IP Law News

Trademark Office Warns of Foreign Solicitation of Attorney Info (1)

Feb. 25, 2019, 5:55 PM

U.S. attorneys could face discipline if they accept foreign offers of money to put their names on trademark applications, the Patent and Trademark Office warned.

The agency said Feb 22 it received reports of foreign solicitations from “China and perhaps elsewhere” in apparent efforts to circumvent proposed new rules requiring a U.S. attorney to file trademark applications. The PTO hopes the rules will address an overwhelming and increasing flow of foreign applications—many non-compliant with U.S. law—especially from China.

The office said attorneys who accept agreements to add their name on foreign applications would likely violate its rules of professional conduct, and could face sanctions, including suspension or exclusion from practicing before it. The agency asked attorneys to forward such solicitations to TMFeedback@uspto.gov.

The PTO requires attorneys to represent clients with reasonable knowledge, thoroughness, preparation and diligence. Attorneys also are barred from practicing for a client that retains the right to control the attorney’s professional judgment.

The proposed rule change published Feb. 15 aims to ensure the integrity of the trademark registry and mirror similar rules in various other countries including China, the PTO said. It called current mechanisms for enforcing trademark law compliance “inadequate.”

‘Bruce from China’

Monica Riva Talley, head of Sterne Kessler Goldstein & Fox PLLC’s trademark and brand protection practice, shared with Bloomberg Law a solicitation she received similar to what the agency described. The note, sent Feb. 21 said “we help customers apply for US trademarks,” and asked her to provide “attorney information and US recipient address.”

“About submit US trademark, and reply to review comments are submitted by us, authorized email also writes us. Just use your attorney information, how much is it for one class/one trademark?” the email signed “Bruce from China” continued.

Talley said she frequently works with companies and their Chinese legal counsel to help them understand U.S. trademark law and requirements to apply for U.S. trademarks. But the request to simply provide information veered sharply from the standard, “more collaborative” practice, Talley said. She noted that attorneys are responsible for the truthfulness and legal compliance of all filings under their name.

“Wherever the line is, that’s not where it is,” Talley said. “‘Just sign your name and we’ll give you money for it:’ that’s a completely different relationship.”

The PTO didn’t immediately respond to a Bloomberg Law request for comment.

To contact the reporter on this story: Kyle Jahner in Washington at kjahner@bloomberglaw.com

To contact the editor responsible for this story: Rebecca Baker at rbaker@bloomberglaw.com; Keith Perine at kperine@bloomberglaw.com

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