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

Recognizing and Eliminating Problem Behavior, Identifying and Preventing Client Conflicts, and More

A live 90-minute CLE webinar with interactive Q&A


Wednesday, May 8, 2019 (in 13 days)

1:00pm-2:30pm EDT, 10:00am-11:30am PDT

or call 1-800-926-7926

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

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 the 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.

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.

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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 and bona fide usage
    4. Unauthorized practice of law
  2. Hypothetical (and not so hypothetical) case studies
    1. Prosecution
    2. Licensing
    3. Litigation
  3. Best practices to minimize 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 re: dangers of inaccurate statements
      3. Reviewing specimens and/or advising clients re: 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?

Faculty

Ali, Emil
Emil J. Ali

Partner
Carr Butterfield

Mr. Ali provides legal representation of professionals across many regulated industries to limit, defend and deflect...  |  Read More

McCabe, Michael
Michael E. McCabe, Jr.

Founder
McCabe Law

Mr. McCabe is a registered patent attorney with 20 years of experience representing foreign and domestic entities and...  |  Read More

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