Gene Quinn at IP Watchdog has this extensive post today, arguing if a trademark applicant employs a non-attorney agents to file, or assist in the filing of patent or trademark applications, the application is void ab initio as fraudulent. He cites to other blog postings discussing the Trademark Trial and Appeal Board’s recent expansion of its fraud jurisprudence, couples that with “Rule 11.5(b)” (37 C.F.R. 11.5(b)) which prohibits non-attorneys from “practicing before the Office” in patent and trademark matters, and argues that, if a non-attorney assists and applicant with prosecuting a (patent and) trademark application, irrevocable fraud on the USPTO has occurred, and the application is void.
I’ll avoid his discussions of patent law, because the “duty of candor” owed during the prosecution of a patent is a complete body of law in and of itself. Regarding trademark law, however, I’m afraid that Mr. Quinn is seriously overreading the case law to support his point that non-attorney entities like LegalZoom.com should not be filing trademark applications.
For those of you who are neither trademark practitioners nor attorneys, I apologize if I’m jumping into the deep end of trademark law too quickly. The basic gist of this is that part of the U.S. Trademark Act (sometimes called the Lanham Act) provides that trademark registrations that were “obtained fraudulently” may be canceled. In addition, entities who have been damaged by a fraudulent registration may be entitled to damages in a separate civil action.
There are different times in the trademark application process when fraud may occur. Recently, the USPTO, and the Trademark Trial and Appeal Board (the primary administrative body charged with reviewing challenges to trademark registrations) have begun a hard crack down on particular types of declarations made in the application process. In particular, in the seminal case of Medinol Ltd. v. Neuro Vasx, Inc., 67 U.S.P.Q.2d 1205 (T.T.A.B. 2003), the Board found fraud when the trademark applicant was not using the trademark applied for in connection with each and every good and service listed in the application at the time the “statement of use” of the trademark was filed. Since then, the TTAB has cancelled any number of trademarks on this same ground, even if the trademark owners did not intend to defraud the USPTO, even if the owners did not understand that each good or service had to be in use, or even if the owner had a good faith belief that it was still “using” the mark by repairing old goods or services. The key is the declarations that each trademark owner must sign when applying for a mark, or stating that the mark is (or has been) in use. The “statement of use” declaration goes something like this:
Applicant requests registration of the above-identified trademark/service mark in the United States Patent and Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq., as amended). Applicant is the owner of the mark sought to be registered, and is using the mark in commerce on or in connection with the goods/services identified above, as evidenced by the attached specimen(s) showing the mark as used in commerce.
The undersigned being hereby warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements and the like may jeopardize the validity of this document, declares that he/she is properly authorized to execute this document on behalf of the Owner; and all statements made of his/her own knowledge are true and that all statements made on information and belief are believed to be true.
The declaration that a trademark applicant must sign when she applies for a mark goes something like this:
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements, and the like, may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true; and that all statements made on information and belief are believed to be true.
In the Medinolline of cases, the Board considers the list of goods and services to be material to the registration, and claiming that you’re using a trademark on more goods or services than you actually are to be a material misrepresentation. After all, the trademark applicant signed a declaration, under penalty of perjury that it was using the mark in connection with “the goods/services identified”.
It’s hard to see how Gene’s argument fits into this “fraud” framework. Assuming, for the sake of argument, that a non-attorney agent’s preparation violates Rule 11.5(b), the applicant must merely declare that the applicant (or its agent) is “authorized” to execute the application. There is no declaration that the application was “created” by the applicant or one authorized to practice before the USPTO. Even if there’s an implied representation to that effect, how is that representation “material” to the content of the trademark application itself? At most, that’s a “ministerial issue” that should not affect the substance of the registration. Furthermore, the test that the TTAB has created is whether, “but for” the misrepresentation the registration would be maintained. An applicant can’t have a registration for PEPSI for “clothing; baseballs; soft drinks” if the owner only used PEPSI for soft drinks; but if the applicant declared to the USPTO that its agent didn’t have a J.D., the registration should still issue. The remedy should be that the USPTO, or state legal ethics boards, should prosecute the agents for unauthorized practice of law, not punish trademark owners who have registered valid trademarks.
Of course, when a trademark applicant uses a non-attorney to assist them in preparing a trademark application, the non-attorney may not understand the rules related to trademarks, may give incorrect advice, and may result in the mark being refused or canceled on substantive grounds. Caveat emptor. And I take no position on whether organizations like LegalZoom are engaged in the unauthorized practice of law, whether the USPTO should more forcefully enforce Rule 11.5(b), or whether they are subject to other penalties. But I think that, to suggest that merely using a non-attorney to assist in the filing of a trademark application voids the application, overreads the Board’s fraud jurisprudence.