Trademark Representation Risks: Best Practices for Reducing Malpractice and Ethics Complaints

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).