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Attorneys in all practice areas are required to adhere to a strict code of ethics. However, the United States Patent and Trademark Office (USPTO) also has its own rules of professional conduct. It’s important for a trademark holder — and those seeking to register their marks — to be aware of these rules when choosing an attorney who will help ensure their brand is protected.
While the USPTO Rules of Professional Conduct are extensive and can be difficult to understand, the following are some of the rules with which clients may want to be familiar:
Your attorney must provide you with competent representation. In other words, they must have the knowledge and skill to reasonably represent you — and be thoroughly prepared to handle your case. Similarly, they must also act with reasonable diligence and promptness during the course of representation.
Your attorney must promptly inform you regarding any decision that requires your informed consent, and keep you reasonably apprised about the status of your case. They must also explain a matter to the extent that it is reasonably necessary to allow you to make an informed decision about the representation.
When it comes to your trademark, confidentiality is critical. After all, your trademark is your most valuable asset. Importantly, your attorney is bound by strict confidentiality. They are not permitted to reveal any information related to their representation without your informed consent.
An attorney cannot represent a client if there would be a conflict of interest in doing so. For instance, if representing one client would be directly adverse to the interests of another, they would be prohibited from engaging in the subsequent representation unless each client gives their informed consent.
Even after your attorney’s representation has concluded, they still owe a duty of loyalty and confidentiality to you. A trademark attorney may not engage in representation if a conflict of interest would arise in connection with a former client. Specifically, they may not use information related to the representation of a former client that would disadvantage them — except as the USPTO Rules of Professional Conduct would permit or in cases where the information is generally known.
Special rules apply when a trademark attorney is representing a client with diminished capacity or a mental impairment that would prevent them from making adequately considered decisions. If the attorney believes there is a substantial risk the client would be harmed physically or financially if action is not taken and they cannot act in the client’s interest, they may take reasonably necessary action to ensure the client is protected. In some cases, this may involve seeking the appointment of a guardian, guardian ad litem, or conservator.
Trademark attorneys must comply with stringent ethics rules regarding their clients’ property. All funds that belong to a client in connection with representation must be kept in a separate account. The attorney must keep detailed records of trust accounts, disbursements, and receipts. Records of the account funds must be kept for a period of five years after the termination of representation.
Even though attorneys have certain obligations and duties regarding their counsel, there are still circumstances under which they may withdraw from representation — or even be required to do so under the USPTO’s rules of professional conduct. For instance, if a client insists upon taking a course of action that the attorneys considers to be repugnant, or with which they have a fundamental disagreement, they may terminate the representation. An attorney’s services may also be terminated if they believe the client is using them to perpetuate a crime or fraud — or in the event the client fails to fulfill an obligation to the attorney.
The attorney-client relationship is a crucial one. An experienced trademark attorney shouldn’t only facilitate the paperwork that must be submitted to the USPTO, but they should also serve as a trusted advisor and counselor. Your attorney should render skillful legal advice and refer to other considerations — such as economic ones — that may impact your business.
In addition to having a duty to their clients, an attorney also owes a duty of candor toward the tribunal in which they appear. In trademark law, this may include the Trademark Trial and Appeal Board, federal court, or a state court in which a matter is being heard. An attorney is not permitted to knowingly make a false statement of fact or law to the tribunal or offer evidence they know is false. They also have a duty to engage fairly with the opposing party and their counsel.
At The Trademark Lawyer Law Firm, PLLC, we are committed to representing our clients in accordance with the highest ethical standards. Providing knowledgeable counsel, reliable representation, and adept advocacy, our attorneys work with entrepreneurs and business for a variety of trademark matters. Located in Ann Arbor, Michigan, we work with clients across the country to help them achieve their business objectives. Contact us today to schedule a free 15-minute consultation to learn how we can help.
Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.
A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights.
A good example of this is disclaiming “café” if your services are for a café.
If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry.
In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.
Two dates must be specified in a trademark application:
Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade.
Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.
The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.
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