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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

  • work Practice Area

    Trademark and Copyright

Date & Time
  • event Date

    Thursday, May 6, 2021

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE course will guide IP counsel on minimizing the risk of ethics and malpractice claims in trademark representations. The panel will examine common pitfalls and problematic behavior, client conflict issues, and hypothetical scenarios. The panel will also offer guidance on steps counsel can take to minimize the likelihood of ethics and malpractice issues.

Faculty

Michael E. McCabe
Managing Partner
McCabe & Ali, LLP

Mr. McCabe is a registered patent attorney with 20 years of experience representing foreign and domestic entities and individuals across a wide array of technologies in patent and trademark matters before the federal courts and the USPTO. He also represents practitioners involved in claims of professional misconduct, attorney discipline, and ethics matters before the Office of Enrollment and Discipline of the USPTO and the state bars of Maryland, Virginia and the District of Columbia. Mr. McCabe is a former adjunct professor of law at George Mason University School of Law.

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Emil J. Ali
Partner
McCabe & Ali, LLP

Mr. Ali provides legal representation of professionals across many regulated industries to limit, defend and deflect liability in regulatory and professional conduct investigations, enforcement actions, arbitrations, and court cases. He formerly investigated and assisted in the prosecution of attorney misconduct at the USPTO Office of Enrollment and Discipline (OED). While at the OED, he helped to promulgate the USPTO Rules of Professional Conduct. He has routinely presented and written regarding best practices for professionals to avoid regulator complaints. He is an adjunct professor of law at Lewis and Clark Law School.  

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Description

Trademark registrations protect intellectual property and are significant in the commercial world. However, what happens when an applicant hires trademark counsel to protect their brand and something goes wrong?

Malpractice and ethics concerns for trademark counsel should not be lost. For many companies, the most valuable assets are its IP. Consequently, protecting and enforcing IP rights becomes a key consideration. With such high stakes, trademark counsel are an easy target if something fails during the representation, whether due to missing deadlines, carelessness, or a failing strategy.

Malpractice claims and ethics complaints may come from a client's belief (mistaken or otherwise) that a failure to perform a more thorough trademark search could have led to revealing a trademark application already filed by a competitor or from a declaratory judgment action based upon an issue with a specimen that was potentially not uncovered by the attorney. Finally, the practitioner could run the ire of the USPTO with issues related to signatures and other technical aspects of filing.

Listen as our authoritative panel discusses where common pitfalls arise and behavior that may be problematic and lead to claims in the context of trademark representations. The panel will go through multiple scenarios, identify the issues, and discuss how courts and regulators, including the USPTO's Office of Enrollment and Discipline, have addressed recent malpractice claims and ethics issues in the trademark context. The panel will offer steps counsel can take to minimize the likelihood of an unhappy client (or regulator).

Outline

  1. Problem behavior and common pitfalls in trademark representations
    1. Fraudulent specimens or false statements of use
    2. Signature discrepancies
    3. Amazon brand registry
    4. Bonafide usage
    5. Unauthorized practice of law
  2. Hypothetical (and not so hypothetical) case studies
    1. Prosecution
    2. Licensing
    3. Litigation
    4. Investigations
  3. Best practices to minimize the risk of claims in trademark representations
    1. Conflicts checks
      1. Conflicts in trademark clearance searches
    2. Intake process
    3. Advisement letters
      1. Is a search worthwhile? When a client declines a search
      2. Advising clients regarding the dangers of inaccurate statements
      3. Reviewing specimens and/or advising clients regarding dangers of fraudulent specimens
    4. Foreign counsel issues--who is the client?
    5. Termination letters
      1. Who is responsible for maintenance?
      2. When does the POA actually end?

Benefits

The panel will review these and other important issues:

  • What behavior could be problematic and put trademark counsel at risk of malpractice and ethics claims?
  • How does trademark law representation differ from most other matters in terms of malpractice risks and ethics claims?
  • What steps can trademark counsel take to minimize the risk of malpractice and ethics claims?