudulent activities could have ethical implications for a practitioner in certain circumstances. Indeed, the TTAB has observed that a practitioner and client “share the duty” to avoid fraud,66 and a practitioner has a duty to advise the client of candor toward the USPTO and to seek the client’s cooperation to meet that obligation.67 Similarly, a practitioner has a duty to seek out facts supporting or controverting statements made before the USPTO, and to be satisfied that such statements are accurate, contain evidentiary support, and are supported by prevailing law.68 If an application or other papers filed before the USPTO contain misstatements made by the applicant or registrant, and the practitioner is aware of them but takes no action to correct the misstatements, the practitioner may be subject to disciplinary action and/or sanctions.69 Thus, the rules provide that if a practitioner receives information clearly establishing that a client has, in the course of representation, perpetrated a fraud upon the USPTO, the practitioner “shall promptly call upon the client to rectify the same, and if the client refuses or is unable to do so the practitioner shall reveal the fraud to the [USPTO].”70

Withdrawal from Representation

If a practitioner believes that the client has engaged in fraudulent conduct before the USPTO, and/or the practitioner’s efforts to call upon the client to rectify the fraud have been refused, the practitioner may seek to withdraw from representation under 37 C.F.R. § 10.40. This section provides for mandatory withdrawal when the “practitioner knows or it is obvious that the practitioner’s continued employment will result in violation of a Disciplinary Rule.”71 Further, it allows permissive withdrawal from representation if the practitioner’s client “[i]nsists that the practitioner pursue a course of conduct that is illegal or that is prohibited under a Disciplinary Rule.”72

The USPTO and/or the TTAB will generally grant a request to withdraw from representation provided that it includes: (1) a statement of the reason(s) for the request to withdraw; (2) a statement that the attorney has given due notice to the applicant or registrant that the attorney is withdrawing from employment and will be filing the necessary papers with the office (and in ex parte prosecution, that the applicant must be given notice of the withdrawal at least two months before the expiration of the response period); (3) a statement that the attorney has delivered to the applicant or registrant all papers and property in the attorney’s file concerning the prosecution of the application or registration, and returned any advanced fees that remain unearned; (4) a statement that the attorney notified the applicant or registrant of any responses that may be due and the deadline for response; and (5) in inter partes cases, proof of service of the request upon the client and upon every other party to the proceeding.73

The TTAB has warned that, “[a]ll too often, attorneys break with their clients and fail to file requests to withdraw.”74 This is problematic because counsel of record, whether of record because appointed by a power of attorney in an application or through the filing of a pleading (i.e., notice of opposition, petition for cancellation, answer to petition), remains of record and is responsible for safeguarding the client’s interests unless counsel seeks, and is granted, leave to withdraw.75

Signatures, Certifications, and Duty to Make Reasonable Inquiry

All documents filed at the USPTO and each piece of correspondence filed by a practitioner “must bear a signature, personally signed or inserted by such practitioner.”76 By signing, filing, submitting, or advocating any paper before the USPTO, a practitioner or nonpractitioner is certifying that:

(1) All statements made therein of the party’s own knowledge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, or knowingly and willfully makes or uses any false writing or document knowing the same to contain any false, fictitious, or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001, and any other applicable criminal statute, and violations of the provisions of this section may jeopardize the probative value of the paper; and
(2) To the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances,
(i) The paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of any proceeding before the Office;
(ii) The other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;
(iii) The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and
(iv) The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.77

This rule is based on Federal Rule of Civil Procedure 11 and imposes the same obligations on practitioners and nonpractitioners. Several courts have held that the duty to make a reasonable inquiry under Rule 11 “requires counsel to read and consider before litigating.”78 Any violation of the rule by a practitioner may result in disciplinary action.79 Any violation by a practitioner or nonpractitioner may jeopardize the validity of a trademark application or registration, and result in sanctions deemed appropriate by the USPTO director, hearing officer, or an administrative law judge, including:

 

  1. Striking the offending paper;
  2. Referring a practitioner’s conduct to the OED director for appropriate action;
  3. Precluding a party or practitioner from submitting a paper, or presenting or contesting an issue;
  4. Affecting the weight given the offending paper; or
  5. Terminating the proceedings in the USPTO.80

 

Documents filed through ESTTA, the TTAB’s electronic filing system, do not require a conventional signature.81 Electronic signatures are required for electronic filings.82 The party or its representative enters a “symbol” that has been adopted as a signature. For documents filed via ESTTA, the electronic signature entered on the ESTTA form is sufficient as the required signature for the entire submission. The electronic filing cover sheet in ESTTA must be signed by the party filing it, the party’s attorney, or another authorized representative, as appropriate.83

Conclusion

Although the USPTO’s ethics rules and regulations are modeled after the ABA’s Model Code, they take on new meaning for trademark practitioners when viewed in the context of the USPTO’s practice guidelines in the TBMP and TMEP and the relevant case law. Accordingly, to avoid ethical pitfalls, it is imperative that trademark practitioners familiarize themselves with not only their state ethics regulations, but also those unique to the practice of trademark law before the USPTO.

Endnotes

1. The USPTO has proposed an update to its Code of Professional Responsibility to conform, in many respects, to the ABA Model Rules of Professional Conduct. The notice of proposed rulemaking was published October 18, 2012, and the comment period closed December 17, 2012. If adopted, it does not appear that the proposed rules package will substantively change any of the ethical obligations of trademark practitioners discussed in this article.

2. The canons are “statements of axiomatic norms, expressing in general terms the standards of professional conduct expected of practitioners in their relationships with the public, with the legal system, and with the legal profession.” In contrast, the disciplinary rules are “mandatory in character and state the minimum level of conduct below which no practitioner can fall without being subjected to disciplinary action.” 37 C.F.R. § 10.20.

3. Id. §§ 11.2(b)(4), 11.22(a).

4. Id. §§ 11.22(h)(3), 11.23.

5. Id. § 11.23(b)(1).

6. Id. § 11.32.

7. Id. §§ 11.38, 11.39(a).

8. Id. § 11.49.

9. Id. § 11.20(a)(1)–(4).

10. Id. § 11.59(a).

11. U.S. Patent & Trademark Office, Trademark Manual of Examining Procedure (TMEP) § 602 (Oct. 2012) (citing 37 C.F.R. § 11.14).

12. U.S. Patent & Trademark Office, Trademark Trial and Appeal Board Manual of Procedure (TBMP) §§ 114.01–.02 (3d ed. Rev. 1, June 2012).

13. 37 C.F.R. § 11.14(a).

14. Id. § 11.1.

15. In re Shippey, No. D2012-02 (Dir. of U.S. Pat. & Trademark Off. June 11, 2012).

16. Id.; see also In re Karasik, No. D2011-58 (Dir. of U.S. Pat. & Trademark Off. Feb. 15, 2012).

17. 37 C.F.R. § 11.14(c).

18. TMEP, supra note 11, § 602.03; TBMP, supra note 12, § 114.05.

19. In re [redacted], Decision on Petition under 37 C.F.R. § 11.2(d) (Dir. of U.S. Pat. & Trademark Off. July 15, 2009), available at http://e-foia.uspto.gov/Foia/ReterivePdf?system=OED&flNm=0563_MOR_2009-07-15. Other factors include whether the applicant has engaged in financial mismanagement or been convicted for possession and use of controlled substances. Id.

20. Id.

21. 37 C.F.R. § 11.14(a), (b).

22. In re Seto, No. D2009-38 (Dir. of U.S. Pat. & Trademark Off. Aug. 2, 2010).

23. 37 C.F.R. § 11.5(b)(2).

24. See TMEP, supra note 11, § 611.03–.03(i) (regarding signature of documents filed in the USPTO).

25. 37 C.F.R. § 11.5(b).

26. Id. § 10.47 (prohibiting practitioners from aiding a nonpractitioner in the unauthorized practice of law before the USPTO, a suspended or excluded practitioner in the practice of law before the USPTO, and a nonlawyer in the unauthorized practice of law).

27. In re Jensen, No. D2009-46 (Dir. of U.S. Pat. & Trademark Off. Feb. 18, 2010).

28. Id.

29. In re Meyer, No. D2010-41 (Dir. of U.S. Pat. & Trademark Off. Sept. 7, 2011).

30. Id.

31. TMEP, supra note 11, § 608.01.

32. Id. § 608.02.

33. Id.

34. TBMP, supra note 12, § 114.06.

35. Id.

36. Id. § 117.08.

37. 37 C.F.R. § 10.93(b).

38. TBMP, supra note 12, § 105; Gerard Rogers, Ellen Seeherman & Cheryl Butler, TTAB, Inter Partes Proceedings at the TTAB: Advanced Practice Tips 5 (Oct. 2012) [hereinafter TTAB Advanced Practice Tips], available at http://home.comcast.net/~jlw28129/Inter%20Partes%20Proceedings%20at%20the%20TTAB.pdf.

39. TTAB Advanced Practice Tips, supra note 38, at 5.

40. 37 C.F.R. § 10.23(c)(4)(ii)–(iii).

41. Id. § 2.120(i)(1).

42. TTAB Advanced Practice Tips, supra note 38, at 21.

43. Id.; see Promgirl, Inc. v. JPC Co., 94 U.S.P.Q.2d 1759 (T.T.A.B. 2009) (noting that “it is always preferable to involve the Board”).

44. TBMP, supra note 12, § 502.06(a).

45. TTAB Advanced Practice Tips, supra note 38, at 25.

46. TBMP, supra note 12, § 502.06(a).

47. Id.

48. Id.; see 37 C.F.R. § 10.89(a).

49. In re Tassan, No. D2003-10 (Dir. of U.S. Pat. & Trademark Off. Sept. 8, 2003).

50. Id.

51. 57 U.S.P.Q.2d 1067, 1073 (T.T.A.B. 2000).

52. See Mrs. U.S. Nat’l Pageant, Inc. v. Richardson, No. 91165290, 2009 TTAB LEXIS 118, *4 (T.T.A.B. Mar. 5, 2009).

53. TMEP, supra note 11, § 709.05.

54. Id.

55. Id. § 1806.

56. See 37 C.F.R. § 10.23(b)(4), (c)(2)(ii); Aromatique, Inc. v. Gold Seal, Inc., 28 F.3d 863, 877 (8th Cir. 1994) (holding that a trademark applicant owes a duty of candor to the USPTO); Yocum v. Covington, 216 U.S.P.Q. 210, 216 (T.T.A.B. 1982).

57. See 15 U.S.C. § 1064(3); In re Bose Corp., 580 F.3d 1240, 1244–45 (Fed. Cir. 2009).

58. See, e.g., 37 C.F.R. §§ 10.23(b)(4), (c)(2)(ii), (c)(15), 10.85(b)(1).

59. 580 F.3d at 1243, 1245.

60. Id. at 1244 (alteration in original).

61. Id. at 1243; see also Woodstock’s Enters. Inc. (Cal.) v. Woodstock’s Enters. Inc. (Or.), 43 USPQ2d 1440, 1443–44 (T.T.A.B. 1997).

62. See DaimlerChrysler Corp. v. Am. Motors Corp., 94 U.S.P.Q.2d 1086, 1086 n.5 (T.T.A.B. 2010).

63. See Changes to Representation of Others before the United States Patent and Trademark Office, 77 Fed. Reg. 64,189, 64,202 (proposed Oct. 18, 2012) (to be codified at 37 C.F.R. § 11.1) (emphasis added), available at https://www.federalregister.gov/articles/2012/10/18/2012-25355/changes-to-representation-of-others-before-the-united-states-patent-and-trademark-office.

64. See Brief of Amicus Curiae American Intellectual Property Law Association in Support of Bose Corporation and Reversal at 12–14, Bose Corp. v. Hexawave Inc., 88 U.S.P.Q.2d 1332 (T.T.A.B. 2007) (No. 91157315).

65. 37 C.F.R. § 11.18(b)(2)(iii).

66. Hachette Filipacchi Presse v. Elle Belle LLC, 85 U.S.P.Q.2d 1090, 1094 (T.T.A.B. 2007) (finding that “respondent and its attorney shared the duty to ensure the accuracy of the application and the truth of its statements”).

67. See id.; 37 C.F.R. § 10.23(c)(2)(ii).

68. See id. § 11.18(b)(2)(iii).

69. Id. §§ 10.23, 11.18; see Lipman v. Dickinson, 174 F.3d 1363, 1372 (Fed. Cir. 1999) (finding that a practitioner’s participation in a material way in preparing and filing a petition with the USPTO director that relied on affidavits he knew could not be used for any purpose was a violation of USPTO Code); cf. M.C.I. Foods, Inc. v. Bunte, 96 U.S.P.Q.2d 1544 (T.T.A.B. 2010) (finding that although party filed an application that listed goods on which the mark was not yet used, there was no fraud because the party had relied on the advice of counsel in filing the application and there was no evidence of an actual or implied intent to deceive the USPTO by the client; no allegation of attorney misconduct was raised in the case).

70. 37 C.F.R. § 10.85(b)(1).

71. Id. § 10.40(b)(2).

72. Id. § 10.40(c)(1)(iii).

73. Id. § 2.19(b).

74. TTAB Advanced Practice Tips, supra note 38, at 7.

75. Id.

76. 37 C.F.R. § 11.18(a).

77. Id. § 11.18(b).

78. See, e.g., U.S. Bank Nat’l Ass’n, N.D. v. Sullivan-Moore, 406 F.3d 465, 470 (7th Cir. 2005).

79. 37 C.F.R. § 10.23(c)(15).

80. 5 U.S.C. § 3105; 37 C.F.R. § 11.18(c).

81. TBMP, supra note 12, § 106.02.

82. 37 C.F.R. § 2.193(c).

83. TBMP, supra note 12, § 106.02.