Category Archives: Prosecution

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.”

USPTO Schedules Listening Session on Duration of Attorney Recognition

by Christina Frangiosa

On Tuesday, September 26, 2023 at 2pm Eastern, the USPTO will hold a Public Listening Session regarding one of the remaining portions of the Trademark Modernization Act that has not yet been implemented: the duration of the USPTO’s recognition that an attorney represents an applicant/registrant for purposes of communications regarding the client’s trademark records.  Changes to Duration of Attorney Recognition; Notice of Public Listening Session and Request for Comments, 88 Fed. Reg. 54305 (Aug. 10, 2023) (PDF version) (the “Notice”).

Interested parties had until September 22, 2023 (updated from Sept. 18) to advise the USPTO that they’d like to present at the Listening Session, currently scheduled in the Clara Barton Auditorium at the USPTO on September 26, 2023 between 2pm and 3:30pm EST.  Seating is limited if you’re planning to attend in person, but the session will be simulcast (advanced registration was required by Sept. 22, whether you planned to attend in person or virtually).  Written comments will be accepted through October 6, 2023 through the comment portal. Id. Continue reading …

USPTO Proposes New Trademark Filing Fees and Requests Public Comment

by Christina Frangiosa

On May 8, 2023, USPTO Director Kathi Vidal submitted to the Trademark Public Advisory Committee (“TPAC”) the USPTO’s proposed revisions to its trademark prosecution and TTAB fee tables.  The USPTO’s Fee Setting and Adjustment page has been updated to include Director Vidal’s Letter (“Letter”), the full Table of Proposed Fee Adjustments (“Fee Table”), Executive Summary, Background Information and a table comparing Current, Proposed and Unit Costs embedded in trademark fees (“Unit Costs”).  The proposed increases in these trademark fees resulted from the USPTO’s “comprehensive trademark fee review” and were deemed necessary “to increase aggregate revenue and refine certain fees to efficiently finance ongoing operations.” See Letter at 1. Continue reading …

What to Expect from the U.S. Trademark Application Process

by Christina Frangiosa

[Updates an earlier Post from December 30, 2015]

So, you’ve decided to launch a brand name in the U.S. and are contemplating registering it in the U.S. Patent & Trademark Office (“USPTO”).  What can you expect?  Not every application is the same, so there will be variations in exactly what happens in the prosecution of your application, but hopefully this article will serve as a “Trademark 101 Primer” to describe the basic process overall.  (Note – this post is for general information purposes only and does not provide any specific legal advice.  Contact your trademark attorney to discuss any areas of specific concern.)

Basics

What is a Trademark?  It’s a word, phrase, symbol or design, or a combination of words, phrases or designs, that identifies and distinguishes the source of the goods of one party from those of others.  A service mark performs the same function as a trademark, but applies to the source of a service rather than of a product.  (For simplicity, this post refers to trademarks and service marks collectively as “trademarks.”)

How Valuable is a Good Trademark?  The value of a good trademark lies in its ability to convey to the public a single source of a particular good or service.  The key is to develop a mark unique enough that customers associate it with your goods or services – and only your goods and services.  While temptingly simple, choosing a mark that just describes your goods and services will not create any trademark value.  Customers won’t know to distinguish your goods from others in the same market.  Instead, pick something that’s arbitrary, or otherwise completely unique.  Even coin a new word or phrase as the new brand for your goods or services.  Avoid choosing words with simple dictionary meanings, which you might be planning to use exactly as they are defined – because the risk is that you may be selecting a generic term, which can never develop any trademark meaning.

Can Rights Develop Based on Use?  Federal registration is not a requirement to protect trademarks in the U.S. – instead, rights in a particular trademark can be established simply based on use in connection with particular goods or services in the marketplace (aka “common law trademark rights”).  Nevertheless, federal registration offers more comprehensive protection than reliance upon common law rights, including providing nationwide notice of the owner’s claim to the mark and some other valuable presumptions. Continue reading …

New Response Deadlines for Trademark Office Actions on the Horizon (and Changes to Attorney Recognition)

by Christina Frangiosa

Revised November 14, 2022 to take into account a new Federal Register Notice published by the USPTO on October 13, 2022. Originally published Aug. 12, 2022

On November 17, 2021, the USPTO published its Final Rule relating to the implementation of the Trademark Modernization Act (TMA) (part of the Consolidated Appropriations Act of 2021, Pub. L. No. 116-260 (Dec. 27, 2020) – 2,126 pages long (!) – see p. 1020 for the text of the TMA).  Nov. 17, 2021 Final Rule, “Changes To Implement Provisions of the Trademark Modernization Act of 2020,” 86 FR 64300, pp. 64300-64334 (also available in PDF form).

Prior posts on this blog previously described the two new TTAB proceedings created by the TMA (i.e., expungement and ex parte reexamination based on allegations of non-use) as well as the new non-use grounds for cancellation. This post addresses the changes in the standard deadlines to respond to an Office action issued by the Trademark Office (either during the application process or in connection with post-registration filings) (aka “flexible response periods”) and withdraws the USPTO’s stated intention to change the “attorney recognition rules” under 37 C.F.R. § 2.17(g).   Some key points are summarized below regarding these two provisions, but we recommend reading the full Final Rule (35 pages) and the USPTO’s updated Trademark Modernization Act Page in order to get a more complete picture of these two aspects of the amendments.

Flexible Response Periods

The TMA amended 15 U.S.C. § 1062(d) to permit the USPTO to reduce the periods of time to respond to Office actions to between 60 days and 6 months, although the final response periods had to be set by regulation, rather than the whim/discretion of any individual Examining Attorney on a case-by-case basis.   Prior USPTO requests for public comment on proposed rulemakings offered several options for these response periods.

In its Final Rule, the USPTO outlined the final selection: Instead of the traditional six (6) months we’ve always had to respond to any Office action issued by the USPTO, applicants for certain types of applications shall have an initial three (3) month period to respond, but a single-three (3) month extension is available upon request and payment of additional government fees ($125 for TEAS applications or $225 for paper filings).  See pages 7 and 17 of the Final Rule discussing the flexible response periods (and public comments received) in more detail, and page 26 discussing amendments to 37 C.F.R. § 2.6 for new fees to be imposed as of December 3, 2022.  (NB: October 13, 2022 Federal Register Notice changed the effective date from December 1 to December 3).  Failure to file a response to the Office action or to request the extension and pay the fee before the initial three-month period expires will result in abandonment of the application.

UPDATED:  This same three-month period (followed by a single-three-month extension upon timely request and payment of the fee) will also apply to post-registration Office actions but only after October 7, 2023.

In contrast, however, applications filed under Section 66 (Madrid Protocol) are not subject to the shorter response period (plus extension and additional fee) apparently because of U.S. treaty obligations; those applicants can still rely on the original six-month response period.

37 C.F.R. § 2.93 (relating to responding to Office actions issued in connection with the new reexamination proceedings) has already been updated to reflect the deadline to respond and the new fee requirements for extensions. We would anticipate that the regulations implementing the flexible response periods generally will track the language of 37 C.F.R. § 2.93(b)(1).

Given the differences in response deadlines for Office actions issued in different kinds of cases, it will be very important to confirm (quickly, after an Office action is received) which response period applies so that complete responses or requests for extension (and payment of the required fee) can be accomplished timely.

As the Deputy Commissioner for Trademark Operations, Dan Vavonese confirmed during the Trademark Public Advisory Committee (TPAC) Meeting on July 29, 2022, this amendment will go into effect on December 1, 2022.  (NB:  October 13, 2022 Federal Register Notice delayed the implementation of this Rule until December 3). Continue reading …