Trademark Representation Risks: Best Practices for Reducing Malpractice and Ethics Complaints
Recognizing and Eliminating Problem Behavior, Identifying and Preventing Client Conflicts, and More
Recording of a 90-minute premium CLE video webinar with Q&A
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.
- Problem behavior and common pitfalls in trademark representations
- Fraudulent specimens or false statements of use
- Signature discrepancies
- Amazon brand registry
- Bonafide usage
- Unauthorized practice of law
- Hypothetical (and not so hypothetical) case studies
- Best practices to minimize the risk of claims in trademark representations
- Conflicts checks
- Conflicts in trademark clearance searches
- Intake process
- Advisement letters
- Is a search worthwhile? When a client declines a search
- Advising clients regarding the dangers of inaccurate statements
- Reviewing specimens and/or advising clients regarding dangers of fraudulent specimens
- Foreign counsel issues--who is the client?
- Termination letters
- Who is responsible for maintenance?
- When does the POA actually end?
- Conflicts checks
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?
Emil J. Ali
McCabe & Ali
Mr. Ali provides legal representation of professionals across many regulated industries to limit, defend and deflect... | Read More
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.Close
Michael E. McCabe, Jr.
Mr. McCabe is a registered patent attorney with 20 years of experience representing foreign and domestic entities and... | Read More
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.Close