Category Archives: Firm News

Trademark Attorney Ethics – A Recap of ABA IPL Spring Panel Discussion with OED Director

by Christina Frangiosa

Several months ago, I moderated a CLE presentation for the ABA IPL Section’s IPL SPRING conference (see p. 7 of conference brochure) in Washington, D.C. on “Ethics at the USPTO“.  The then-current Director of the USPTO’s Office of Enrollment and Discipline, Kimberly C. Kelleher, was our featured speaker, and we spent the entire session exclusively on ethics in the practice of trademark law before the USPTO.

This article begins a series on Ethics for Trademark Attorneys, using recent disciplinary opinions published by OED that impose sanctions on trademark attorneys for various missteps.  These opinions provide strong examples of conduct that trademark attorneys should avoid at all costs.  In some cases, one can very much appreciate how a less-experienced attorney (or someone who does not practice in this area routinely) might fall into some of the traps described in these opinions – but these fact patterns are not unique to newer attorneys or non-specialists, and we can all take away some tips from these decisions.

Governing Rules

As a starting point, note that the USPTO’s Rules of Practice (found in 37 CFR – including Part 2 and Part 11) apply to trademark attorneys – even though we trademark attorneys are not expressly “admitted to practice” before the USPTO in trademark matters and whether or not we are aware they apply.  See, e.g., 37 CFR § 11.5(b). It’s enough that we are admitted to practice in the highest court(s) of our states and that we provide advice to clients in trademark matters.  Id. § 11.5(b)(3) (“Practice before the Office in trademark matters”).  Some trademark attorneys miss this fact, and mistakenly believe that OED’s oversight is limited to patent attorneys (who have taken and passed a specific bar exam, and know that they are bound by the USPTO’s Rules).  Note that if you ever receive a Request for Information from the OED as a trademark practitioner, you are required to cooperate with the Request and can be sanctioned for failure to respond. See 37 C.F.R § 11.801(b).

Moreover every time an attorney submits any “paper” to the USPTO, that attorney is expressly certifying that the factual contentions or denials have evidentiary support, to the best of the attorney’s knowledge, information and belief, “formed after an inquiry reasonable under the circumstances,” are supported by legal authority and have not been presented for any improper purpose.  37 C.F.R. § 11.18(b)(2) (emphasis added).

Common Themes

To get ready for this session, I read many of the recent Final Orders appearing on the OED’s FOIA Reading Room (which generally covers both patent and trademark practices), beyond the specific cases that we were planning to discuss during this session.  (The cases we discussed during this session are identified in the slides.)

Universally, these opinions describe in great detail the attorney’s conduct that led to the OED’s sanction decision.  While the Rules authorize a variety of sanctions, ranging from public reprimand, probation, suspension and/or exclusion from practice (see 37 C.F.R. § 11.54(a)(2) (“Initial Decision of Hearing Officer”)), in most of these cases, the sanctioned attorney was either publicly reprimanded or suspended for a specific period of time from representing others before the USPTO in connection with trademark matters , followed by varying probationary periods. The results of these lengthy investigations are reflected in the stipulated statement of facts in these opinions, which outlined the mistakes attorneys admitted they made or, in a few cases where the attorney refused to respond (and thus was subject to default) recounted the evidence that was amassed by OED, which was accepted as if proven.

Common themes running through these opinions include:

  • Signature violations (such as typing in someone else’s electronic signature on their behalf – or allowing/instructing someone else to type your signature for you);
  • Failure to properly supervise non-attorney support staff or sponsoring personnel outside of your supervisory authority;
  • Failure to carefully review draft documents prepared by others before submission to the USPTO;
  • Improperly sharing login credentials for MyUSPTO accounts; and
  • “Renting” your attorney license to foreign actors (a variation of improper sharing of login credentials).

Clear “Red Flags”

During this session, we also discussed some clear “red flags” highlighted in these opinions about which we should all be aware (and should avoid): (1) being asked by a foreign employer/client to take over as attorney of record for a large volume of applications on behalf of a large number of individual applicants/registrants, all at once; (2) being asked to sponsor USPTO.gov filing accounts on behalf of someone outside your firm (perhaps under the guise of providing you with a “convenience” or a “time-saving” promise), especially if these account holders are located overseas; and (3) other cold solicitations offering seemingly “too good to be true” business opportunities and promising that if you “just agree” to their terms of engagement, you’d be immediately in charge of a large book of business under your name, representing a routine source of revenue.

These may seem like appealing offers – and they might seem like legitimate “foreign associate” relationships that you may have heard other trademark attorneys describe. Especially if you are a newer attorney under pressure to develop your own book of business quickly. But more than one enterprising attorney has been duped by these promises, and participating in these schemes can result in a public reprimand, a temporary suspension or exclusion from practice before the USPTO (37 C.F.R § 11.22(h) or § 11.27) – or even the reporting of any resulting disciplinary action to the attorney licensing board of your own state. Id. § 11.59 (“… Unless otherwise ordered by the USPTO Director, the OED Director shall give notice of public discipline and the reasons for the discipline to disciplinary enforcement agencies in the State where the practitioner is admitted to practice, to courts where the practitioner is known to be admitted, and the public. …”) (emphasis added).

Some Specific Recommendations from the Stage

Here are some of the recommendations that were suggested during the panel discussion (see Slide 24):

  • When you undertake the ID.me verification process to confirm your identity – required as an initial step in order to set up a MyUSPTO account – use a personal email address, over which you exercise control regardless of your employment status.  Your MyUSPTO account should be linked to the email address under which you practice trademark law (including an email address controlled by your employer), but your ID.me verified account is personal to you, based on your government-issued ID, and is relied upon by several government agencies (including the IRS, Veterans’ Affairs and the Social Security Administration) to prove that you are who you say you are. (If you verified an ID.me account through an email that is not under your control – including those held by former employers – notify the USPTO and ID.me as soon as possible to correct this.)
  • Do not give your MyUSPTO.gov filing credentials to others.  Any submissions under your MyUSPTO account login will count as your Rule 11 signature and should be secured against unauthorized use by others.
  • Know the rules for sponsoring accounts.  Don’t sponsor accounts for personnel whom you don’t actually supervise.  Remove any sponsorship immediately if any such sponsored employees leave the firm/company – or if you leave that firm where they remain.  While sponsorships are active under your account, you will be responsible for all actions taken by these sponsored personnel.
  • Actively monitor your MyUSPTO account and periodically search the USPTO’s records for all filings under your name so that you can take appropriate action if someone purports to file an unauthorized document on your behalf which you did not actually review and approve before filing.

Other Resources

In many of the attorney disciplinary actions, the OED provided a list of other attorney disciplinary decisions impacting trademark attorneys, including signature violations, failure to supervise, failure to review filings with sufficient attention prior to submission, improper sponsorship of non-attorney support staff, and improperly sharing USPTO.gov credentials.  Below is the long version, excerpted from In re Carlo Nardone, Proceeding No. D2025-32 at 12-13 (May 20, 2026 Final Order):

  • In re Erik B. Jensen, Proceeding No. D2009-46 (Feb. 18, 2010 Final Order)
  • In re Allen A. Meyer, Proceeding No. D2010-41 (Sep. 7, 2011 Final Order)
  • In re Shia, Bang-er, Proceeding No. D2010-41 (April 22, 2015 Initial Decision)
  • In re Shia, Bang-er, Proceeding No. D2010-41 (Mar. 4, 2016 Final Order)
  • In re Shia, Bang-er, Proceeding No. D2010-41 (Aug. 1, 2016 Order on Reconsideration)
  • In re Matthew Swyers, Proceeding No. D2016-20 (Jan. 26, 2017 Final Order)
  • In re Reyner Meikle, Proceeding No. D2019-17 (Mar. 21, 2019 Final Order)
  • In re Travis Crabtree, Proceeding Nos. D2018-31 & D2018-47 (Apr. 25, 2019 Final Order)
  • In re Heather Sapp, Proceeding No. D2019-31 (May 15, 2019 FinaI Order)
  • In re Deborah Sweeney, Proceeding No. D2019-33 (June 19, 2019 Final Order)
  • In re Anita Mar, Proceeding No. D2019-11 (Aug. 2, 2019 Final Order)
  • In re Renuka Rajan, Proceeding No. D2019-30 (Sep. 5, 2019 Final Order)
  • In re Thomas Carwin Caraco, Proceeding No. D2019-50 (Sep. 12, 20 l 9 Final Order)
  • In re Lenise Williams, Proceeding No. D2019-23 (Sep. 20, 2019 Final Order)
  • In re Charles Caldwell II, Proceeding No. D2020-12 (Mar. 17, 2020 Final Order)
  • In re Jamie Bashtanyk, Proceeding No. D2020-09 (Apr. 17, 2020 Final Order)
  • In re Yiheng Lou, Proceeding No. D2021-04 (May 12, 2021 Final Order)
  • In re Andrei Mincov, Proceeding No. D2020-30 (Aug. 23, 2021 Final Order)
  • In re Devasena Reddy, Proceeding No. D2021-13 (Sep. 9, 2021 Final Order)
  • In re Bennett David, Proceeding No. D2021-08 (Sep. 24, 2021 Final Order)
  • In re Di Li, Proceeding No. D2021-16 (Oct. 7, 2021 Final Order)
  • In re Tony C. Hom, Proceeding No. D2021-10 (Dec. 17, 2021 Final Order)
  • In re Elizabeth Yang, Proceeding No. D2021-11 (Dec. 17, 2021 Final Order)
  • In re Elizabeth Pasquine, Proceeding No. D2019-39 (Aug. 13, 2021 Initial Decision)
  • In re Elizabeth Pasquine, Proceeding No. D2019-39 (Mar. 28, 2022 Final Order)
  • In re Yi Wan, Proceeding No. D2022-04 (Apr. 1, 2022 Final Order)
  • In re Jonathan Morton, Proceeding No. D2022-07 (Apr. 20, 2022 Final Order)
  • In re Kathy Hao, Proceeding No. D2021-14 (Apr. 27, 2022 Final Order)
  • In re Weibo Zhang, Proceeding No. D2022-16 (July 11, 2022 Final Order)
  • In re Daoyou Liu, Proceeding No. D2022-03 (Aug. 9, 2022 Final Order)
  • In re Zhihua Han, Proceeding No. D2022-23 (Jan. 6, 2023 Final Order)
  • In re Jingfeng Song, Proceeding No. D2023-10 (May 1, 2023 Final Order)
  • In re Kevin R. Gallagher, Proceeding No. D2023-28 (June 23, 2023 Final Order)
  • In re Puja Jabbour, Proceeding No. D2023-33 (Sep. 6, 2023 Final Order)
  • In re Jing Wang, Proceeding No. D2023-38 (Nov. 21, 2023 Final Order)
  • In re Yue Niu, Proceeding No. D2023-32 (Jan. 3, 2024 Final Order)
  • In re Grace Lee Huang, Proceeding No. D2023-37 (Jan. 8, 2024 Final Order)
  • In re Ryan A. Bethell, Proceeding No. D2019-42 (Nov. 20, 2023 Initial Decision)
  • In re Ryan A. Bethell, Proceeding No. D2019-42 (Jan. 27, 2024 Final Order)
  • In re Francis Koh, Proceeding No. D2024-07 (Feb. 7, 2024 Final Order)
  • In re Che-Yang Chen, Proceeding No. D2024-01 (Mar. 20, 2024 Final Order)
  • In re Julian A. Haffner, Proceeding No. D2023-35 (May 21, 2024 Final Order)
  • In re Harrison B. Oldham, Proceeding No. D2024-11 (May 29, 2024 Final Order)
  • In re Wayne Harper, Proceeding Nos. D2020-10 & D2024-15 (Aug. 13, 2024 Final Order)
  • In re Lan Yu, Proceeding No. D2024-24 (Aug. 20, 2024 Final Order)
  • In re Ruth K. Khalsa, Proceeding No. D2019-38 (Sep. 5, 2024 Final Order)
  • In re Weitao Chen, Proceeding No. D2024-21 (Sep. 11, 2024 Final Order)
  • In re Alexis Campbell, Proceeding No. D2019-41 (Oct. 10, 2024 Final Order)
  • In re Jie Luo, Proceeding No. D2024-02 (Oct. 25, 2024 Final Order)
  • In re Qinghe Liu, Proceeding No. D2023-39 (Nov. 21, 2024 Final Order)
  • In re Angus Ni, Proceeding No. D2024-20 (Dec. 19, 2024 Final Order)
  • In re Afamejima Okeke, Proceeding No. D2024-18 (Jan. 6, 2025 Final Order)
  • In re Nyall S. Engfield, Proceeding No. D2025-12 (Mar. 10, 2025 Final Order)
  • In re Shan Zhu, Proceeding No. D2024-19 (Mar. 18, 2025 Final Order)
  • In re Phillip T. Horton, Proceeding No. D2025-15 (Mar. 20, 2025 Final Order)
  • In re Andrew S. Rapacke, Proceeding No. D2025-16 (Mar. 20, 2025 Final Order)
  • In re Hao Ni, Proceeding No. D2025-14 (Mar. 31, 2025 Final Order)
  • In re Curtis Ray Hussey, Proceeding No. D2025-19 (May 14, 2025 Final Order)
  • In re Xiaofang Zhong, Proceeding No. D2025-18 (May 21, 2025 Final Order)
  • In re Evelyn Ufomadu, Proceeding No. D2025-20 (June 25, 2025 Final Order)
  • In re Maria G. Worley, Proceeding No. D2025-11 (Aug. 14, 2025 Final Order)
  • In re Timothy Tiewei Wang, Proceeding No. D2025-21 (Aug. 22, 2025 Final Order)
  • In re Tamar Toledano, Proceeding No. D2025-07 (Sep. 3, 2025 Final Order)
  • In re Zhuojingwen Tian, Proceeding No. D2025-05 (Sep. 29, 2025 Initial Decision)
  • In re Bentley J. Olive, Proceeding No. D2026-03 (Nov. 20, 2025 Final Order)
  • In re Benjamin Alan Balser, Sr., Proceeding No. D2025-30 (Dec. 19, 2025 Final Order)
  • In re Kevin Patrick O ‘Keefe, Proceeding No. D2026-07 (Jan. 29, 2026 Final Order)
  • In re Michael L. Bartholomew, Proceeding No. D2026-17 (Mar. 19, 2026 Final Order)

Next in Series

Future articles will delve deeper into each of the common themes we discussed during this panel (although, they will also address decisions issued after our presentation), and provide concrete recommendations for avoiding ethical missteps.  Next time, we’ll cover “signature violations.”

PSB&N Trademark Practice Group Launches New Web Site and Blog

by Christina Frangiosa


The PSB&N Trademark and Copyright group has just launched its new website and blog, with an eye toward providing an information source on recent developments in the trademark, copyright and unfair competition fields. Of particular note are the primers describing the trademark application process in the U.S. and in foreign markets. Bios for the group and the site contributors are available. The group’s blog, Beyond Confusion, can be separately accessed and you can subscribe directly to receive updates as they become available.

And, yes, this is my firm and my department, so I’m personally quite pleased about the new site. We hope you’ll visit.

Top 10 Ways to Preserve Your Trademarks

by Christina Frangiosa

On Friday (April 16), during the Pennsylvania Bar Institute‘s Fourth Annual IP Institute, I delivered a presentation on Top 10 Ways to Preserve Your Trademark, co-presented with Rex A. Donnelly of RatnerPrestia in its Wilmington, DE office.

I will be uploading both the article and PowerPoint presentation that we co-developed to my firm’s web site as quickly as feasible, and you are welcome to review them there. In sum, however, the topics we covered were:

  1. Choose a Mark You Can Protect
  2. Register Your Mark
  3. Be Truthful with the Trademark Office
  4. Keep Using Your Mark
  5. Maintain Your Registration
  6. Update Your Protection
  7. Use Your Mark Correctly
  8. Make Sure Others Use Your Mark Correctly
  9. Police for Infringement and Dilution
  10. License Your Mark Wisely

(I had responsibility for topics 3,4,5,7 and 9 – and wrote the sections for topics 3,4,6,7 and 9 in the article (Mr. Donnelly and I swapped topics 5 and 6 the morning of our presentation)). I also attended many of the presentations by my colleagues, and was particularly impressed with the “Mock” hearings (Mock Markman Hearing, Mock Preliminary Injunction Argument, Mock TTAB Cancellation Hearing), which were all presided over by judges currently sitting on the bench. I hope the course planners expand those sessions to additional topics next year.

I welcome your comments.

UPDATE on 5/7/10: The published article and the accompanying slides are now available on my firm’s web site. The direct links are here: “Top 10 Ways to Preserve Your Trademark,” Pennsylvania Bar Institute’s Fourth Annual IP Institute (April 16, 2010), co-written with Rex A. Donnelly of RatnerPrestia – (with presentation slides).

Fraud on the PTO – A Trademark Perspective

by Christina Frangiosa

Last Friday (April 9), during the American Bar Association Intellectual Property Law Section conference, I delivered a presentation on Trademark Prosecution Ethics, and in particular, the history and current status of the fraud in the procurement theory used to cancel registrations (or oppose applications) when material misrepresentations have been made to the Patent & Trademark Office during the application or renewal process.

I plan to upload both my article and my PowerPoint presentation to my firm’s web site as quickly as feasible, and you are welcome to review them there. In sum, however, my conclusions were as follows:

“While the test for determining that an applicant’s or registrant’s conduct in filing an application or maintaining trademark registrations was fraudulent has become more stringent, applicants, registrants and their counsel still face some pitfalls in the process. Indeed, although certain amendments of an inaccurate filing may be accepted (provided that no challenge to the validity of the application or registration has yet been filed), it is clear that both the TTAB and the Federal Circuit discourage carelessness in preparing these filings.

Accordingly, applicants and registrants are strongly encouraged to do at least the following to avoid increasing the risk of claims or counterclaims of fraud on the USPTO, and thus, loss of a pending application or a particular registration:

  • Conduct appropriate due diligence to ensure that the marks sought to be registered (or renewed) qualify as “in use” or validly subject to the “intent to use” process;
  • Ensure that the intended signatory for the declaration has the appropriate level of personal knowledge to support the allegations of use or intent to use, exclusive right to use the mark and other averments of fact;
  • Ensure that any licensees upon whose use the applicant/registrant will rely to maintain the registration properly use the mark in commerce and provide sufficient evidence to the applicant/registrant to support the maintenance filing; and
  • Undertake proper due diligence before filing an Opposition or Cancellation proceeding to ensure that the trademark or service mark forming the basis of a challenge to another application or registration does not have any exposure to a counterclaim for fraud on the USPTO and thus at risk for cancellation during the pendency of the proceeding.

Note that undertaking these preparations cannot completely moot claims of fraud on the USPTO, but they lend support and reasonableness to a potential response that no “intent to deceive” can be demonstrated by clear and convincing evidence. Finally, this entire line of cases confirms that the USPTO, TTAB and Federal Circuit Court of Appeals have strong interests in ensuring that the trademark Register be kept current and accurate, and demonstrates a disfavor of carelessly filed and unreliable factual statements about the use or non-use of trademarks and services marks in active use in U.S. commerce.

I welcome your comments.

UPDATE on 4/20/10: The slides from the presentation can be found on the ABA’s IPL Section site.

UPDATE on 5/7/10: The published article and the accompanying slides are now available on my firm’s web site. The direct links are here: “Ethics in Trademark Application Prosecution: Alleging ‘Fraud in the PTO’ After In re Bose,” ABA Intellectual Property Law Section 25th Annual Conference (April 9, 2010) – (with presentation slides).