Ethical Issues in U.S. Trademark Prosecution and TTAB Practice, 10 J. Marshall Rev. Intell. Prop. L. 365 (2011)

The conduct of practitioners and agents before the U.S. Patent and Trademark Office (“USPTO” or “Office”) is subject to regulation by the Office under 35 U.S.C. § 2(b)(2)(D). This provision grants the Under Secretary of Commerce for Intellectual Property and the Director of the USPTO the authority to establish regulations to govern the conduct of agents, attorneys, or other representatives before the Office, including establishing disciplinary measures for non-compliance with those regulations. The USPTO regulations governing conduct include the Patent and Trademark Office Code of Professional Responsibility. This article summarizes the key canons and disciplinary rules applicable to trademark practitioners and authorized representatives; outlines common ethical issues for practitioners and other authorized representatives that arise in ex parte and inter partes trademark proceedings before the USPTO. This article also discusses the case law that has developed relating to these issues. Although the practice of law is generally regulated by State ethics rules and regulations, trademark practitioners and authorized representatives should be equally familiar with the separate set of USPTO regulations governing their conduct before the Office. Additionally, although the USPTO canons and disciplinary rules are based on the Model Code of Professional Responsibility of the American Bar Association (like some State ethics codes), there are a number of ethical issues unique to the conduct of trademark practitioners and agents before the Office. Failure to adhere to these unique rules and regulations can result in disciplinary action by the USPTO that compounds or even exceeds any disciplinary action by the State

2008 Trademark Decisions of the Federal Circuit A Review of Recent Decisions of the United States Court of Appeals for the Federal Circuit: Area Summaries

In 2008, the United States Court of Appeals for the Federal Circuit issued eight trademark decisions and designated one of those eight decisions as precedential. These numbers are significantly lower than in recent years. The cases consist of appeals from the Trademark Trial and Appeal Board (“TTAB”), the United States Court of International Trade, and the United States Court of Federal Claims. Of the eight trademark decisions, four focused on substantive issues and four primarily involved procedural issues. The Federal Circuit generally adopted the findings of the lower tribunals, affirming all but one of the eight decisions on appeal. The majority of the decisions were resolved based on longstanding precedent. A few of the cases, however, addressed issues of first impression for the court. In Nasalok Coating Corp. v. Nylok Corp., for example, the Federal Circuit held that a claim for cancellation of a trademark registration is not a compulsory counterclaim for a party defending an infringement action in federal court. Significantly, TTAB procedure provides that such a counterclaim is compulsory in TTAB proceedings under the same circumstances. Thus, whether a party has waived its right to challenge a trademark registration after failing to seek cancellation of that registration in a prior proceeding will turn on whether that proceeding was a federal court case or a proceeding before the TTAB. Also of note, in Sakar International, Inc. v. United States, the Federal Circuit reversed the Court of International Trade’s finding that it had jurisdiction to consider a party’s challenge to a fine issued by the Bureau of Customs and Border Protection for importing counterfeit products. The Federal Circuit found that the restrictions on importing counterfeit products did not rise to the level of an “embargo,” and thus the challenge to the fines was not within the limited jurisdiction of the Court of International Trade. Each of the Federal Circuit’s 2008 trademark decisions is discussed in detail in this area summary

2008 Trademark Decisions of the Federal Circuit A Review of Recent Decisions of the United States Court of Appeals for the Federal Circuit: Area Summaries

In 2008, the United States Court of Appeals for the Federal Circuit issued eight trademark decisions and designated one of those eight decisions as precedential. These numbers are significantly lower than in recent years. The cases consist of appeals from the Trademark Trial and Appeal Board (“TTAB”), the United States Court of International Trade, and the United States Court of Federal Claims. Of the eight trademark decisions, four focused on substantive issues and four primarily involved procedural issues. The Federal Circuit generally adopted the findings of the lower tribunals, affirming all but one of the eight decisions on appeal. The majority of the decisions were resolved based on longstanding precedent. A few of the cases, however, addressed issues of first impression for the court. In Nasalok Coating Corp. v. Nylok Corp., for example, the Federal Circuit held that a claim for cancellation of a trademark registration is not a compulsory counterclaim for a party defending an infringement action in federal court. Significantly, TTAB procedure provides that such a counterclaim is compulsory in TTAB proceedings under the same circumstances. Thus, whether a party has waived its right to challenge a trademark registration after failing to seek cancellation of that registration in a prior proceeding will turn on whether that proceeding was a federal court case or a proceeding before the TTAB. Also of note, in Sakar International, Inc. v. United States, the Federal Circuit reversed the Court of International Trade’s finding that it had jurisdiction to consider a party’s challenge to a fine issued by the Bureau of Customs and Border Protection for importing counterfeit products. The Federal Circuit found that the restrictions on importing counterfeit products did not rise to the level of an “embargo,” and thus the challenge to the fines was not within the limited jurisdiction of the Court of International Trade. Each of the Federal Circuit’s 2008 trademark decisions is discussed in detail in this area summary