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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA824817
Filing date: 06/05/2017
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 91211392
Party DefendantHallmark Industries, Inc.
CorrespondenceAddress
ERIK M PELTONERIK M PELTON & ASSOCIATES PLLC111 PARK PLACEFALLS CHURCH, VA 22046UNITED [email protected]
Submission Other Motions/Papers
Filer's Name Erik M. Pelton
Filer's e-mail [email protected]
Signature /ErikMPelton/
Date 06/05/2017
Attachments 2017-06-05 HALLMARK INDUSTRIES INC - Motion FINAL.pdf(89341 bytes )EX A and B.pdf(3349139 bytes )EX C and D.pdf(450223 bytes )
I N THE UNI TED STATES PATENT AND TRADEMARK OFFI CE
BEFORE THE TRADEMARK TRI AL AND APPEAL BOARD
REQUEST FOR RECONSI DERATI ON
& MOTI ON FOR RELI EF FROM JUDGMENT
COMES NOW, Applicant , by counsel, and subm its this Request for
Reconsiderat ion & Mot ion for Relief From Judgment . The judgment at issue is the
Board’s May 3, 2017, grant ing of Pet it ioner’s Mot ion for Summary Judgment . 50
TTABVUE. The Request for Reconsiderat ion is made pursuant to 37 CFR § 2.129(c)
and TBMP § 543. The Mot ion for Relief from Judgment is made pursuant to Fed. R.
Civ. Pr. 60(b) , 37 CFR § 2.116(a) and TBMP § 544.1
To begin, Applicant acknowledges that grant ing such mot ions are rare, and
that they are granted only when the circum stances at hand are except ional.
Applicant f iles this mot ion because the circumstances here are indeed except ional,
and the interests of j ust ice just ify a re-br iefing of the Mot ion for Summary
1 “Fed. R. Civ. P. 60(b) , as made applicable by 37 CFR § 2.116(a) , applies to all
final j udgments issued by the Board, including default and consent j udgments,
grants of summary judgments, and judgments entered after t r ial on the merits. As
a pract ical mat ter, m ot ions to vacate or set aside a final Board j udgment are
usually based upon the reasons set forth in subsect ions (1) , (2) and/ or (6) of Fed.
R. Civ. P. 60(b) .” TBMP § 544.
Hallmark Licensing, LLC
Opposer,
v.
Hallmark I ndust r ies, I nc.,
Applicant .
Consolidated Opposit ion No.
9 1 2 1 1 3 9 2 ( PARENT)
91215884
91211392: Request for Reconsiderat ion & Mot ion for Relief from Judgm ent p. 2
Judgment filed by Opposer on October 16, 2016, and granted by the Board on May
3, 2017. 42 TTABVUE and 50 TTABVUE.
The except ional circumstances here relate primar ily to the pr ior counsel of
Applicant , Mat thew Swyers, who represented Applicant at the t ime of the filing of a
response to the Mot ion for Summary Judgment and since March of 2015. See
Not ice of Appearance of Counsel. 21 TTABVUE.
The circumstances are except ional because (A) Applicant ’s pr ior counsel
Mat thew Swyers was under invest igat ion by the USPTO’s Office of Enrollm ent and
Discipline ( “OED”) and, j ust days after f iling the Response to the Mot ion for
Summary Judgment , signed an Affidavit for Consent Exclusion pursuant to 37
C.F.R. §11.27 barr ing him from pract icing before the USPTO for at least f ive (5)
years; and (B) Mr. Swyers om it ted a great deal of relevant informat ion in
responding to the Mot ion for Summary Judgment . See Final Order issued by the
Director of the U.S. Patent and Trademark Office, Proceeding No. D2016-20,
at tached hereto as Exhibit A.2 The Not ice of Exclusion on Consent was also
published in the March 28, 2017 Official Gazet te. See Exhibit B.
Applicant ’s pr ior counsel, j ust two weeks after filing the response to the
Mot ion for Summary Judgment in this mat ter on November 30, 2016, signed an
Affidavit for Consent Exclusion in which he acknowledged a litany of failures,
oversights, rule v iolat ions and ethical v iolat ions in represent ing clients while
pract icing before the USPTO. The details of these allegat ions are contained in
Exhibit A and discussed more thoroughly below.
2 The Board could also take judicial not ice of the documents from the proceedings
against Mr. Swyers pursuant to TBMP § 704.12 since they are (a) USPTO or court
records, (b) public, and (c) were not available to Applicant at the t ime of its last
filing with the Board.
91211392: Request for Reconsiderat ion & Mot ion for Relief from Judgm ent p. 3
I n December 2016, at the t ime of the filing of Mr. Swyers’ response to the
MSJ and his mot ion to withdraw in this proceeding, it appears that Mr. Swyers was
counsel in dozens of TTAB proceedings. 3
I n Mr. Swyers’ filing of the mot ion for Withdrawal of Counsel, 46 TTABUVE,
on December 16, 2016, he made no reference to the disciplinary act ion, the
consent exclusion or any other diff icult ies. Rather, counsel stated:
Counsel is no longer receiving direct ives from Applicant as to lit igat ion
decisions, st rategy, and the like required to cont inue its representat ion in this
mat ter. Despite numerous at tempts to communicate with the Applicant ,
counsel cert if ies that Applicant has denied counsel for the Applicant the
cont inued author ity to proceed in his representat ive capacity in this mat ter.
As such, Counsel for Applicant ’s ability to represent Applicant has been
comprom ised to the extent that he can no longer effect ively represent
Applicant .
As a result of the foregoing circumstances which are ext remely except ional
and which prejudiced Applicant ’s ability to receive a fair hear ing on the merits in
this m at ter, Applicant hereby requests that the Board grant the request for
reconsiderat ion or relief from judgment and allow Applicant to re-brief the mot ion
for summary judgment .
LEGAL STANDARD
Mot ion for Relief from Judgm ent
Federal Rule of Civil Procedure 60(b) states that :
3Mr. Swyers m ay have been counsel for dozens upon dozens of applicants in inter partes or
ex parte m at ters before the TTAB in Novem ber and Decem ber of 2016 when the key events,
nam ely the m ot ion for sum m ary judgm ent and the conclusion of the OED invest igat ion,
were taking place. However, searching such cases in TTABVUE is not possible because if Mr.
Swyers filed to withdraw he would no longer be listed as counsel and there is no m echanism
to search for cases where he used to be counsel.
91211392: Request for Reconsiderat ion & Mot ion for Relief from Judgm ent p. 4
On m ot ion and just term s, the court m ay relieve a party or its legal
representat ive from a final judgm ent , order, or proceeding for the
follow ing reasons:
(1) m istake, inadvertence, surprise, or excusable neglect ;
(2) newly discovered evidence that , with reasonable diligence, could not have
been discovered in t ime to move for a new t r ial under Rule 59(b) ;
(3) fraud (whether previously called int r insic or ext r insic) , m isrepresentat ion,
or m isconduct by an opposing party;
(4) the judgment is void;
(5) the judgment has been sat isfied, released, or discharged; it is based on
an earlier j udgment that has been reversed or vacated; or applying it
prospect ively is no longer equitable; or
( 6 ) any other reason that just ifies relief .
Fed. R. Civ. Proc. 60(b) (emphasis added) .
Mot ion for Reconsiderat ion of Final Decision
The standard for granted a mot ion for reconsiderat ion is quite open.
“Generally, the prem ise underly ing a request for rehearing, reconsiderat ion, or
modificat ion under 37 CFR § 2.129(c) is that , based on the evidence of record and
the prevailing author it ies, the Board erred in reaching the decision it issued. The
request may not be used to int roduce addit ional evidence, nor should it be devoted
simply to a reargument of the points presented in the request ing party’s br ief on
the case. Rather, the request normally should be lim ited to a demonst rat ion that ,
based on the evidence properly of record and the applicable law, the Board’s ruling
is in error and requires appropriate change.” TBMP § 543.
Nothing in the TBMP precludes the Board from considering other evidence or
from grant ing a mot ion for reconsiderat ion in ext raordinary circumstances when the
interests of just ice require it .
PROCEDURAL HI STORY
This Mot ion comes before the Board after the grant ing of Opposer’s Mot ion
for Summary Judgment for the consolidated proceedings Nos. 91211392 (parent )
91211392: Request for Reconsiderat ion & Mot ion for Relief from Judgm ent p. 5
and 91215884 on May 3, 2017. 50 TTABVUE. The procedural history of this mat ter
prior to the judgment is rather lengthy and complicated.
These proceedings began when Opposer served the Not ice of Opposit ion on
July 3, 2013. 1 TTABVUE. Applicant served its Answer on August 7, 2013. 4
TTABVUE. On February 18, 2014, the Part ies st ipulated to suspend the proceedings
pending disposit ion of a civ il act ion in the U.S. Dist r ict Court for the Western
Dist r ict of Arkansas. 10 TTABVUE and11 TTABVUE. During the suspension, on
March 5, 2014, the Board granted Applicant ’s counsel’s Mot ion to Withdraw, 12
TTABVUE. Applicant subsequent ly appointed Mat thew H. Swyers of The Trademark
Company, PLLC as counsel on May 23, 2015. 13 TTABVUE.
I n No. 91215884, Opposer served the Not ice of Opposit ion on April 14, 2014,
No. 91215884, 1 TTABVUE, and the proceedings were init iated by the Board the
same day. No. 91215884, 3 TTABVUE. Applicant served the Answer to No.
91215884 on May 16, 2014, appoint ing Mr. Swyers as counsel. No. 91215884, 4
TTABVUE.
On September 24, 2014, Opposer not if ied the Board that the civ il act ion had
been dism issed, and moved to consolidate this proceeding with 91215884. 17
TTABVUE. Following a var iety of other procedural f ilings including re-appointment of
Mr. Swyers as counsel and the grant ing of Opposer’s mot ion to compel, Opposer
moved for summary j udgment on October 26, 2016. 42 TTABVUE. Applicant served
a response opposing the mot ion on November 30, 2016. 44 TTABVUE. Opposer
served its Reply on December 15, 2016. 45 TTABVUE. The next day, December 16,
2016, Mr. Swyers moved to withdraw from the proceedings. 46 TTABVUE.
91211392: Request for Reconsiderat ion & Mot ion for Relief from Judgm ent p. 6
On December 20, 2016, Mr. Swyers subm it ted an Affidavit For Consent
Exclusion to the USPTO for the purpose of being excluded on consent pursuant to
37 C.F.R. § 11.27, and was subsequent ly excluded from USPTO pract ice for no less
than five years by the Director on January 26, 2017. I n re Mat thew H. Swyers, No.
D2016-20 (USPTO Jan. 26, 2017) .
Applicant appointed present counsel on February 10, 2017. 48 TTABVUE. The
mot ion for summary j udgment was granted on May 3, 2017.
Details of Mr. Sw yers’ Exclusion on Consent
I n the December 20, 2016, twelve-page Affidavit For Consent Exclusion4, Mr.
Swyers acknowledged the violat ion of many sect ions of the code of conduct . See
Exhibit A. These violat ions include direct ing or allowing Mr. Swyers employees to
sign or forge his elect ronic signature; failing to review documents before they were
filed with the Office; violat ing the USPTO Code of Professional Responsibilit y; and
engaging in conduct involving dishonesty, fraud, deceit , or m isrepresentat ion.
As stated in the Director’s Final Order:
Mr. Swyers’ affidavit acknowledged that the disciplinary complaint f iled
against him alleged that his conduct v iolated the following provisions
of the USPTO Code of Professional Responsibilit y, for conduct pr ior to
May 3, 2013: 37 C.F.R. §§ 10.23(a) (engaging in disreputable or gross
m isconduct ) ; 10.23(b) (4) (engaging in conduct involving dishonesty,
fraud, deceit , or m isrepresentat ion) ; 10.23(b) (5) (engaging in conduct
prejudicial to the adm inist rat ion of j ust ice) ; 10.23(a) and (b) v ia
10.23(c) (2) ( ii) ( knowingly giv ing false or m isleading informat ion or
knowingly part icipat ing in a mater ial way in giv ing false or m isleading
informat ion to the USPTO or any employee of the USPTO) ; 10.23(a)
and (b) via 10.23(c) (15) (violat ing the cert if icat ions m ade to the
USPTO under 37 C.F.R. § 11.18) ; 10.31(a) (deceiv ing or m isleading
prospect ive applicants or other persons having immediate or
prospect ive business before the Office by advert ising with respect to
prospect ive business before the Office) ; 10.47(a) and (c) (aiding a
4The Affidavit executed by Mr. Swyers is not included in the Director s Final Order, but the details of it are
contained in the Order.
91211392: Request for Reconsiderat ion & Mot ion for Relief from Judgm ent p. 7
non-pract it ioner in the unauthorized pract ice of law before the Office) ;
10.48 (sharing legal fees with a non-pract it ioner) ; 10.77(b) (handling
a legal mat ter without preparat ion adequate under the circumstances) ;
10.77(c) (neglect ing client mat ters) ; 10.84(a) (1) ( intent ionally failing
to seek the lawful object ives of a client ) ; 10.84( a) (3) ( intent ionally
prejudicing or damaging the client dur ing the course of a professional
relat ionship) ; 10.89(c) (6) ( intent ionally or habitually v iolat ing any
provision of the USPTO Code of Professional Responsibilit y while
appearing in a professional capacity before a t r ibunal) ; 10.112(a)
( failing to deposit legal fees paid in advance into a separate client t rust
account ) ; and 10.23(b) (6) (engaging in other conduct that adversely
reflects on the pract it ioner’s f itness to pract ice before the Office) .”
Furthermore, in a filing made last year by the Assistant U.S. At torney on
behalf of the USPTO in a case stemming from the OED invest igat ion into Mr.
Swyers’ pract ice before the USPTO, the government noted that :
After an invest igat ion into his conduct as a t rademark pract it ioner, and
a finding of probable cause to believe he had engaged in substant ial
m isconduct by an independent commit tee of USPTO officials, the OED
Director has filed a lengthy complaint against plaint iff that presents
eight separate counts of v iolat ions of USPTO’s professional
responsibilit y rules.
See Memorandum of Law in Support of United States Patent & Trademark Office’s
Mot ion to Dism iss at p. 1, Civ. Act ion 1: 16cv15, ED. VA (Filed March 22, 2016) ,
at tached at Exhibit C with exhibits thereto om it ted.
Oversights by Mr. Sw yers in this Proceeding
As noted above, the ext raordinary circumstances related to Applicant ’s prior
counsel and the pending OED invest igat ion and subsequent exclusion from pract ice
did not afford Applicant the opportunit y to provide a full, complete, and fair
response to Opposer’s Mot ion for Summary Judgment . Without subm it t ing
addit ional evidence here given the nature of this mot ion and the relief requested5,
5 Although, upon request from the Board, Applicant would be glad to subm it such
evidence as part of a supplemental br ief.
91211392: Request for Reconsiderat ion & Mot ion for Relief from Judgm ent p. 8
Applicant notes that the response to the mot ion was lacking in the following
manners:
• Mr. Swyers’ response to the MSJ did not reference evidence that could
cont radict the ownership assert ions by Opposer.
• Mr. Swyers’ response to the MSJ did not reference Opposer’s prior - to
opposit ion, f iled in 2005, to the then pending applicat ions of Applicant ’s
predecessor- in- interest , Diastar , I nc., for HALLMARK RI NGS and HALLMARK
DI AMONDS. ht tp: / / t tabvue.uspto.gov/ t tabvue/ v?pno= 91167232&pty= OPP
o The prior opposit ion was dism issed against Hallmark with prejudice on
November 24, 2010. See 91167232 33 TTABVUE. Hallmark now
asserts ownership of these very same records which it previously lost
–with prejudice - the opportunity to challenge.
o Applicant ’s init ial counsel in this proceeding raised this issue in the
Affirmat ive Defenses filed in the or iginal Answer of August 7, 2013. 4
TTABVUE.
• Mr. Swyers’ response to the MSJ did not challenge Opposer’s prior ity.
• Mr. Swyers’ response to the MSJ did not challenge Opposer’s standing.
• Mr. Swyers’ response to the MSJ did not reference the possible abandonment
of any r ights asserted by Opposer in the HALLMARK RINGS and HALLMARK
DI AMONDS regist rat ions, and Opposer filed no evidence to show cont inuous
use of said marks throughout the period during which Opposer has allegedly
owned the r ights to those marks and the corresponding regist rat ions thereof.
• Mr. Swyers failed to disclose to Applicant that he was being invest igated by
OED. See Exhibits A, B, and C.
91211392: Request for Reconsiderat ion & Mot ion for Relief from Judgm ent p. 9
• Mr. Swyers failed to disclose to Applicant that he was being barred from
pract icing before the USPTO. Mr. Swyers told Applicant via email on October
128, 2017: “Please accept this correspondence as not ice that after a
dist inguished 20-year career I will be ret ir ing from the pract ice of law
effect ive later this month. I t has been my dist inct honor and pr iv ilege to have
represented tens of thousands of wonderful clients over the years and
especially you.” 6
• Mr. Swyers failed to deliver copies of all proceeding documents to Applicant ,
despite the statement made by counsel in the mot ion t o withdraw.
• Upon the hir ing and ent ry of an Appearance by the undersigned firm , Er ik M.
Pelton & Associates, PLLC, Mr. Pelton had to contact Mr. Swyers numerous
t imes over several weeks to finally receive copies of the files in this
proceeding. See March 7, 2017 let ter from Pelton to Swyers, At tached as
Exhibit D. Mr. Pelton cannot be sure that he received all of the files, including
discovery documents produced by the part ies, as the documents eventually
provided by Mr. Swyers were not produced in any organized or indexed
manner.
Argum ent
Ext reme remedies are appropr iate only with the circumstances are indeed
ext reme. The Board rules and Federal Rules of Civil Procedure feature mechanisms
for such remedies when the circumstances – and the interests of j ust ice – merit
them. I n handling of dozens of mat ters before the Board over more than fifteen
6Applicant will make this email available to the Board under seal if requested to guard against any waiver of
privilege or other issues.
91211392: Request for Reconsiderat ion & Mot ion for Relief from Judgm ent p. 10
(15) years, the undersigned firm has certainly never seen circum stances more
except ional than the present case. Here, Applicant requests the Board to grant it
relief from the summ ary judgment ordered a few weeks ago so that Applicant may
properly br ief the mot ion. The circumstances are aberrant because Applicant ’s pr ior
counsel acknowledged, within weeks of his last ‘substant ive’ fling in this mat ter to a
litany of professional and ethical shortcom ings. These shortcom ings direct ly
impacted Applicant ’s ability to seek a fair and just result in this mat ter on the actual
merits after review of the appropr iate arguments.
As a result of the t ruly except ional circumstances detailed above,
ext raordinary relief is appropriate. The relief requested, namely vacat ing the ent ry
of summary judgment and allowing the part ies to re-br ief the Mot ion for Summary
Jjudgment , would be in the interests of j ust ice. Following the events and
circumstances surrounding Applicant ’s pr ior counsel in December 2016, the current
decision of the Board entering summary judgment on May 3, 2017, does not serve
the interests of j ust ice.
The relief requested by Applicant here would not significant ly prejudice
Opposer as Opposer would st ill be perm it ted to make its case for summary
judgment , and even if summary judgment was eventually denied Opposer would
st ill be perm it ted to pursue the complet ion of the opposit ion process seeking to
block regist rat ion of Applicant ’s marks.
Rule 60(b) (6) grants federal courts author it y to relieve a party from a final
judgment “upon such terms as are just .” Lilj eberg v. Health Servs. Acquisit ion
Corp. , 486 U.S. 847, 863–64 (1988) ; see Fed. R. Civ. Proc. 60(b) ( “ [ T] he Court
may relieve a party from a final j udgment for (6) any other reason that j ust if ies
91211392: Request for Reconsiderat ion & Mot ion for Relief from Judgm ent p. 11
relief.” ) . A movant is ent it led to relief under Rule 60(b) (6) —the “catch-all”
provision—if “such act ion is appropr iate to accomplish just ice” and only in
“ext raordinary circum stances.” I d. at 863–64 (quot ing Klapprot t v. United States,
335 U.S. 601, 614–15 (1949) ( internal quotat ion marks om it ted) ) .
Most of the cases, as well as the scholar ly art icles, on Rule 60(b) (6) involve
mat ters where a default j udgment was entered, or where a decision was eligible for
an appeal but none was filed. Since this case does not involve a movant who
deliberately stopped pursuing its remedies, there is scant precedent available.
“To just ify relief under subsect ion (6) , a party must show ‘ext raordinary
circumstances’ suggest ing that the party is fault less in the delay.” ) ; Lilj eberg v.
Health Servs. Acquisit ion Corp. at 863-64 ( “ [ W] e have previously noted that [ Rule
60(b) (6) ] provides courts with author ity adequate to enable them to vacate
judgments whenever such act ion is appropr iate to accomplish just ice, while also
caut ioning that it should only be applied in ‘ext raordinary circumstances.’” ( citat ion
om it ted) .
The Ninth Circuit has found that gross negligence by a party’s counsel may
const itute ext raordinary circumstances under Rule 60(b) (6) . Comm unity Dental
Services v. Tani, 282 F.3d 1164, 1170 (9th Cir. 2002) ( “When an at torney is
grossly negligent , as counsel was here, the judicial system loses credibilit y as well
as the appearance of fairness, if the result is that an innocent party is forced to
suffer drast ic consequences.” ) Several other courts have reached sim ilar
conclusions; see, e.g. L.P. Steuart , I nc. v. Mat thews, 329 F.2d 234, 235 (D.C. Cir.
1964) (stat ing that R. 60(b) (6) " is broad enough to perm it relief when as in this
91211392: Request for Reconsiderat ion & Mot ion for Relief from Judgm ent p. 12
case personal problems of counsel cause him grossly to neglect a diligent client ’s
case and m islead the client ") .
The litany of professional and ethical shortcom ings of Applicant ’s prior
counsel explain the otherwise inexplicable inadequacy of substance contained in the
response filed to Opposer’s Mot ion for Summary Judgment . Despite Applicant ’s
previous content ions regarding ownership of the HALLMARK t rademark and the
validity of the purported assignment from a creditor to Opposer, Mr. Swyers failed
to provide any evidence or to dispute any of the facts alleged in the Mot ion for
Summary Judgment . I nstead, he offered m inim al, cut -and-paste arguments about
the sim ilar ity of the marks, the channels of t rade, and the classes of consumers.
44 TTABVUE. By failing to even address perhaps the most salient issue in this
mat ter, the proper ownership of the HALLMARK t rademarks, Mr. Swyers effect ively
abandoned his client . The response to mot ion for summary judgment did not
provide Applicant a full or fair opportunit y to defend its t rademark. As recognized
by the Ninth Circuit , monetary damages recovered in a malpract ice lawsuit do not
provide adequate rem edy to a lit igant who loses its t rademark r ights. Com m unity
Dental Servs., 282 F.3d at 1171. “Thus, relief under Rule 60(b) (6) may often
const itute the only m echanism for affording a client actual and full relief from his
counsel’s gross negligence — that is, the opportunit y to present his case on the
merits.” I d. at 1172.
I f the Summary Judgment order by the Board stands, Applicant may be
affected well beyond its r ights to achieve the benefits of regist rat ion of the marks at
issue. B&B Hardware, I nc. v. Hargis I ndust r ies, I nc. , 575 U.S.____; 135 S.Ct . 1293
91211392: Request for Reconsiderat ion & Mot ion for Relief from Judgm ent p. 13
(2015) (holding that a finding by the Board may be given preclusive effect where
issue preclusion would otherwise apply) .
The adm issions by Applicant ’s pr ior counsel in the Aff idavit for Consent
Exclusion signed a m ere three weeks after the response to the mot ion for summary
judgment detail Mr. Swyers’ malfeasance, poor judgment , poor counsel, lack of
oversight , and ethical wrongdoings. To make mat ters worse, prior counsel failed to
properly and fully inform Applicant why he was “ ret ir ing” when he told Applicant v ia
email, j ust days before the Mot ion for Summary Judgment was filed, that he could
no longer represent Applicant .
While a request for reconsiderat ion normally should be lim ited to a
demonst rat ion that , based on the evidence properly of record and the applicable
law, the Board’s ruling is in error and requires appropriate change, there is nothing
in the statute or the rules precluding the grant ing of reconsiderat ion for other
reasons. See, e.g., Steiger Tractor I nc. v. Steiner Corp. , 221 USPQ 165 (TTAB
1984) , reh’g granted, 3 USPQ2d 1708 (TTAB 1984) . Again, the circumstances here
are not normal; they are ext remely except ional. Applicant is not seeking to enter
new evidence as a part of the current mot ion, or to argue the Board m isinterpreted
the law or erred in its opinion, rather Applicant asks the Board to take judicial
not ice of the Director’s order of January 26, 2017, and the Affidavit on Consent
Exclusion – both of which were entered during the pendency of the mot ion for
summary judgment – and in the interests of j ust ice and equity vacate the judgment
and allow Applicant the opportunity to file a new response to the Mot ion for
Summary Judgment .
91211392: Request for Reconsiderat ion & Mot ion for Relief from Judgm ent p. 14
Applicant has not delayed in br inging this m ot ion. Grant ing Applicant ’s
mot ion and allowing re-briefing of the Mot ion for Summary Judgment will not
prejudice Opposer as its mot ion, and if applicable the ent ire case, would st ill be
determ ined on the m erits. Applicant should not be penalized for the ext reme
circumstances regarding its pr ior counsel, Mr. Swyers, given that Applicant was not
even aware of the OED invest igat ion or the Affidavit for Consent Exclusion at the
t ime.7
WHEREFORE, Applicant moves the Board to grant this mot ion and to allow
Applicant 60 days to file a response to the mot ion for summary filed on October 26,
2016.
Dated this 5th day of June, 2017.
Erik M. Pelton
Erik M. Pelton & Associates, PLLC
At torney for Applicant
Exhibits
Exhibit A: Final Order issued by the Director of the U.S. Patent and Trademark
Office, Proceeding No. D2016-20
Exhibit B: Not ice of Exclusion on Consent published in the March 28, 2017 Official
Gazet te
Exhibit C: Memorandum of Law in Support of United States Patent & Trademark
Office’s Mot ion to Dism iss at p. 1, Civ. Act ion 1: 16cv15, ED. VA (Filed March
22, 2016) with exhibits om it ted
Exhibit D: March 7, 2017 let ter from Pelton to Swyers
7 Note the even if Applicant was to make a claim of malpract ice and to succeed, it
would not remedy or affect the t rademark r ights at issue in this proceeding.
91211392: Request for Reconsiderat ion & Mot ion for Relief from Judgm ent p. 15
CERTI FI CATE OF SERVI CE
I hereby cert ify that a t rue and accurate copy of the Request for
Reconsiderat ion & Mot ion for Relief from Judgm ent has been served on the
following by deliver ing said copy on June 5, 2017, v ia email, to counsel for Opposer
at the following address:
Timothy J Feathers
St inson Leonard St reet LLPt imothy.feathers@st insonleonard.com, t rademark@st insonleonard.com
By:
Erik M. Pelton, Esq.
I N THE UNI TED STATES PATENT AND TRADEMARK OFFI CE
BEFORE THE TRADEMARK TRI AL AND APPEAL BOARD
EXHI BI T A
Hallmark Licensing, LLC
Opposer,
v.
Hallmark I ndust r ies, I nc.,
Applicant .
Consolidated Opposit ion No.
9 1 2 1 1 3 9 2 ( PARENT)
91215884
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE DIRECTOR OF THE
UNITED STATES PATENT AND TRADEMARK OFFICE
In the Matter of
Matthew H. Swyers,
Respondent
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FINAL ORDER
Proceeding No. D2016-20
Pursuant to 37 C.F.R. § 11.27(b), the Director of the United States Patent and
Trademark Office ("USPTO" or "Office") received for review and approval from the
Director of the Office of Emollment and Discipline ("OED Director") an Affidavit For
Consent Exclusion pursuant to 37 C.F.R. § 11.27, executed by Matthew H. Swyers
("Respondent") on December 20, 2016. Respondent submitted the twelve-page Affidavit
For Consent Exclusion to the USPTO for the purpose of being excluded on consent
pursuant to 37 C.F.R. § 11.27.
For the reasons set forth herein, Respondent's Affidavit For Consent Exclusion
shall be approved, and Respondent shall be excluded on consent from practice before the
Office in trademark and non-patent matters commencing on the date of this Final Order.
Jurisdiction
Respondent, of Vienna, Virginia, is an attorney licensed to practice law in the
Commonwealth of Virginia and the District of Columbia and has practiced before the
USPTO in trademark matters. As such, he is subject to the USPTO Code of Professional
Responsibility, which is set forth at 37 C.F.R. § 10.20 et seq., and the USPTO Rules of
Professional Conduct, which are set forth at 37 C.F.R. §§ 11.101through11.901.1
Pursuant to 35 U.S.C. §§ 2(b)(2)(D) and 32 and 37 C.F.R. § 11.27, the USPTO
Director has the authority to approve Respondent's Affidavit for Consent Exclusion and
to exclude Respondent on consent from the practice of trademark and non-patent matters
before the Office.
Allegations of the Disciplinary Complaint
A disciplinary complaint is pending against Respondent (Proceeding No. 2016-20)
which alleges that:
a. Respondent, an experienced trademark lawyer and former USPTO
Trademark Examining Attorney, established The Trademark
Company, PLLC, and through that business systematically
permitted non-attorneys to practice trademark law for him with little
or no supervision.
b. Respondent, the sole attorney at the company, did not personally
review or sign thousands of trademark applications and related
documents (including statements of use, § 2(f) declarations, and
responses to Office actions) prepared by his non-lawyer employees
and filed with the USPTO, in violation of USPTO signature and
certification rules and despite assurances on the company website
that trademark applicants would be represented by a specialized
attorney.
c. As a result of Respondent's failure to supervise his employees,
multiple fraudulent or digitally manipulated specimens of use were
filed with the Office, which potentially jeopardized the trademark
applications of his clients.
1 The USPTO Code of Professional Responsibility applies to conduct prior to May 3, 2013, and
the USPTO Rules of Professional Conduct apply to conduct on or after May 3, 2013.
2
d. Respondent failed to deposit client funds paid in advance into a
client trust account and improperly split legal fees with his non
practitioner employees.
e. Respondent failed to respond to lawful requests for information or
cooperate with the investigation conducted by the Office of
Enrollment and Discipline.
Respondent's Affidavit For Consent Exclusion
Respondent acknowledges in his December 20, 2016 Affidavit For Consent
Exclusion that:
1. His consent is freely and voluntarily rendered, and he is not being subjected
to coercion or duress.
2. He is aware that the disciplinary complaint filed against him (Proceeding
No. D2016-20) alleges that he violated the following Disciplinary Rules of the USPTO
Code of Professional Responsibility and/ or the USPTO Rules of Professional Conduct:
a. 37 C.F.R. § 10.23(a) (engaging in disreputable or gross
misconduct by, inter alia: directing or allowing his employees
to prepare, sign, and file trademark applications, responses to
Office Actions, and other trademark documents; directing or
allowing his employees to provide legal advice and guidance
to trademark applicants; and/ or directing or allowing his
employees to communicate with his clients about trademark
search reports and opinions, without his involvement or
supervision; engaging in disreputable or gross misconduct
by, inter alia: failing to comply with the USPTO's electronic
signature rules by not personally electronically signing
trademark applications and trademark documents filed with
the USPTO and, instead, directing or allowing his employees
to sign or forge his electronic signature to the documents,
which resulted in the validity of registered trademarks being
jeopardized; engaging in disreputable or gross misconduct
by, inter alia: directing or allowing his employees to sign or
forge his name to § 2(£) declarations and file the § 2(f)
declarations with the Office, when (i) he knew that the
3
Trademark Examining Attorneys would rely on the
declarations when examining trademark applications and
issuing registrations and when he knew or reasonably should
have known that the validity of an applicants' applications
and registrations were jeopardized by the false and/ or forged
declarations; and/ or (ii) he knew or should have known his
employees did not have adequate knowledge to aver, "The
mark has become distinctive of the goods/ services through
the applicant's substantially exclusive and continuous use in
commerce that the U.S. Congress may lawfully regulate for at
least the five years immediately before the date of this
statement;" engaging in disreputable or gross misconduct by,
inter alia: (i) failing to adequately supervise his employees or
adequately review their work, thus permitting them to create
false or fraudulent specimens and/ or digitally altered images
of marks that did not depict the actual mark as used in
commerce and file these specimens with the Office, and as a
result, in some cases, the USPTO issued trademark
registrations based on the false or fraudulent specimens or
digitally altered marks, putting the validity of the resulting
trademarks in jeopardy, (ii) failing to inform his clients that
their trademark registrations or applications were potentially
invalid and/ or take timely and effective remedial action on
their behalf and/ or offer or provide restitution to them,
and/ or (iii) failing to inform the USPTO of the potentially
invalid applications and/ or registrations that resulted from
the filing of false or fraudulent specimens or digitally altered
marks; engaging in disreputable or gross misconduct by, inter
alia: (i) not informing clients who purchased trademark legal
services from The Trademark Company that their
applications and other trademark documents were not
prepared or reviewed by an attorney prior to being filed with
the Office; and/ or (ii) collecting fees from clients for
trademark legal services that were supposed to be performed
by an attorney when their applications and other trademark
documents were not prepared or reviewed by an attorney
prior to being filed with the Office);
b. 37 C.F.R. § 10.23(b)(4) (engaging in conduct involving
dishonesty, fraud, deceit, or misrepresentation by, inter alia:
not informing clients who purchased trademark legal services
from The Trademark Company that their applications and
other trademark documents were not prepared or reviewed
4
by an attorney prior to being filed with the Office; engaging
in conduct involving dishonesty, fraud, deceit, or
misrepresentation by, inter alia: (i) not personally
electronically signing trademark applications and trademark
documents filed with the USPTO and, instead, directing or
allowing his employees to sign or forge his electronic
signature to the documents, thereby misleading the USPTO,
his clients, and the public into believing that Respondent had
actually signed the trademark application or trademark
document; and/ or (ii) not affirmatively informing the
Trademark Examining Attorney that the actual signatory, the
employee, was not identified on the document; engaging in
conduct involving dishonesty, fraud, deceit, or
misrepresentation by, inter alia: directing or allowing his
employees to sign or forge his name to § 2(f) declarations and
file the § 2(f) declarations with the Office, when (i) he knew
that the Trademark Examining Attorneys would rely on the
declarations when examining trademark applications and
issuing registrations, and/ or (ii) he knew or should have
known his employees did not have adequate knowledge to
aver, "The mark has become distinctive of the goods/ services
through the applicant's substantially exclusive and
continuous use in commerce that the U.S. Congress may
lawfully regulate for at least the five years immediately before
the date of this statement;" engaging in conduct involving
dishonesty, fraud, deceit, or misrepresentation by, inter alia:
(i) failing to adequately supervise his employees or
adequately review their work, thus permitting them to create
false or fraudulent specimens and/ or digitally altered images
of marks that did not depict the actual mark as used in
commerce and file these specimens with the Office, and as a
result, in some cases, the USPTO issued trademark
registrations based on the false or fraudulent specimens or
digitally altered marks, putting the validity of the resulting
trademarks in jeopardy, (ii) failing to inform his clients that
their trademark registrations or applications were potentially
invalid and/ or take timely and effective remedial action on
their behalf and/ or offer or provide restitution to them,
and/ or (iii) failing to inform the USPTO of the potentially
invalid applications and/ or registrations that resulted from
the filing of false or fraudulent specimens or digitally altered
marks; engaging in conduct involving dishonesty, fraud,
deceit, or misrepresentation by, inter alia: (i) not informing
5
clients who purchased trademark legal services from The
Trademark Company that their applications and other
trademark documents were not prepared or reviewed by an
attorney prior to being filed with the Office; and/ or (ii)
collecting fees from clients for trademark legal services that
were supposed to be performed by an attorney when their
applications and other trademark documents were not
prepared or reviewed by an attorney prior to being filed with
the Office);
c. 37 C.F.R. § 10.23(b)(5) (engaging in conduct prejudicial to the
administration of justice by, inter alia: (i) directing or allowing
his employees to prepare, sign, and file trademark
applications, responses to Office Actions, and other
trademark documents; directing or allowing his employees to
provide legal advice and guidance to trademark applicants;
and/ or directing or allowing his employees to communicate
with his clients about trademark search reports and opinions,
without his involvement or supervision; and/ or (ii) not
reviewing trademark applications and other trademark
documents (e.g., responses to Office Actions) prepared and
filed by his employees before they were filed with the Office;
engaging in conduct prejudicial to the administration of
justice by, inter alia: (i) failing to comply with the USPTO's
electronic signature rules by not personally electronically
signing trademark applications and trademark documents
filed with the USPTO and, instead, directing or allowing his
employees to sign or forge his electronic signature to the
documents, which resulted in the validity of registered
trademarks being jeopardized and/ or (ii) directing or
allowing his employees to sign or forge his electronic
signature to trademark applications and other trademark
documents knowing that the actual signatory, the employee,
was not identified on the documents contrary to
Respondent's certifications under § 11.18; engaging in
conduct prejudicial to the administration of justice by, inter
alia: directing or allowing his employees to sign or forge his
name to§ 2(f) declarations and file the § 2(f) declarations with
the Office, when (i) he knew that the Trademark Examining
Attorneys would rely on the declarations when examining
trademark applications and issuing registrations; and/ or (ii)
he knew or should have known his employees did not have
adequate knowledge to aver, "The mark has become
6
distinctive of the goods/ services through the applicant's
substantially exclusive and continuous use in commerce that
the U.S. Congress may lawfully regulate for at least the five
years immediately before the date of this statement;" and/ or
(iii) he knew that (a) the actual signatory, the employee, was
not identified on the document and (b) the actual signatory,
the employee, did not have the knowledge to support the
factual contentions found in the declaration; engaging in
conduct prejudicial to the administration of justice by, inter alia: (i) failing to adequately supervise his employees or
adequately review their work, thus permitting them to create
false or fraudulent specimens and/ or digitally altered images
of marks that did not depict the actual mark as used in
commerce and file these specimens with the Office, and as a
result, in some cases, the USPTO issued trademark
registrations based on the false or fraudulent specimens or
digitally altered marks, putting the validity of the resulting
trademarks in jeopardy, and/ or (ii) failing to inform the
USPTO of the potentially invalid applications and/ or
registrations that resulted from the filing of false or
fraudulent specimens or digitally altered mark);
d. 37 C.F.R. § 10.23(b)(6) (engaging in any other conduct that
adverse! y reflects on the practitioner's fitness to practice
before the Office, by engaging in the conduct referenced in
Count I of the Complaint to the extent that his conduct does
not otherwise violate a provision of the USPTO Code of
Professional Responsibility; engaging in any other conduct
that adversely reflects on the practitioner's fitness to practice
before the Office, by engaging in the conduct referenced in
Count II of the Complaint to the extent that his conduct does
not otherwise violate a provision of the USPTO Code of
Professional Responsibility; engaging in any other conduct
that adversely reflects on the practitioner's fitness to practice
before the Office, by engaging in the conduct referenced in
Count III of the Complaint to the extent that his conduct does
not otherwise violate a provision of the USPTO Code of
Professional Responsibility; any other conduct that adversely
reflects on the practitioner's fitness to practice before the
Office, by engaging in the conduct referenced in Count IV of
the Complaint to the extent that his conduct does not
otherwise violate a provision of the USPTO Code of
Professional Responsibility);
7
e. 37 C.F.R. §§ 10.23(a) and (b) via 10.23(c)(2)(ii) (knowingly
giving false or misleading information or knowingly
participating in a material way in giving false or misleading
information to the USPTO or any employee of the USPTO by,
inter alia: directing or allowing his employees to sign or forge
his name to § 2(£) declarations and file the § 2(f) declarations
with the Office, when (i) he knew that the Trademark
Examining Attorneys would rely on the declarations when
examining trademark applications and issuing registrations,
and/ or (ii) he knew or should have known his employees did
not have adequate knowledge to aver, "The mark has become
distinctive of the goods/services through the applicant's
substantially exclusive and continuous use in commerce that
the U.S. Congress may lawfully regulate for at least the five
years immediately before the date of this statement;" and/ or
(iii) he knew that (a) the actual signatory, the employee, was
not identified on the document and (b) the actual signatory,
the employee, did not have the knowledge to support the
factual contentions found in the declaration);
f. 37 C.F.R. §§ 10.23(a) and (b) via 10.23(c)(15) (violating the
certifications made to the USPTO under 37 C.F.R. § 11.18 by,
inter alia: directing or allowing his employees to sign or forge
his electronic signature to trademark applications and other
trademark documents knowing that the actual signatory, the
employee, was not identified on the documents; violating the
certifications made to the USPTO under 37 C.F.R. § 11.18 by,
inter alia: directing or allowing his employees to sign or forge
his name to § 2(f) declarations and file the § 2(f) declarations
with the Office, knowing that (i) the actual signatory, the
' employee, was not identified on the document and (ii) the
actual signatory, the employee, did not have the knowledge
to support the factual contentions found in the declaration;
violating the certifications made to the USPTO under 37
C.F.R. § 11.18 by, inter alia, failing to adequately supervise his
employees or adequately review their work, thus permitting
them to create false or fraudulent specimens and/ or digitally
altered images of marks that did not depict the actual mark as
used in commerce and file these specimens with the Office);
g. 37 C.F.R. § 10.31(a) (deceiving or misleading prospective
applicants or other persons having immediate or prospective
8
business before the Office by word, circular, letter, or
advertising with respect to prospective business before the
Office by, inter alia: advertising on The Trademark Company's
website that trademark applications would be prepared by an
attorney when Respondent knew that trademark applications
were not prepared or reviewed by an attorney prior to being
filed with the USPTO; engaging in any other conduct that
adversely reflects on the practitioner's fitness to practice
before the Office, by engaging in the conduct referenced in
Count V of the Complaint to the extent that his conduct does
not otherwise violate a provision of the USPTO Code of
Professional Responsibility);
h. 37 C.F.R. § 10.47(a) and (c) (aiding a non-practitioner in the
unauthorized practice of law before the Office by, inter alia: (i)
directing or allowing his employees to prepare, sign, and file
trademark applications, responses to Office Actions, and
other trademark documents; directing or allowing his
employees to provide legal advice and guidance to trademark
applicants; and/ or directing or allowing his employees to
communicate with his clients about trademark search reports
and opinions, without his involvement or supervision;
and/ or (ii) not reviewing trademark applications and other
trademark documents (e.g., responses to Office Actions)
prepared and filed by his employees before they were filed
with the Office);
i. 37 C.F.R. § 10.48 (sharing legal fees with a non-practitioner by
paying employees non-discretionary monthly bonuses tied to
the proceeds generated by the trademark legal services
provided to applicants with whom they interacted);
j. 37 C.F.R. § 10.77(b) (handling a legal matter without
preparation adequate under the circumstances by, inter alia:
failing to comply with the USPTO' s electronic signature rules
by not personally electronically signing trademark
applications and trademark documents filed with the USPTO
and, instead, directing or allowing his employees to sign or
forge his electronic signature to the documents, which
resulted in the validity of registered trademarks being
jeopardized);
9
k. 37 C.F.R. § 10.77(c) (neglecting client matters by, inter alia: not
reviewing trademark applications, responses to Office
Actions, and other trademark documents prepared and filed
by his employees before they were filed with· the Office;
neglecting client matters by, inter alia: (i) failing to adequately
supervise his employees or adequately review their work,
thus permitting them to create false or fraudulent specimens
and/ or digitally altered images of marks that did not depict
the actual mark as used in commerce and file these specimens
with the Office, and as a result, in some cases, the USPTO
issued trademark registrations based on the false or
fraudulent specimens or digitally altered marks, putting the
validity of the resulting trademarks in jeopardy, and/ or (ii)
failing to inform his clients that their trademark registrations
or applications were potentially invalid and/ or take timely
and effective remedial action on their behalf and/ or offer or
provide restitution to them);
1. 37 C.F.R. § 10.84(a)(l) (intentionally failing to seek the lawful
objectives of a client through reasonably available means
permitted by law by, inter alia: intentionally failing to inform
his clients that their trademark registrations or applications
were potentially invalid and/ or take timely and effective
remedial action on their behalf and/ or offer or provide
restitution to them);
m. 37 C.F.R. § 10.84(a)(3) (intentionally prejudicing or damaging
the client during the course of a professional relationship by,
inter alia: intentionally failing to inform his clients that their
trademark registrations or applications were potentially
invalid and/ or take timely and effective remedial action on
their behalf and/ or offer or provide restitution to them);
n. 37 C.F.R. § 10.89(c)(6) (intentionally or habitually violating
any provision of the USPTO Code of Professional
Responsibility while appearing in a professional capacity
before a tribunal by, inter alia: (i) directing or allowing his
employees to prepare, sign, and file trademark applications,
responses to Office Actions, and other trademark documents;
directing or allowing his employees to provide legal advice
and guidance to trademark applicants; and/ or directing or
allowing his employees to communicate with his clients about
trademark search reports and opinions, without his
10
involvement or superv1s10n; and/ or (ii) not reviewing
trademark applications, responses to Office Actions, and
other trademark documents prepared and filed by his
employees before they were filed with the Office;
intentionally or habitually violating any provision of the
USPTO Code of Professional Responsibility while appearing
in a professional capacity before a tribunal by, inter alia: failing
to comply with the USPTO's electronic signature rules by not
personally electronically signing trademark applications and
trademark documents filed with the USPTO and, instead,
directing or allowing his employees to sign or forge his
electronic signature to the documents, which resulted in the
validity of registered trademarks being jeopardized;
intentionally or habitually violating any provision of the
USPTO Code of Professional Responsibility while appearing
in a professional capacity before a tribunal by, inter alia: directing or allowing his employees to sign or forge his name
to § 2(f) declarations and file the § 2(f) declarations with the
Office, when (i) he knew that the Trademark Examining
Attorneys would rely on the declarations when examining
trademark applications and issuing registrations, and/ or (ii)
he knew or should have known his employees did not have
adequate knowledge to aver, "The mark has become
distinctive of the goods/services through the applicant's
substantially exclusive and continuous use in commerce that
the U.S. Congress may lawfully regulate for at least the five
years immediately before the date of this statement;";
intentionally or habitually violating any provision of the
USPTO Code of Professional Responsibility while appearing
in a professional capacity before a tribunal by, inter alia: (i)
failing to adequately supervise his employees or adequately
review their work, thus permitting them to create false or
fraudulent specimens and/ or digitally altered images of
marks that did not depict the actual mark as used in
commerce and file these specimens with the Office, and as a
result, in some cases, the USPTO issued trademark
registrations based on the false or fraudulent specimens or
digitally altered marks, putting the validity of the resulting
trademarks in jeopardy, and/ or (ii) failing to inform the
USPTO of the potentially invalid applications and/ or
registrations that resulted from the filing of false or
fraudulent specimens or digitally altered marks);
11
o. 37 C.F.R. § 10.112(a) (failing to deposit legal fees paid in
advance into a separate client trust account by depositing
them instead into The Trademark Company's operating
account);
p. 37 C.F.R. § 11.101 (failing to provide competent
representation by, inter alia: not reviewing trademark
applications, responses to Office Actions, and other
trademark documents prepared and filed by his employees
before they were filed with the Office; failing to provide
competent representation by, inter alia: failing to comply with
the USPTO's electronic signature rules by not personally
electronically signing trademark applications and trademark
documents filed with the USPTO and, instead, directing or
allowing his employees to sign or forge his electronic
signature to the documents, which resulted in the validity of
registered trademarks being jeopardized; failing to provide
competent representation by, inter alia: directing or allowing
his employees to sign or forge his name to § 2(f) declarations
and file the § 2(£) declarations with the Office, when (i) he
knew that the Trademark Examining Attorneys would rely on
the declarations when examining trademark applications and
issuing registrations and when he knew or reasonably should
have known that the validity of the applicants' applications
and registrations were jeopardized by the false declarations;
failing to provide competent representation by, inter alia: (i)
failing to adequately supervise his employees or adequately
review their work, thus permitting them to create false or
fraudulent specimens and/ or digitally altered images of
marks that did not depict the actual mark as used in
commerce and file these specimens with the Office, and as a
result, in some cases, the USPTO issued trademark
registrations based on the false or fraudulent specimens or
digitally altered marks, putting the validity of the resulting
trademarks in jeopardy, and/ or (ii) failing to inform his
clients that their trademark registrations or applications were
potentially invalid and/ or take timely and effective remedial
action on their behalf and/ or offer or provide restitution to
them);
q. 37 C.F.R. § 11.104(a) (failing to keep his client reasonably
informed by, inter alia: (i) not informing Ms. Teague of the
Office Action received on her behalf in U.S. Trademark
12
Application No. 86/287,301 and by not informing her that he
had filed substitute specimens without confirming with her
whether the substitute specimens depicted her mark as used
in commerce, and/ or (ii) failing to inform his clients that their
trademark registrations or applications were potentially
invalid and/ or take timely and effective remedial action on
their behalf and/ or offer or provide restitution to them);
r. 37 C.F.R. § 11.115(a) (failing to hold property of a client or
third person that is in the lawyer's possession in connection
with a representation separate from the lawyer's own
property, by depositing fees paid in advance by clients for
trademark legal services and costs into his operating account);
s. 37 C.F.R. § ll.115(c) (failing to deposit into a client trust
account legal fees and expenses that have been paid in
advance, to be withdrawn by the practitioner only as fees are
earned or expenses incurred, by depositing fees paid in
advance by clients for trademark legal services and costs into
his operating account);
t. 37 C.F.R. § ll.303(a)(l) (knowingly making a false statement
of fact to a tribunal or failing to correct a false statement of
material fact previously made to the tribunal by the
practitioner by, inter alia: failing to inform the USPTO of the
potentially invalid applications and/ or registrations that
resulted from the filing of false or fraudulent specimens or
digitally altered marks);
u. 37 C.F.R. § ll.303(d) (failing, in an ex parte proceeding, to
inform the tribunal of all material facts known to the
practitioner that will enable the tribunal to make an informed
decision, even if the facts are adverse by, inter alia: directing
or allowing his employees to sign or forge his name to § 2(f)
declarations and file the § 2(f) declarations with the Office,
when (i) he knew that the Trademark Examining Attorneys
would rely on the declarations when examining trademark
applications and issuing registrations and/ or (ii) he knew or
should have known his employees did not have adequate
knowledge to aver, "The mark has become distinctive of the
goods/services through the applicant's substantially
exclusive and continuous use in commerce that the U.S.
Congress may lawfully regulate for at least the five years
13
immediately before the date of this statement;"; failing, in an
ex parte proceeding, to inform the tribunal of all material facts
known to the practitioner that will enable the tribunal to make
an informed decision, even if the facts are adverse, by, inter
alia, failing to inform the USPTO of the potentially invalid
applications and/ or registrations that resulted from the filing
of false or fraudulent specimens or digitally altered marks);
v. 37 C.F.R. § 11.503(a) (failing to make reasonable efforts to
ensure that The Trademark Company had in effect measures
giving reasonable assurance that its employees' conduct was
compatible with Respondent's professional obligations, as is
required by him as a partner or a person of comparable
managerial authority of The Trademark Company by, inter
alia: failing to adequately supervise his employees or
adequately review their work, thus permitting them to create
false or fraudulent specimens and/ or digitally altered images
of marks that did not depict the actual mark as used in
commerce and file these specimens with the Office, and as a
result, in some cases, the USPTO issued trademark
registrations based on the false or fraudulent specimens or
digitally altered marks, putting the validity of the resulting
trademarks in jeopardy);
w. 37 C.F.R. § 11.503(b) (failing to make reasonable efforts to
ensure that the conduct of The Trademark Company
employees over whom he had direct supervisory authority
was compatible with Respondent's professional obligations
by, inter alia: failing to adequately supervise his employees or
adequately review their work, thus permitting them to create
false or fraudulent specimens and/ or digitally altered images
of marks that did not depict the actual mark as used in
commerce and file these specimens with the Office, and as a
result, in some cases, the USPTO issued trademark
registrations based on the false or fraudulent specimens or
digitally altered marks, putting the validity of the resulting
trademarks in jeopardy);
x. 37 C.F.R. § 11.503(c) (ordering or ratifying the conduct of the
employees of The Trademark Company which would have
been a violation of the USPTO Rules of Professional Conduct
had it been committed by a practitioner, and/ or failing to take
remedial measures once he learned of the conduct by, inter
14
alia: (i) failing to adequately supervise his employees or
adequately review their work, thus permitting them to create
false or fraudulent specimens and/ or digitally altered images
of marks that did not depict the actual mark as used in
commerce and file these specimens with the Office, and as a
result, in some cases, the USPTO issued trademark
registrations based on the false or fraudulent specimens or
digitally altered marks, putting the validity of the resulting
trademarks in jeopardy, (ii) failing to inform his clients that
their trademark registrations or applications were potentially
invalid and/ or take timely and effective remedial action on
their behalf and/ or offer or provide restitution to them,
and/ or (iii) failing to inform the USPTO of the potentially
invalid applications and/ or registrations that resulted from
the filing of false or fraudulent specimens or digitally altered
marks);
y. 37 C.F.R. § 11.504(a) (sharing legal fees with a non
practitioner by paying employees non-discretionary monthly
bonuses tied to the proceeds generated by the trademark legal
services provided to applicants with whom they interacted);
z. 37C.F.R.§11.505 (assisting other persons in the unauthorized
practice of law before the USPTO by, inter alia: (i) directing or
allowing his employees to prepare, sign, and file trademark
applications, responses to Office Actions, and other
trademark documents; directing or allowing his employees to
provide legal advice and guidance to trademark applicants;
and/ or directing or allowing his employees to communicate
with his clients about trademark search reports and opinions,
without his involvement or supervision; and/ or (ii) not
reviewing trademark applications and other trademark
documents (e.g., responses to Office Actions) prepared and
filed by his employees before they were filed with the Office);
aa. 37 C.F.R. § 11.701 (making false or misleading
communications about the practitioner or the practitioner's
services by, inter alia: advertising on The Trademark
Company's website that trademark applications would be
prepared by an attorney when Respondent knew that
trademark applications were not prepared or reviewed by an
attorney prior to being filed with the USPTO);
15
bb. 37 C.F.R. §11.SOl(b) (failing to respond to lawful requests for
information and failing to cooperate with OED by inter alia: (i)
telling a witness not to talk to OED; (ii) falsely telling potential
witnesses that talking to OED could affect their trademark
rights; (iii) withholding the names of former employees for
months; and/ or (iv) not providing OED with the documents
it sought (invoices, employment agreements, correspondence
about§ 2(£) declarations, and/ or a privilege log));
cc. 37 C.F.R. § ll.804(c) (engaging in conduct involving
dishonesty, fraud, deceit, or misrepresentation by, inter alia:
not informing clients who purchased trademark legal services
from The Trademark Company that their applications and
other trademark documents were not prepared or reviewed
by an attorney prior to being filed with the Office; engaging
in conduct involving dishonesty, fraud, deceit, or
misrepresentation by, inter alia: (i) not personally
electronically signing trademark applications and trademark
documents filed with the USPTO and, instead, directing or
allowing his employees to sign or forge his electronic
signature to the documents, thereby misleading the USPTO,
his clients, and the public into believing that Respondent had
actually signed the trademark application or trademark
document; and/ or (ii) not affirmatively informing the
Trademark Examining Attorney that the actual signatory, the
employee, was not identified on the document; engaging in
conduct involving dishonesty, fraud, deceit, or
misrepresentation by, inter alia: directing or allowing his
employees to sign or forge his name to § 2(£) declarations and
file the § 2(f) declarations with the Office, when (i) he knew
that the Trademark Examining Attorneys would rely on the
declarations when examining trademark applications and
issuing registrations, and/ or (ii) he knew or should have
known his employees did not have adequate knowledge to
aver, "The mark has become distinctive of the goods/ services
through the applicant's substantially exclusive and
continuous use in commerce that the U.S. Congress may
lawfully regulate for at least the five years immediately before
the date of this statement;" engaging in conduct involving
dishonesty, fraud, deceit, or misrepresentation, by, inter alia:
(i) failing to adequately supervise his employees or
adequately review their work, thus permitting them to create
false or fraudulent specimens and/ or digitally altered images
16
of marks that did not depict the actual mark as used in
commerce and file these specimens with the Office, and as a
result, in some cases, the USPTO issued trademark
registrations based on the false or fraudulent specimens or
digitally altered marks, putting the validity of the resulting
trademarks in jeopardy, (ii) failing to inform his clients that
their trademark registrations or applications were potentially
invalid and/ or take timely and effective remedial action on
their behalf and/ or offer or provide restitution to them,
and/ or (iii) failing to inform the USPTO of the potentially
invalid applications and/ or registrations that resulted from
the filing of false or fraudulent specimens or digitally altered
marks; engaging in conduct involving dishonesty, fraud,
deceit, or misrepresentation by, inter alia: (i) not informing
clients who purchased trademark legal services from The
Trademark Company that their applications and other
trademark documents were not prepared or reviewed by an
attorney prior to being filed with the Office; and/ or (ii)
collecting fees from clients for trademark legal services that
were supposed to be performed by an attorney when their
applications and other trademark documents were not
prepared or reviewed by an attorney prior to being filed with
the Office; engaging in conduct involving dishonesty, fraud,
deceit, or misrepresentation by, inter alia, falsely telling
potential witnesses that talking to OED could affect their
trademark rights);
dd. 37 C.F.R. § 11.804(d) (engaging in conduct prejudicial to the
administration of justice by, inter alia: (i) directing or allowing
his employees to prepare, sign, and file trademark
applications, responses to Office Actions, and other
trademark documents; directing or allowing his employees to
provide legal advice and guidance to trademark applicants;
and/ or directing or allowing his employees to communicate
with his clients about trademark search reports and opinions,
without his involvement or supervision; and/ or (ii) not
reviewing trademark applications and other trademark
documents (e.g., responses to Office Actions) prepared and
filed by his employees before they were filed with the Office;
engaging in conduct prejudicial to the administration of
justice by, inter alia: (i) failing to comply with the USPTO's
electronic signature rules by not personally electronically
signing trademark applications and trademark documents
17
filed with the USPTO and, instead, directing or allowing his
employees to sign or forge his electronic signature to the
documents, which resulted in the validity of registered
trademarks being jeopardized and/ or (ii) directing or
allowing his employees to sign or forge his electronic
signature to trademark applications and other trademark
documents knowing that the actual signatory, the employee,
was not identified on the documents contrary to
Respondent's certifications under § 11.18; engaging in
conduct that is prejudicial to the administration of justice by,
inter alia: directing or allowing his employees to sign or forge
his name to § 2(f) declarations and file the § 2(f) declarations
with the Office, when (i) he knew that the Trademark
Examining Attorneys would rely on the declarations when
examining trademark applications and issuing registrations,
and/ or (ii) he knew or should have known his employees did
not have adequate knowledge to aver, "The mark has become
distinctive of the goods/services through the applicant's
substantially exclusive and continuous use in commerce that
the U.S. Congress may lawfully regulate for at least the five
years immediately before the date of this statement;" and/ or
(iii) he knew that (a) the actual signatory, the employee, was
not identified on the document and (b) the actual signatory,
the employee, did not have the knowledge to support the
factual contentions found in the declaration; engaging in
conduct that is prejudicial to the administration of justice by,
inter alia: (i) failing to adequately supervise his employees or
adequately review their work, thus permitting them to create
false or fraudulent specimens and/ or digitally altered images
of marks that did not depict the actual mark as used in
commerce and file these specimens with the Office, and as a
result, in some cases, the USPTO issued trademark
registrations based on the false or fraudulent specimens or
digitally altered marks, putting the validity of the resulting
trademarks in jeopardy, and/ or (ii) failing to inform the
USPTO of the potentially invalid applications and/ or
registrations that resulted from the filing of false or
fraudulent specimens or digitally altered marks; engaging in
conduct prejudicial to the administration of justice by, inter aliri: (i) telling a witness not to talk to OED; (ii) falsely telling
potential witnesses that talking to OED could affect their
trademark rights; (iii) withholding the names of former
employees for months; and/ or (iv) not providing OED with
18
the documents it sought (invoices, employment agreements,
correspondence about § 2(f) declarations, and/ or a privilege
log));
ee. 37 C.F.R. § 11.804(i) (engaging in any other conduct that
adversely re£1ects on the practitioner's fitness to practice
before the Office, by engaging in the conduct referenced in
Count I of the Complaint, to the extent that the conduct does
not otherwise violate another provision of the USPTO Rules
of Professional Conduct; engaging in any other conduct that
adversely refiects on the practitioner's fitness to practice
before the Office, by engaging in the conduct referenced in
Count II of the Complaint, to the extent that the conduct does
not otherwise violate another provision of the USPTO Rules
of Professional Conduct; engaging in any other conduct that
adversely refiects on the practitioner's fitness to practice
before the Office, by engaging in the conduct referenced in
Count III of the Complaint to the extent that his conduct does
not otherwise violate a provision of the USPTO Rules of
Professional Conduct; engaging in any other conduct that
adverse] y refiects on the practitioner's fitness to practice
before the Office, by engaging in the conduct referenced in
Count IV of the Complaint to the extent that his conduct does
not otherwise violate a provision of the USPTO Code of
Professional Responsibility; engaging in any other conduct
that adversely refiects on the practitioner's fitness to practice
before the Office, by engaging in the conduct referenced in
Count V of the Complaint, to the extent that the conduct does
not otherwise violate another provision of the USPTO Rules
of Professional Conduct; other conduct that adversely refiects
on the practitioner's fitness to practice before the Office, by
engaging in the acts and omissions described in Count VIII
above).
3. Without admitting that he violated any of the Disciplinary Rules of the USPTO
Code of Professional Responsibility and/ or the Rules of Professional Conduct which are
the subject of the disciplinary complaint in Proceeding No. D2016-20, he acknowledges
that, if and when he applies for reinstatement to practice before the USPTO in trademark
or other non-patent matters under 37 C.F.R. § 11.60, the OED Director will conclusively
19
presume, for the limited purpose of determining the application for reinstatement, that
(a) the allegations regarding him in the complaint filed in Proceeding No. D2016-20 are
true and (b) he could not have successfully defended himself against such allegations.
4. He has fully read and understands 37 C.F.R. §§ 11.5(b), 11.27, 11.58, 11.59, and
11.60, and is fully aware of the legal and factual consequences of consenting to exclusion
from practice before the USPTO in trademark and non-patent matters.
5. He consents to being excluded from practice before the USPTO in trademark
and non-patent matters.
Exclusion on Consent
Based on the foregoing, the USPTO Director has determined that Respondent's
Affidavit For Consent Exclusion complies with the requirements of 37 C.F.R. § 11.27(a).
Accordingly, it is hereby ORDERED that:
1. Respondent's Affidavit For Consent Exclusion shall be, and hereby is,
approved;
2. Respondent shall be, and hereby is, excluded on consent from practice
before the Office in trademark and non-patent matters commencing on the date of this
Final Order;
3. The OED Director shall electronically publish the Final Order at the Office
of Enrollment and Discipline's electronic FOIA Reading Room, which is publicly
accessible at http://e-foia.uspto.gov/Foia/ OEDReadingRoom.jsp;
4. The OED Director shall publish a notice in the Official Gazette that is
materially consistent with the following:
20
Notice of Exclusion on Consent
This notice concerns Matthew H. Swyers of Vienna, Virginia, an
attorney licensed to practice law in the Commonwealth of Virginia
and the District of Columbia and practicing before the United States
Patent and Trademark Office ("USPTO" or "Office) in trademark
matters. The Director of the USPTO has accepted Mr. Swyers'
affidavit for consent exclusion and ordered his exclusion on consent
from practice before the Office in trademark and non-patent matters.
Mr. Swyers voluntarily submitted his affidavit at a time when a
disciplinary complaint was pending against him. The complaint
alleged that Mr. Swyers, an experienced trademark lawyer and
former USPTO Trademark Examining Attorney, established The
Trademark Company, PLLC, and through that business
systematically permitted non-attorneys to practice trademark law
for him with little or no supervision. The complaint alleged that Mr.
Swyers, the sole attorney at the company, did not personally review
or sign thousands of trademark applications and related documents
(including statements of use, § 2(f) declarations, and responses to
Office actions) prepared by his non-lawyer employees and filed with
the USPTO, in violation of USPTO signature and certification rules
and despite assurances on the company website that trademark
applicants would be represented by a specialized attorney. Further,
the complaint alleged that, as a result of Mr. Swyers' failure to
supervise his employees, multiple fraudulent or digitally
manipulated specimens of use were filed with the Office, which
potentially jeopardized the trademark applications of his clients. The
complaint also asserted that Mr. Swyers failed to deposit client funds
paid in advance into a client trust account and improperly split legal
fees with his non-practitioner employees. Finally, the complaint
alleged that Mr. Swyers failed to respond to lawful requests for
information or cooperate with the investigation conducted by the
Office of Enrollment and Discipline.
Mr. Swyers' affidavit acknowledged that the disciplinary complaint
filed against him alleged that his conduct violated the following
provisions of the USPTO Code of Professional Responsibility, for
conduct prior to May 3, 2013: 37 C.F.R. §§ 10.23(a) (engaging in
disreputable or gross misconduct); 10.23(b)(4) (engaging in conduct
involving dishonesty, fraud, deceit, or misrepresentation);
21
10.23(b)(5) (engaging in conduct prejudicial to the administration of
justice); 10.23(a) and (b) via 10.23(c)(2)(ii) (knowingly giving false or
misleading information or knowingly participating in a material
way in giving false or misleading information to the USPTO or any
employee of the USPTO); 10.23(a) and (b) via 10.23(c)(15) (violating
the certifications made to the USPTO under 37 C.F.R. § 11.18);
10.31(a) (deceiving or misleading prospective applicants or other
persons having immediate or prospective business before the Office
by advertising with respect to prospective business before the
Office); 10.47(a) and (c) (aiding a non-practitioner in the
unauthorized practice of law before the Office); 10.48 (sharing legal
fees with a non-practitioner); 10.77(b) (handling a legal matter
without preparation adequate under the circumstances); 10.77(c)
(neglecting client matters); 10.84(a)(1) (intentionally failing to seek
the lawful objectives of a client); 10.84( a)(3) (intentionally
prejudicing or damaging the client during the course of a
professional relationship); 10.89(c)(6) (intentionally or habitually
violating any provision of the USPTO Code of Professional
Responsibility while appearing in a professional capacity before a
tribunal); 10.112(a) (failing to deposit legal fees paid in advance into
a separate client trust account); and 10.23(b)(6) (engaging in other
conduct that adversely reflects on the practitioner's fitness to
practice before the Office).
Mr. Swyers's affidavit also acknowledged that the disciplinary
complaint alleged that his conduct violated the following provisions
of the USPTO Rules of Professional Conduct, for conduct on or after
May 3, 2013: 37 C.F.R. §§ 11.101 (failure to provide competent
representation); 11.104(a)(3) (failing to keep the clients reasonably
informed about the status of a matter); 11.115(a) (failing to hold
property of a client or third person that is in the lawyer's possession
in connection with a representation separate from the lawyer's own
property); 11.115(c) (failing to deposit into a client trust account legal
fees and expenses that have been paid in advance, to be withdrawn
by the practitioner only as fees are earned or expenses incurred);
11.303(a)(1)(knowingly making a false statement of fact to a tribunal
or failing to correct a false statement of material fact previously made
to the tribunal); 11.303( d) (failing, in an ex parte proceeding, to inform
the tribunal of all material facts known to the practitioner that will
enable the tribunal to make an informed decision, even if the facts
are adverse); 11.503(a) (failing to make reasonable efforts to ensure
that The Trademark Company had in effect measures giving
reasonable assurance that its employees' conduct was compatible
22
with Respondent's professional obligations); 11.503(b) (failing to
make reasonable efforts to ensure that the conduct of The Trademark
Company employees over whom he had direct supervisory
authority was compatible with Respondent's professional
obligations); 11.503(c) (ordering or ratifying the conduct of the
employees of The Trademark Company which would have been a
violation of the USPTO Rules of Professional Conduct had it been
committed by a practitioner, and/ or failing to take remedial
measures once he learned of the conduct); 11.504(a) (sharing legal
fees with a non-practitioner); 11.505 (aiding in the unauthorized
practice of law before the USPTO); 11.701 (making false or
misleading communications about the practitioner or the
practitioner's services); 11.801 (b) (failing to cooperate with the Office
of Emollment and Discipline in an investigation); 11.804(c)
(engaging in conduct involving dishonesty, fraud, deceit or
misrepresentation); 11.804( d) (engaging in conduct that is prejudicial
to the administration of justice); and 11.804(i) (engaging in the acts
and omissions that adversely reflect on Respondent's fitness to
practice before the Office).
While Mr. Swyers did not admit to violating any of the Disciplinary
Rules of the USPTO Code of Professional Responsibility or the
USPTO Rules of Professional Conduct as alleged in the pending
disciplinary complaint, he acknowledged that, if and when he
applies for reinstatement, the OED Director will conclusively
presume, for the limited purpose of determining the application for
reinstatement, that (i) the allegations set forth in the OED
investigation against him are true, and (ii) he could not have
successfully defended himself against such allegations.
This action is taken pursuant to the provisions of 35 U.S.C.
§§ 2(b)(2)(D) and 32, and 37 C.F.R. §§ 11.27 and 11.59. Disciplinary
decisions involving practitioners are posted for public reading at the
Office of Enrollment and Discipline Reading Room, available at:
http://go.usa.gov/x9rhg.
5. Respondent shall comply fully with 37 C.F.R. § 11.58; and
23
6. Respondent shall comply fully with 37 C.F.R. § 11.60 upon any request for
reinstatement.
セ@David Shewchuk
Deputy General Counsel for General Law
United States Patent and Trademark Office
on behalf of
Michelle K. Lee
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
cc:
Director of the Office of Emollment and Discipline
U.S. Patent and Trademark Office
Danny M. Howell
Robert Jackson Martin IV
Anne M. Sterba
Law Office of Danny M. Howell, PLLC
2010 Corporate Ridge, Suite 700
Mclean, VA 22102
Counsel for Matthew H. Swyers
24
GRセ@ QセQQ@ 20\ l
Date
I N THE UNI TED STATES PATENT AND TRADEMARK OFFI CE
BEFORE THE TRADEMARK TRI AL AND APPEAL BOARD
EXHI BI T B
Hallmark Licensing, LLC
Opposer,
v.
Hallmark I ndust r ies, I nc.,
Applicant .
Consolidated Opposit ion No.
9 1 2 1 1 3 9 2 ( PARENT)
91215884
I N THE UNI TED STATES PATENT AND TRADEMARK OFFI CE
BEFORE THE TRADEMARK TRI AL AND APPEAL BOARD
EXHI BI T C
Hallmark Licensing, LLC
Opposer,
v.
Hallmark I ndust r ies, I nc.,
Applicant .
Consolidated Opposit ion No.
9 1 2 1 1 3 9 2 ( PARENT)
91215884
UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF VIRGINIA
Alexandria Division
MATTHEW H. SWYERS, )
)
Plaintiff, )
)
vs. ) Civil Action No. 1:16cv15
)
UNITED STATES PATENT & )
TRADEMARK OFFICE, et al., )
)
Defendants. )
_________________________________ )
MEMORANDUM OF LAW IN SUPPORT OF UNITED STATES PATENT &
TRADEMARK OFFICE’S MOTION TO DISMISS
DANA J. BOENTE
UNITED STATES ATTORNEY
DENNIS C. BARGHAAN, JR.
Assistant U.S. Attorney
2100 Jamieson Avenue
Alexandria, Virginia 22314
Telephone: (703) 299-3891
Fax: (703) 299-3983
Email: [email protected]
DATE: March 22, 2016 ATTORNEYS FOR DEFENDANTS
OF COUNSEL: Tracy Kepler
United States Patent and Trademark Office
Case 1:16-cv-00015-LO-IDD Document 15 Filed 03/22/16 Page 1 of 29 PageID# 383
1
INTRODUCTION
It is difficult to overstate the importance of intellectual property in our modern society.
The United States Patent and Trademark Office (“USPTO”) is charged with not only regulating
intellectual property issues, but also with ensuring the integrity and fairness of the system itself –
including those practitioners who represent the intellectual property interests of others before the
USPTO. To this end, as the Federal Circuit has held, Congress and the USPTO have created a
comprehensive scheme governing the regulation of those practitioners, including a process by
which the USPTO investigates the conduct of a practitioner, and if necessary, the Director of
USPTO’s Office of Enrollment and Discipline (“OED”) files and ultimately prosecutes charges
of unprofessional conduct. That scheme provides a practitioner with extensive procedural
protections, including the ability to present oral testimony and written evidence before an
independent hearing examiner on the record, and an avenue for administrative and judicial
review of any adverse decision.
Plaintiff Matthew Swyers is a practitioner who has represented thousands of individuals
and entities before the USPTO in trademark matters. After an investigation into his conduct as a
trademark practitioner, and a finding of probable cause to believe he had engaged in substantial
misconduct by an independent committee of USPTO officials, the OED Director has filed a
lengthy complaint against plaintiff that presents eight separate counts of violations of USPTO’s
professional responsibility rules. Plaintiff will now have the ability to defend himself against
those charges before an independent hearing officer (an administrative law judge outside of the
USPTO), and to appeal any adverse decision to the USPTO Director, and then – if necessary – to
this Court.
Case 1:16-cv-00015-LO-IDD Document 15 Filed 03/22/16 Page 2 of 29 PageID# 384
2
Despite this exclusive scheme for administrative and judicial review of USPTO
disciplinary decision-making, plaintiff now asks this Court to intervene while his disciplinary
proceeding remain pending, and to enjoin the USPTO from continuing with charges that are
premised on his alleged failure to respond to requests for information (“RFI”) that he maintains
were unconstitutional. Leaving aside the fact that plaintiff eschewed the opportunity to
challenge the propriety of the RFIs during the investigation via a specific review mechanism that
the USPTO created for exactly that purpose, see 37 C.F.R. § 11.2(e), plaintiff can present his
constitutional arguments during the ongoing administrative process in defense of the very
charges that he asks this Court to enjoin. But more importantly, the Supreme Court has held that
federal courts lack jurisdiction to entertain claims for equitable relief against ongoing
administrative proceedings when Congress has – as here – created a specific scheme within a
particular context for administrative and judicial review. Accordingly, any Article III judicial
review of the propriety of the disciplinary charges against plaintiff must await a final
administrative decision from the USPTO Director, and be presented to this Court pursuant to 35
U.S.C. § 32.
Nevertheless, nothing about the RFIs in question ran afoul of plaintiff’s Fourth and Fifth
Amendment rights. As Judge Motz provided in a separate opinion for the Fourth Circuit nearly a
decade ago, an individual does not enjoy any procedural due process protections with respect to
investigative fact-finding by an agency; rather, it is only when an agency actually seeks to
impose a sanction (here, by filing disciplinary charges against a practitioner) that due process
attaches. Nor were any of the RFIs so over-broad – especially in relation to the USPTO’s scope
of inquiry – to come within the ambit of the Fourth Amendment.
Case 1:16-cv-00015-LO-IDD Document 15 Filed 03/22/16 Page 3 of 29 PageID# 385
3
STATUTORY AND REGULATORY BACKGROUND
In this action, plaintiff asks this Court to exercise judicial review in the middle of the
intricate and comprehensive scheme through which – pursuant to Congress’s express
authorization – the USPTO investigates putative misconduct on the part of those who represent
others before the agency and, in appropriate cases, seeks discipline against those individuals that
are alleged to have acted in contravention of the USPTO’s rules of professional conduct
(“RPC”). It is thus appropriate at the threshold to provide a detailed description of that scheme,
including the several opportunities that are available for administrative and judicial review of
USPTO decision-making and action in the disciplinary context.
I. USPTO’S AUTHORITY TO REGULATE THE CONDUCT OF PRACTITIONERS BEFORE THE
AGENCY
Congress has vested the USPTO with the authority to promulgate regulations
“govern[ing] the recognition and conduct of agents, attorneys, or other persons representing
applicants or other parties before the Office.” 35 U.S.C. § 2(b)(2)(D); see also Haley v. Under
Sec’y of Commerce for Intellectual Prop., --- F. Supp. 3d ---, 2015 WL 5277880, at *8 (E.D. Va.
Sept. 8, 2015). The Federal Circuit has repeatedly recognized that this provision grants broad
authority to the USPTO to govern the conduct of proceedings before the USPTO, and to govern
the recognition and conduct of practitioners who appear before the USPTO. See, e.g., Lacavera
v. Dudas, 441 F.3d 1380, 1383 (Fed. Cir. 2006).
Pursuant to this authority, the USPTO has enacted its own Rules of Professional Conduct
(“RPC”), see 37 C.F.R. §§ 11.101-.901, which govern the conduct of all practitioners engaged in
practice before the USPTO. The USPTO has also, based on 35 U.S.C. §§ 2(b)(2)(D) and 32,
promulgated specific regulations governing the investigation of alleged violations of the RPC on
the part of practitioners, and proceedings geared towards adjudicating both whether practitioners
Case 1:16-cv-00015-LO-IDD Document 15 Filed 03/22/16 Page 4 of 29 PageID# 386
4
have engaged in professional misconduct, and if so, the appropriate sanction for such
misconduct. See 37 C.F.R. §§ 11.2; 11.19-11.60.
II. THE DISCIPLINARY PROCESS
A. DISCIPLINARY INVESTIGATIONS
The disciplinary process commences when the Director of USPTO’s Office of
Enrollment and Discipline (“OED”) receives information suggesting professional misconduct on
the part of a practitioner, and initiates an investigation.1
1. Prior to 2004, there existed scant formal legal guidance concerning OED’s investigations
into allegations of misconduct. Indeed, USPTO’s regulations simply provided that the OED
Director’s duties included the “[c]onduct [of] investigation into possible violations of the
Disciplinary Rules.” 37 C.F.R. § 10.2(b)(2); see also id. § 10.131(a) (providing that the
“Director is authorized to investigate possible violations of Disciplinary Rules by practitioners”).
No specific regulatory provision identified either the types of investigatory tools at OED’s
disposal, or those mechanisms that were available to a practitioner to challenge decisions made
or actions taken by OED during the course of an investigation. And in all candor, in early 2004,
the Fourth Circuit criticized these gaps in USPTO’s regulatory structure. See Goldstein v.
Moatz, 364 F.3d 205, 217-18 (4th
Cir. 2003). But, contrary to the allegations contained in
plaintiff’s complaint here, Complaint, ¶1, since the Fourth Circuit’s decision in Goldstein, the
USPTO has now filled those gaps.
2.a. Initially, the USPTO’s regulations now clearly provide that OED officials can – as a part
of their investigation into potential misconduct on the part of a practitioner – “request
1Such allegations of misconduct can come to the attention of the OED Director, see 37
C.F.R. § 11.2(b) (delineating duties of OED Director), in any number of ways. For instance, an
individual outside USPTO – e.g., a client, court, or other agency – can report such allegations to
OED, and USPTO personnel can similarly identify potential misconduct for investigation. See
37 C.F.R. § 11.22(b).
Case 1:16-cv-00015-LO-IDD Document 15 Filed 03/22/16 Page 5 of 29 PageID# 387
5
information and evidence regarding possible grounds for discipline of a practitioner,” 37 C.F.R.
§ 11.22(f)(1), colloquially known as “requests for information” or “RFIs.” OED can exercise
this authority to request information from the “grievant” (i.e., the individual who tendered the
complaint of alleged misconduct), the member him or herself, or “[a]ny person who may
reasonably be expected to provide information and evidence needed in connection with the
grievance or investigation.” Id. As the USPTO noted in promulgating these new rules to the
public, “[r]equesting information and documents from practitioners . . . enables the OED
Director, and ultimately the [USPTO], to efficiently and effectively ascertain whether grounds
for disciplining a practitioner exist.” Changes to Representation of Others Before the United
States Patent and Trademark Office, 72 Fed. Reg. 9196, 9200 (Feb. 28, 2007). And for this
reason, consistent with the vast majority of state bar rules, USPTO’s RPC provide that if a
practitioner “knowingly fail[s] to respond to a lawful demand or request for information” not
protected by the rule on client confidences, such represents an independent ethical violation for
which the practitioner may be disciplined. 37 C.F.R. § 11.801(b) (emphasis added); see also VA.
R. PROF. COND. 8.1(c) (providing that Virginia practitioners “shall not . . . fail to respond to a
lawful demand for information from an admissions or disciplinary authority”).2
Additionally, OED can request information directly from a client of the practitioner under
investigation – even if that client is not simultaneously the individual who complained about the
practitioner’s conduct – but only after following carefully-circumscribed regulatory procedures
designed to protect against unnecessary intrusion into the sanctity of the attorney-client
relationship. Id. § 11.22(f)(2). In this respect, OED may only seek information from a non-
complaining client of the practitioner in question if (a) the practitioner himself consents, or (b)
2Of course, the highlighted terms above – especially within the context of the instant
action – are significant, as the USPTO must establish that the practitioner knowingly failed to
respond to a request for information that was lawful.
Case 1:16-cv-00015-LO-IDD Document 15 Filed 03/22/16 Page 6 of 29 PageID# 388
6
“upon a finding by a Contact Member of the Committee on Discipline [a group of independent
USPTO employees outside of OED] . . . that good cause exists to believe that the possible
ground for discipline alleged has occurred with respect to non-grieving clients.” Id.
b. But recognizing other concerns about potential investigatory overreaching articulated by
the Fourth Circuit in Goldstein, the USPTO also endeavored to create a remedial mechanism
through which practitioners (or others) could obtain review of OED decision-making and action
– including its issuance of requests for information – during disciplinary investigations:
A party dissatisfied with any action or notice of any employee of the Office of
Enrollment and Discipline during or at the conclusion of a disciplinary investigation shall
seek review of the action or notice upon petition to the OED Director.
Id. § 11.2(e). In order to ensure that the investigation remains on track, and that this petition
process is not utilized by practitioners to preclude the USPTO from filing a disciplinary
complaint within the relevant limitations period,3 any such petition must be filed within thirty
(30) days of the decision or action challenged. See id. Once the OED Director adjudicates the
petition, the party in question may seek administrative appellate review with the USPTO
Director. See id. And importantly, if still dissatisfied, the party may seek Article III judicial
review of the USPTO Director’s final decision on the petition in an appropriate federal court.
See id.; Changes to Representation of Others Before the United States Patent and Trademark
Office, 77 Fed. Reg. 64190, 64191-92 (Oct. 18, 2012) (noting that practitioners dissatisfied with
investigatory action on the part of OED personnel must exhaust these available “administrative
remedies before seeking relief under the Administrative Procedure Act”). As such, in the wake
of the Fourth Circuit’s decision in Goldstein, the USPTO has created specific mechanisms for
3Pursuant to federal statute, USPTO must commence any disciplinary proceeding within
10 years of the allegedly-unprofessional conduct, or within one year of the USPTO’s knowledge
of that conduct. See 35 U.S.C. § 32.
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practitioners to obtain review of requests for information issued by OED during its investigation
of a given practitioner.
B. DISCIPLINARY PROCEEDINGS
1. If, at the conclusion of its investigation, OED believes that a practitioner has engaged in
unethical conduct, it cannot sua sponte charge that practitioner with a violation of the RPC and
seek a disciplinary sanction. Rather, it must present its investigatory findings to a panel the
“Committee on Discipline” – an independent group of attorneys at USPTO outside and
independent of OED.4 See 37 C.F.R. §§ 11.23(b)(1); 11.32. That panel reviews the evidence,
and determines whether there is probable cause to believe that the practitioner has engaged in
conduct violative of the RPC. See id. § 11.32.
If the panel makes this necessary probable cause finding, the OED Director commences
disciplinary proceedings by filing and serving a complaint against the practitioner. See id. §§
11.32; 11.34-35. The practitioner then has at least thirty (30) days to file an answer to the
complaint, see id. § 11.36, and of course, is entitled to legal representation during disciplinary
proceedings, see id. § 11.40.
2. Disciplinary proceedings against USPTO practitioners are conducted and adjudicated by
completely independent “hearing officers” that are outside the immediate supervision of either
the USPTO or OED Directors, see 35 U.S.C. § 32; 37 C.F.R. § 11.39; typically, Administrative
Law Judges (“ALJs”) from other Executive Branch agencies. And these proceedings, although
administrative in nature, bear the hallmarks of traditional litigation, along with the trappings of
due process afforded to litigants in Article III courts. See 35 U.S.C. § 32 (requiring notice and
4In particular, the USPTO Director is responsible for appointing the Committee on
Discipline, the governing regulations mandate that no member of the committee “shall report
directly or indirectly to the OED Director or any employee designated by the USPTO Director to
decide disciplinary matters.” 37 C.F.R. § 11.23(a).
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an opportunity to be heard before a practitioner may be sanctioned). The OED Director bears the
“burden of proving the violation by clear and convincing evidence.” Id. § 11.49.
Hearing officers have extensive independent authority over disciplinary proceedings,
including the issuance of rulings on “motions or other requests” and evidentiary issues during the
course of the proceedings. See id. §§ 11.39(c); 11.43. Although full-fledged discovery is not
authorized as a matter of course, either the OED or a practitioner may move the hearing officer
to authorize discovery in the form of reasonable interrogatories and requests for production of
documents. See id. § 11.52(a). Additionally, the hearing officer presides over oral hearings –
akin to a trial – at which she receives both evidence and legal argument on the record concerning
the charges from both OED and the practitioner. See id. § 11.44.
USPTO’s regulations provide that a hearing officer should issue an initial decision on the
disciplinary charges within nine (9) months of the date on which the initial complaint is filed,
unless circumstances dictate otherwise. See id. § 11.39(d). That initial decision – akin to bench
trials before this Court – must include findings of fact and conclusions of law. See id.
§ 11.54(a)(1). And if the hearing officer concludes that the OED Director has borne his burden
to establish the practitioner’s disciplinary infraction, the decision is also to identify the
appropriate sanction for the misconduct. See id. § 11.54(a)(2).
3. If the practitioner is dissatisfied with the hearing officer’s resolution of the OED
Director’s disciplinary complaint, he has several avenues for administrative and judicial review.
a. Within thirty days of the hearing officer’s decision, the practitioner may notice an appeal
of that decision to the USPTO Director, including a brief that – consistent with the Federal Rules
of Appellate Procedure – identifies the grounds of error on the part of the hearing officer. See id.
§ 11.55. OED is entitled to file a responsive brief, and the practitioner a reply brief. See id.
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Once briefing is completed, the USPTO Director “has authority to conduct a de novo
review of the factual record,” and “may affirm, reverse, or modify the initial decision or remand
to the hearing officer for such further proceedings as [she] may deem appropriate.” Id. § 11.56.
Subsequent to the USPTO Director’s appellate decision, the regulations afford a practitioner who
remains dissatisfied a single opportunity to request reconsideration. Id. § 11.56(c).
b. Once the USPTO Director’s appellate decision becomes final, Congress explicitly
provided a single, streamlined vehicle for Article III review of USPTO disciplinary proceedings,
and in so doing, placed strict limitations on the venue in which that review can be had:
The United States District Court for the Eastern District of Virginia, under such
conditions and upon such proceedings as it by its rules determines, may review the action
of the Director upon the petition of the person so refused recognition or so suspended or
excluded.
35 U.S.C. § 32. As the Federal Circuit has held, § 32 serves as the exclusive means by which a
USPTO practitioner can obtain judicial review of the agency’s disciplinary decisions, and that
such serves as part of the “‘orderly administrative mechanism’ for review” of such issues. See
Franchi v. Manbeck, 972 F.2d 1283, 1288-89 (Fed. Cir. 1992).
FACTUAL BACKGROUND & PROCEDURAL HISTORY5
1. Plaintiff Matthew Swyers is an attorney and trademark practitioner, and thus is currently
authorized to practice before the USPTO in trademark and other non-patent matters. Complaint
(Dkt. No. 1), ¶7; see also 5 U.S.C. § 500. In 2003, Plaintiff founded a law practice called “The
Trademark Company,” which engages in “the representation of clients in the protection of their
5 The following discussion is based on the allegations contained within the four corners of
the complaint, as well as both the attachments to that complaint and the other documents to
which plaintiff refers in the same, all of which may be considered by this Court in adjudicating a
motion to dismiss brought pursuant to Federal Rule 12(b)(6). See Tellabs, Inc. v. Makor Issues
& Rights, Ltd., 551 U.S. 308, 322 (2007). It is also well-settled that this Court can review
materials outside of the complaint in addressing its own jurisdiction pursuant to Federal Rule
12(b)(1). See, e.g., Velasco v. Gov’t of Indonesia, 370 F.3d 392, 398 (4th
Cir. 2004).
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federal trademark and copyright rights.” Id. ¶13. In the thirteen years since its founding, “the
firm has represented over 20,000 clients,” despite the fact that virtually none of the other
individuals that plaintiff employed over that time were licensed attorneys. Id. ¶¶16; 49.
2. In August 2014, OED commenced an investigation into plaintiff’s conduct in his
representation of others before the USPTO in trademark matters. Complaint, ¶18. Consistent
with the regulations governing disciplinary investigations, OED personnel – during its
investigation – transmitted to plaintiff a series of RFIs. Complaint, ¶¶18; 38; 44; 50; 54. It is
these RFIs that form the backbone for many of plaintiff’s allegations in the instant complaint.
Nowhere within the four corners of the complaint, however, does plaintiff once allege that he
challenged the propriety of OED’s transmission of any of these RFIs through the aforementioned
procedure, see 37 C.F.R. § 11.2(e), explicitly created for that purpose.
a. OED transmitted its first RFI to plaintiff on August 29, 2014. Id. ¶18; see also
Defendant’s Exhibit (“DEX”) 1. These first RFIs explained to plaintiff that it had commenced
an investigation after receiving information regarding his trademark application filings, and that
OED was endeavoring “to develop all information relevant to the received information,
including that information which may justify or exonerate the alleged actions.” Id. at 1. The RFI
also provided a list of the RPC that were “under possible consideration,” so that plaintiff could
generally understand the nature of the potential misconduct being investigated. Id. at 3.
And although plaintiff maintains that this – and other – RFIs contains “threats”
concerning plaintiff’s non-compliance with the RFIs, Complaint, ¶19, the actual text of the RFIs
belie this contention. Rather, the RFIs merely serve to remind a practitioner (such as plaintiff
here) of what the RPC already mandate – i.e., that responding to RFIs is not discretionary – so
that a practitioner cannot later feign ignorance:
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It is a violation of the USPTO Rules of Professional Conduct to fail to cooperate with
OED in an investigation of any matter before it, or to knowingly fail to respond to a
request from OED. See 37 C.F.R. § 11.801(b). In addition, if you do not respond to this
request for information, the Committee on Discipline may draw an adverse inference in
making a determination under 37 C.F.R. § 11.23. See Baxter v. Palmigiano, 425 U.S.
308 (1975).
DEX 1.
b. After receiving plaintiff’s response to its first set of RFIs, OED transmitted a second RFI
to plaintiff on December 19, 2014. Id. ¶38 & ex.A. And although it was not required to do so,
OED identified for plaintiff those trademark applications with which plaintiff was identified
about which OED had concerns. Id. ex. A. In a lengthy preface to this RFI, OED informed
plaintiff – with citations to the appropriate provisions of the USPTO’s regulations and the
Trademark Manual of Examining Procedure – of exactly the ethical concerns that animated its
questioning. Id. ex.A., at 13-14. More specifically, OED explained that all documents submitted
to the USPTO in trademark matters must be personally signed by an authorized person –
including those signed electronically – and that an attorney’s paralegal or assistant cannot be the
signatory; thus, OED was concerned that other individuals (i.e., those employed by the
Trademark Company) were signing plaintiff’s name electronically to documents without plaintiff
having done so personally as required. Id. The four queries transmitted in this second RFI, once
distilled to its essence, simply asked plaintiff to identify whether his electronic signature had
ever been affixed to an agency filing by another individual, in violation of USPTO signature
rules for trademark matters.
c. Based on these continued concerns about plaintiff’s non-attorney employees signing and
filing documents with the USPTO under his name, on March 30, 2015, OED transmitted its third
RFI to plaintiff. Id. ¶44; DEX 2. This RFI first asked plaintiff to confirm his prior responses
concerning whether other individuals electronically signed his name to trademark applications.
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DEX 2. And second, this RFI asked plaintiff to provide contact information for current and past
employees of the Trademark Company. DEX 2. Two weeks later, plaintiff responded to this
RFI simply by providing a laundry list of objections to the same, and disclosing information
about one employee. Id. ¶45 & ex.B.
d. In May and June 2015, OED transmitted its final two RFIs to plaintiff. Id. ¶¶50-54, exs.
D-E. These RFIs provided extremely-detailed information about the evidence that OED had
garnered during its investigation to date, including plaintiff’s own admissions, and the potential
misconduct on plaintiff’s part that OED was investigating. And with respect to each series of
requests, OED took the extraordinary step of providing a justification for its requests. As but one
example, OED’s fourth RFI provided as follows, in pertinent part:
Since January 2010, Mr. Swyers filed, or caused to be filed, thousands of trademark
applications and trademark application submissions . . . in the Office. Based on (a) Mr.
Swyers’ admission that he allowed other persons to sign his name to trademark
applications and trademark application submissions filed in the Office under his
electronic signature, and (b) Mr. Swyers’ alleged ignorance of well-known USPTO
signature rules, there is evidence suggesting that Mr. Swyers may have violated
numerous ethical duties that he owes to [his] trademark applicants, to the Office, to the
public, and to the legal profession. Therefore, additional information is requested from
Mr. Swyers as follows.
Id. ex. D., at 2. This comes not from a disciplinary complaint, or from a closing argument before
the Hearing Officer; rather, it is from a RFI transmitted only to plaintiff so that plaintiff can
understand the basis for, and provided complete responses to, OED’s inquiries.6
3. OED’s investigation has now closed. And on March 11, 2016, after the Committee on
Discipline found probable cause that plaintiff had violated the RPC, the OED Director – who is
not a defendant here – commenced disciplinary proceedings against plaintiff through the filing of
6OED personnel also contacted some of plaintiff’s clients to obtain information about his
representation, and did so only after following the process mandated by 37 C.F.R. § 11.22(f)(2),
and receiving permission from an independent member of the Committee on Discipline outside
OED.
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a fifty-six (56) page complaint against plaintiff with an ALJ at the United States Environmental
Protection Agency, who will serve as the independent hearing officer to adjudicate the charges.
DEX 3. That complaint alleges eight separate counts against plaintiff:
Count I – assisting others in engaging in the unauthorized practice of law; failure to
review trademark applications and other trademark documents before filing;
misrepresentations to clients;
Count II – directing or allowing non-lawyer employees to sign or forge [plaintiff’s] name
to trademark applications and other trademark documents filed in the Office, in violation
of the USPTO signature and certification rules;
Count III – directing or allowing employees to sign or forge [plaintiff’s] name to Section
2(f) declarations filed with the Office;
Count IV – filing with the Office fraudulent or digitally altered specimens which did not
reflect the mark’s use in commerce; failure to inform the Office or clients or false or
fraudulent specimens; failure to remedy or offer restitution;
Count V –misrepresentation on website that a lawyer would prepare and review
documents; collecting fees for trademark work done by non-lawyers when representing
to clients that a lawyer would do the work.
Count VI – failure to deposit client funds paid in advance into a client trust account;
Count VII – impermissibly sharing legal fees with non-practitioners;
Count VIII – witness tampering; failure to respond to lawful requests for information or
cooperate with OED.
DEX 3.
More specifically, the complaint alleges, inter alia, that plaintiff “directed or allowed
non-lawyer employees of the Trademark Company to electronically sign or forge [his] electronic
signature to his clients’ trademark application,” and that plaintiff had “admitted to OED that he
did not review the trademark applications before they were filed.” Id. ¶¶34-35. The complaint
also alleges that plaintiff’s employees filed fraudulent specimens (i.e., those that were not
actually being used in commerce) in support of trademark regulations, id. ¶¶91-117; 126-42, and
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that at least two of plaintiff’s former clients had provided evidence corroborating that plaintiff’s
employees had created and filed fraudulent specimens with the agency, id. ¶¶97; 182.
Of import to this action, only one part of a single count of the disciplinary complaint
concerns plaintiff’s responses to the RFIs. Id. at 49-53. In this respect, the complaint identifies
that “[a] practitioner has an ethical duty to cooperate with OED and respond to its lawful
requests for information.” Id. at 48 (citing 37 C.F.R. § 11.801(b)). And that single count
concerns only a few discrete issues with respect to plaintiff’s responses: (1) plaintiff’s failure to
provide client invoices (which would have revealed the firm employee who worked on the
application in question); (2) plaintiff’s failure to provide employment agreements (which would
have revealed evidence of whether plaintiff was impermissibly sharing fees with non-lawyers);
(3) plaintiff’s failure to provide requested § 2(f) declarations (which would have provided
evidence of the veracity of plaintiff’s putative trademark filings); and (4) plaintiff’s refusal to
provide a privilege log to corroborate those materials that he was withholding on the basis of
privilege. Id. at 49-52. The complaint avers that each of the OED’s RFIs were “lawful.” Id.
These disciplinary proceedings are, therefore, in their infancy. Plaintiff now has thirty
days within which to answer the complaint. After plaintiff files his answer, the ALJ – as hearing
officer – will conduct the proceedings, consider motions, receive evidence, and issue an initial
decision on the charges contained within the complaint. Should plaintiff be dissatisfied with that
initial decision, he will be afforded the opportunity to appeal the decision to the USPTO
Director, who will issue a final administrative decision. And as stated earlier, plaintiff can seek
Article III judicial review in this Court from the USPTO Director’s final decision.
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STANDARDS OF REVIEW
I. FEDERAL RULE 12(b)(1)
Federal Rule 12(b)(1) serves as the appropriate vehicle to challenge the court’s subject
matter jurisdiction in a particular matter. See, e.g., Coulter v. United States, 256 F. Supp. 2d
484, 486 n.3 (E.D. Va. 2003), aff’d, 90 Fed. Appx. 60 (4th
Cir. 2004). The plaintiff bears the
burden of establishing the court’s subject matter jurisdiction, and although this Court may utilize
the allegations contained within the four corners of the plaintiff’s complaint as evidence in
determining whether it possesses jurisdiction over a dispute, it may also consider other evidence
outside the pleadings if necessary. See Richmond, Fredericksburg, & Potomac R.R. Corp. v.
United States, 945 F.2d 765, 768 (4th
Cir. 1991); Coulter, 256 F. Supp. 2d at 486 n.3.
II. FEDERAL RULE 12(b)(6)
To the contrary, a motion pursuant to Federal Rule 12(b)(6) serves to test the legal
sufficiency of the plaintiff’s complaint in relation to the factual averments he or she puts
forward. Although a court must accept all well-pled allegations in adjudicating such a motion, it
need not credit allegations that are merely conclusory. See Ashcroft v. Iqbal, 556 U.S. 662, 675
(2009). In Iqbal, the Supreme Court held as follows with respect to the proper standard of
review:
To survive a motion to dismiss, a complaint must contain sufficient factual matter,
accepted as true, to “state a claim to relief that is plausible on its face.” A claim has
factual plausibility when the plaintiff pleads factual content that allow the court to draw
the reasonable inference that the defendant is liable for the misconduct alleged.
Id. at 678 (quoting Twombly, 550 U.S. at 570). Accordingly, although (as before) a court is
required to adjudge the factual averments contained within a complaint against the substantive
law governing the claim, now “where the well-pleaded facts do not permit the court to infer more
than the mere possibility of misconduct,” the complaint fails. Id. at 679 (emphasis added).
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ARGUMENT
Plaintiff’s instant complaint presents two constitutional claims: (a) the RFIs violated
plaintiff’s Fifth Amendment rights to procedural due process, ostensibly because – in plaintiff’s
erroneous view – there is a “complete absence of any means to challenge the RFIs[],”
Complaint, ¶¶1; 67; and (b) the RFIs “amount[] to an unreasonable search within the meaning of
the Fourth Amendment of the United States Constitution.” Id. ¶70. From these claims, against
the USPTO, plaintiff asks this Court to insert itself into the ongoing disciplinary proceedings
before the independent hearing officer by entering an injunction precluding OED from
continuing with charges against plaintiff for failing to respond to the allegedly unlawful RFIs:
Swyers asks this Court to enjoin Defendants on a preliminary and permanent basis from
the enforcement of charges of violations of disciplinary rules based in whole or in part
upon the failure of Swyers to answer to the OED’s satisfaction RFIs that violate Swyers’
constitutional rights.
Id. ¶77.
II. THIS COURT LACKS JURISDICTION OVER PLAINTIFF’S REQUEST FOR JUDICIAL
INTERRUPTION OF AN ONGOING ADMINISTRATIVE PROCEEDING
The gravamen of plaintiff’s request for injunctive relief in this Court is that any
disciplinary charge against plaintiff based upon his purported failure to respond to putatively-
unlawful RFIs would be unfounded, and that this Court should judicially-intervene and eliminate
those charges immediately. But disciplinary proceedings against plaintiff on these (and many
other) grounds have just commenced, and plaintiff – pursuant to the streamlined process of
administrative and judicial review that Congress has mandated – will have a full and fair
opportunity to present his arguments to the hearing officer, and then (if necessary) to the USPTO
Director, and ultimately to this Court. Plaintiff’s injunctive demand thus asks this Court to insert
itself prematurely into this ongoing process and thus to allow him to circumvent Congress’s
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desired system for administrative and judicial review. As described below, binding authority
divests this Court of jurisdiction to entertain such a request.
A. THIS COURT LACKS JURISDICTION TO ENTERTAIN ARGUMENTS OF
CONSTITUTIONAL ERROR OUTSIDE OF THE SPECIFIC JUDICIAL REVIEW
SCHEME THAT CONGRESS PROMULGATED
It is by now axiomatic “that no one is entitled to judicial relief for supposed or threatened
injury until the prescribed administrative remedy has been exhausted.” Thetford Properties IV
L.P. v. HUD, 907 F.2d 445, 448 (4th
Cir. 1990) (noting this to be a “long settled rule of judicial
administration”); see also Myers v. Bethlehem Shipbuilding Corp., 303 U.S. 41, 50-51 (1938).
This rule is no less applicable where a litigant raises issues of a constitutional dimension. See,
e.g., Nationsbank Corp. v. Herman, 174 F.3d 424, 429 (4th
Cir. 1999) (recognizing the
“consistent and unambiguous line of cases rejecting the contention that constitutional claims
should be exempt from the exhaustion requirement”). And although administrative exhaustion is
generally a prudential doctrine, see Volvo GM Heavy Truck Corp. v. Dep’t of Labor, 118 F.3d
205, 211-12 (4th
Cir. 1997), it becomes a jurisdictional mandate where Congress has created an
exclusive system for administrative and judicial review within a particular context.
Where Congress has created a streamlined review scheme that channels judicial review
into a single Article III forum, constitutional challenges must be presented to that forum at the
conclusion of administrative proceedings. As the Supreme Court has held:
As for petitioner’s constitutional claim, we agree that “[a]djudication of the
constitutionality of congressional enactments has generally been thought beyond the
jurisdiction of administrative agencies.” This rule is not mandatory, however . . . [and]
the Commission has addressed constitutional questions in previous enforcement
proceedings. Even if this were not the case, however, plaintiff’s statutory and
constitutional claims here can be meaningfully addressed in the court of appeals.
We conclude that the Mine Act’s comprehensive enforcement scheme, combined with the
legislative history’s clear concern with channeling and streamlining the enforcement
process, establishes a ‘fairly discernible’ intent to preclude district court review in the
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present case. . . . To uphold the District Court’s jurisdiction in these circumstances would
be inimical to the structure and the purposes of the Mine Act.
Thunder Basin Coal Co. v. Reich, 510 U.S. 200, 215 (1994) (emphasis added) (footnotes and
citations omitted) (quoting Johnson v. Robison, 415 U.S. 361, 368 (1974)). Put simply, allowing
a litigant to circumvent Congress’s deliberately-crafted review scheme would both defeat the
purpose behind the streamlined system and merely “duplicate” the specific judicial review that
Congress provided. See Sturm Ruger & Co. v. Herman, 300 F.3d 867, 876 (D.C. Cir. 2002)
(“Our obligation to respect the review process established by Congress bars us from permitting
Sturm Ruger to make this end run [around Congress’s review scheme], and requires dismissal of
its district court complaint.”); see also Hirschberg v. CFTC, 2003 WL 22019310, at *4 (N.D. Ill.
Aug. 27, 2003) (“Because Hirschberg’s constitutional claims also ‘can be meaningfully
addressed in the court of appeals’ . . . this Court’s jurisdiction would duplicate the CEA’s
statutory appeals procedure.”). Put simply, as the Supreme Court has more recently concluded,
“the appropriate inquiry” is “whether it [was] fairly discernible” from the statutory scheme that
Congress intended litigants “to proceed exclusively through the statutory review process.” Elgin
v. Dep’t of the Treasury, 132 S. Ct. 2126, 2133 (2012).
Another Eastern District jurist recently applied these principles to preclude this Court’s
jurisdiction over a request to enjoin the conduct of USPTO administrative proceedings – based
on allegations that those proceedings ran afoul of plaintiff’s constitutional rights – because the
Patent Act established a particular scheme for judicial review. See Cooper v. Lee, 86 F. Supp.
3d 480 (E.D. Va. 2015). In Cooper, plaintiffs were patent owners embroiled in inter partes
review proceedings before the USPTO – proceedings through which the USPTO reconsiders its
prior decision to issue a patent. As here, plaintiffs in Cooper maintained that these inter partes
review proceedings violated their constitutional rights, and asked this Court to enter an
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injunction terminating those proceedings. See id. at 482. Much like its treatment of USPTO
disciplinary proceedings, the Patent Act provided a single avenue for judicial review of
administrative inter partes review proceedings – i.e., an appeal to the Federal Circuit from the
Patent Trial and Appeal Board’s (“PTAB”) final written decision. See 35 U.S.C. § 319. For this
reason, inter alia, Judge Lee concluded that he could not entertain plaintiff’s claims about the
constitutionality of the proceedings, and that any constitutional challenge needed to be presented
to the Federal Circuit at the end of proceedings pursuant to the congressionally-created scheme
for judicial review. See Cooper, 86 F. Supp. 3d at 489.
And so it is here. There can be little doubt that, as the Federal Circuit has already held,
Congress intended that the filing of a petition for review in this Court pursuant to § 32 – after the
USPTO Director issues her final administrative decision – would serve as the exclusive
mechanism for Article III review of disciplinary charges against a USPTO practitioner. It is
well-settled “that a precisely drawn, detailed statute pre-empts more general remedies.” Brown
v. GSA, 425 U.S. 820, 834 (1976). The Patent Act’s establishment of a private right of action
for Article III judicial review for an aggrieved practitioner pursuant to § 32 easily fits this
principle. The process by which the USPTO may seek to discipline an agency practitioner –
including administrative trial proceedings before an independent hearing officer and
administrative appellate proceedings before the USPTO Director – are, as detailed above, both
comprehensive and specific. And at the end of these administrative proceedings, should the
USPTO enter a final order of suspension against a practitioner, Congress provided a specific
cause of action for Article III judicial review of that order. See 35 U.S.C. § 32. For these
reasons, the Federal Circuit has held that litigants cannot raise challenges – constitutional or
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otherwise – to disciplinary proceedings outside of the specific circumstances identified in § 32.
See Franchi v. Manbeck, 972 F.2d 1283, 1288-89 (Fed. Cir. 1992).
But that is exactly what plaintiff asks of this Court – to adjudicate the propriety of a
portion of the pending disciplinary charges against him while administrative proceedings related
to those charges are ongoing, before either the independent hearing officer or the USPTO
Director can render a decision on those disciplinary charges, and outside of the specific avenue
for judicial review Congress authorized. The above authority precludes this Court from
exercising jurisdiction over plaintiff’s attempt to circumvent Congress’s system for
administrative and judicial review of disciplinary charges through a collateral Article III
proceeding. And although not dispositive of this issue, plaintiff has an opportunity to press his
argument that the RFIs in question were unconstitutional during the pending administrative
proceedings.7 As the relevant USPTO RPC provides, plaintiff can only be disciplined for failing
to respond to a “lawful” request for information during investigation, see 37 C.F.R. § 11.801(c);
indeed, OED’s complaint against plaintiff specifically provides that its requests of plaintiff were
“lawful” within the meaning of the rule. DEX 3. Plaintiff will thus be able to argue – to the
independent hearing officer, the USPTO Director, and ultimately this Court within § 32 judicial
review – that OED’s RFI’s were unconstitutional (or, in the parlance of the rule, “unlawful”).
Regardless, however, this Court lacks jurisdiction to consider plaintiff’s request for an
injunction terminating that portion of the disciplinary proceedings against him outside of the
exclusive vehicle for judicial review found in § 32. Plaintiff’s constitutional challenge to any
7Importantly, individuals are still required to traverse a particularized administrative and
judicial review scheme even if an administrative agency cannot provide it the constitutional
relief requested. See, e.g., Ticor Title Ins. Co. v. FTC, 814 F.2d 731, 738 (D.C. Cir. 1987)
(opinion of Edwards, J.) (holding that general exhaustion rule “has been applied even where the
plaintiffs have challenged the very authority of the agency to conduct proceedings against them”)
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potential discipline based on his purported failure to respond to OED’s RFIs in this Court thus
must await the conclusion of administrative review, and proceed pursuant to § 32.
B. THERE HAS BEEN NO “FINAL AGENCY ACTION” OVER WHICH THIS COURT
MAY EXERCISE JURISDICTION
Even if this Court, despite the Federal Circuit’s decision in Franchi, were to conclude that
the administrative and judicial review scheme Congress authorized in § 32 was not the exclusive
means by which to review USPTO disciplinary decisions, there still has been no “final agency
action” over which this Court can exercise judicial review. In this respect, at bottom, plaintiff
seeks judicial review over an ongoing administrative proceeding – a matter generally governed
by the provisions of the Administrative Procedure Act (“APA”). But the APA only authorizes
judicial review over “final agency action.” 5 U.S.C. § 704.
As the Supreme Court has held, the mere filing of an administrative complaint against a
litigant is the antithesis of a “final agency action,” as it is only the beginning of the
administrative process. FTC v. Standard Oil Co., 449 U.S. 232, 241-43 (1980). The rationale
behind this strict limitation is clear: review of a non-final agency decision “interfere[s] with the
proper functioning of the agency and [is] a burden for the courts.” Id. at 242. Allowing district
courts to exercise APA jurisdiction over such action “leads to piecemeal review which at the
least is inefficient and upon completion of the agency process might prove to have been
unnecessary.” Id. Put simply, as delineated above, plaintiff may present his argument that the
RFIs in question were “unlawful,” and that the disciplinary charges based on the same should
thus not be sustained, during his pending disciplinary proceedings – arguments that either the
independent hearing officer or the USPTO Director on administrative appellate review may very
well accept, thus obviating any need whatsoever for this Court’s Article III review.
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22
III. THE RFIS SERVED BY OED’S INVESTIGATORS DID NOT RUN AFOUL OF PLAINTIFF’S
CONSTITUTIONAL RIGHTS
Even if this Court possessed the jurisdiction to intervene in plaintiff’s pending
disciplinary proceedings outside of Congress’s scheme for administrative and judicial review,
there was nothing constitutionally-infirm about either the OED investigators’ RFIs, or the
disciplinary charges based on plaintiff’s responses to the same. As stated above, plaintiff will
have a full and fair opportunity to argue – during the disciplinary hearing before an independent
administrative law judge (and on administrative and judicial review) – that those RFIs were
unconstitutional. But those arguments are meritless, as nothing about OED’s RFIs violated
plaintiff’s Fourth and Fifth Amendment rights.
Nor does this Court consider these constitutional questions on a completely blank slate,
as there has been judicial treatment of virtually identical arguments of constitutional deprivation
to those that plaintiff presents here – Judge Motz’s separate decision in Goldstein v. Moatz, 364
F.3d 205 (4th
Cir. 2003). In Goldstein, another USPTO practitioner under investigation by OED
for professional responsibility violations presented similar constitutional arguments concerning
putatively overbroad and burdensome RFIs. See id. at 210. Judge Motz, writing separately,8
concluded that these allegations “utterly fail[ed] to . . . give rise to any constitutional violation.”
See id. at 220 (Motz., J., dissenting). Citing to the Supreme Court’s decisions in Hannah v.
Larche, 363 U.S. 420 (1960) and SEC v. Jerry T. O’Brien, Inc., 467 U.S. 735, 742 (1984), Judge
8To be sure, Judge Motz’s separate opinion was technically a dissent. But it was not a
traditional dissent in that she was not disagreeing with any legal analysis offered by the panel
majority. In Goldstein, the District Court dismissed the action based on its conclusion that the
defendants were entitled to absolute immunity from suit, and the panel majority reversed that
conclusion. See Goldstein, 364 F.3d at 219. The panel majority did not entertain the merits of
Goldstein’s constitutional arguments, electing to remand the matter back to the District Court.
See id. Judge Motz simply believed that the constitutional merits – the very same arguments that
plaintiff presses here – were too weak even to merit remand, especially because to do so would
“serv[e] only to prolong a plainly meritless case.” Id. at 220 n.1 (Motz, J. dissenting).
Case 1:16-cv-00015-LO-IDD Document 15 Filed 03/22/16 Page 23 of 29 PageID# 405
23
Motz noted that the courts “summarily rejected a number of constitutional challenges to similar
[] investigative procedures,” and had done so with respect “to attorney discipline and public
corruption investigations” as well. Id. at 222 (Motz, J., dissenting). There is no reason for this
Court to depart from Judge Motz’s cogent analysis.
A. THERE IS NO COGNIZABLE PROCEDURAL DUE PROCESS PROTECTION WITH
RESPECT TO INVESTIGATORY FACT-FINDING
Plaintiff first maintains that the OED investigators’ RFIs ran afoul of his Fifth
Amendment rights to procedural due process. The Fifth Amendment to the United States
Constitution generally provides that an individual may not “be deprived of life, liberty, or
property, without due process of law.” U.S. CONST. amend V. The procedural requirements of
the Due Process Clause have not been the subject of precise definition, leaving the minimal
constitutional protections afforded by the provision somewhat difficult to ascertain with any
mechanical certainty. See, e.g., Morrissey v. Brewer, 408 U.S. 471 (1972) (“[D]ue process is
flexible and calls for such procedural protections as the particular situation demands.”).
Notwithstanding the vague decisional authority concerning the contours of the right, the
Supreme Court has held that – from a general perspective – due process protections minimally
require “notice and an opportunity to be heard.” Mallette v. Arlington County Employees’
Supplemental Retirement Sys., 91 F.3d 630, 640 (4th
Cir. 1996).
But as the Supreme Court has repeatedly held, and Judge Motz correctly observed, the
Fifth Amendment’s procedural due process protections do not attach to issues related to agency
fact-finding efforts:
[W]hen governmental agencies adjudicate or make binding determinations which directly
affect the legal rights of individuals, it is imperative that those agencies use the
procedures which have traditionally been associated with the judicial process. On the
other hand, when governmental action does not partake of an adjudication, as for
Case 1:16-cv-00015-LO-IDD Document 15 Filed 03/22/16 Page 24 of 29 PageID# 406
24
example, when a general fact-finding investigation is being conducted, it is not necessary
that the full panoply of judicial procedures be used.
Hannah v. Larche, 363 U.S. 420, 442 (1960) (emphasis added); see also SEC v. Jerry T. O’Brien,
Inc., 467 U.S. 735, 742 (1984) (holding that Hannah “leaves no doubt that [] the Due Process
Clause of the Fifth Amendment” is not “offended when a federal administrative agency . . . uses
its subpoena power to gather evidence”). The same dichotomy applies here. Although plaintiff
seeks injunctive relief with respect to the OED Director’s prosecution of him on charges of
unethical conduct, his constitutional arguments are focused on RFIs that were issued to him
during by the OED investigators during the investigatory process. “The Due Process Clause is
not implicated under such circumstances because an administrative investigation adjudicates no
legal rights.” O’Brien, 467 U.S. at 742. And now that the OED Director has commenced
disciplinary proceedings – during which plaintiff’s “legal rights” will most certainly be
“adjudicated” – plaintiff will receive far more than constitutionally-minimal due process.
Before leaving the Fifth Amendment, it bears mentioning that what ostensibly serves as
the gravamen of plaintiff’s due process claim – i.e., that there is a “complete absence” of any
mechanism to challenge troublesome RFIs – is wildly inaccurate. As stated above, in the wake
of the Fourth Circuit’s Goldstein criticism in this regard, the USPTO created a specific
administrative and judicial review scheme for any action taken by OED personnel during an
investigation. See 37 C.F.R. § 11.2(e). Not only is a dissatisfied practitioner afforded two levels
of administrative review, but any final agency action issued by the USPTO Director on this score
may be appealed to this Court under the APA. Even were due process strictures to attach to
OED investigations – and they do not – the USPTO’s tailor-made process more than adequately
discharge any constitutional obligation.
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25
B. PLAINTIFF DOES NOT ENJOY FOURTH AMENDMENT PROTECTION WITH
RESPECT TO RFIS
1. Plaintiff also maintains that the RFIs “amount[] to an unreasonable search within the
meaning of the Fourth Amendment.” Complaint, ¶70. It is difficult to comprehend the nature of
plaintiff’s claim in this regard, because OED did not attempt to affect anything approaching the
type of “search” that typically animates Fourth Amendment analysis. Based on the briefing in
Goldstein, however, it appears that plaintiff is attempting to equate the Fourth Amendment
jurisprudence applicable to administrative subpoenas to the RFIs at issue here. See, e.g., United
States v. Morton Salt Co., 338 U.S. 632, 642-43 (1950). To the best of undersigned counsel’s
knowledge, there is no decisional authority in this jurisdiction applying this strain of Fourth
Amendment authority to simple requests for information to licensed attorneys during an bar
investigation. This lack of authority is sufficient itself to reject plaintiff’s claim.
Nor should this Court extend Fourth Amendment jurisprudence to encompass RFIs
issued during a fact-finding investigation into putative attorney misconduct. Unlike subpoenas –
which are enforceable through the contempt power of the judiciary – OED RFIs are not
enforceable through any particular mechanism; indeed, failure to comply with a RFI is only
potentially grounds for an independent disciplinary charge, which itself is ultimately adjudicated
through the administrative and judicial review process.9 Cf. In re Bailey, 182 F.3d 860, 862
(Fed. Cir. 1999) (rejecting constitutional arguments against “dilatory and abusive tactics” of a
9Indeed, the Oklahoma Supreme Court has differentiated between requests for
information to an attorney during a disciplinary investigation and a third-party subpoena during
that same investigation. See Oklahoma ex rel. Oklahoma Bar Ass’n v. Gasaway, 863 P.2d 1189,
1198-1200 (Okla. 1993). During a bar investigation, the Oklahoma Bar Association “asked” the
relevant attorney “to provide information and documents,” but the attorney twice “declined to
respond.” Id. at 1198. In response, the Bar Association transmitted a subpoena to a third-party
bank for similar documentation, and – noting that the court was “amply empowered to enforce a
subpoena issued in the course of Bar disciplinary proceeding” – ultimately applied Fourth
Amendment doctrine to the subpoena. Id. at 1199-1200.
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26
bar association during attorney investigation “because the court, not the Committee” ultimately
makes “the determination whether [the attorney] will be subject to discipline”).
2. But in any event, even were the Fourth Amendment law applicable to administrative
subpoenas applicable to OED’s RFIs, there can be little doubt that these RFIs would pass
constitutional muster. As the Supreme Court has held, to be consistent with the Fourth
Amendment, an administrative subpoena is sufficient “if the inquiry is within the authority of the
agency, the demand is not too indefinite, and the information sought is reasonably relevant.”
Morton Salt, 338 U.S. at 652-53. Importantly, this standard is extremely fluid, allows an agency
much leeway, and thus “cannot be reduced to formula” because “relevancy and adequacy or
excess in the breadth of the subpoena are matters variable in relation to the nature, purposes and
scope of the inquiry.” Oklahoma Press Publishing Co. v. Walling, 327 U.S. 186, 209 (1946).
In this respect, plaintiff primarily complains about the breadth of OED’s RFIs,
maintaining that because those requests asked him for information about his representational
efforts over a large period of time (and thus concerned a large number of trademark applications
with which he was allegedly involved), they were overly burdensome. But the Fourth Circuit
has rejected this argument under very analogous circumstances in the context of a subpoena that
would have required a physician “to produce more than 15,000 patient files alone, consisting of
between 750,000 and 1.25 million pages of material” that would obviously been sensitive in
nature. In re Subpoena Duces Tecum, 228 F.3d 341, 345 (4th
Cir. 2000). As the panel provided:
[I]f Bailey had treated 15,000 patients over a period of seven years and all of them were
reimbursed on claims he submitted, a suspicion of fraud on these claims would justify a
review of Bailey’s documentation of services to these patients, of the claims submitted on
their behalf, and of the reimbursements collected. Even though these documents might
be numerous, they would reasonably relate to and further the government’s legitimate
inquiry, which might be defined by any of 13 federal statutory offenses, including fraud.
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27
Id. at 350.10
Here, at their allegedly most burdensome, the RFIs that OED tendered to plaintiff
did not seek the production of anything approaching this level of documentation; rather, akin to
an interrogatory, they asked plaintiff a question about his practice. Complaint, ex.B. Because
OED was not required “to ascertain . . . the extent of any wrongdoing” on plaintiff’s part “before
issuing” its RFIs, id. at 351, it was certainly not constitutionally-required to limit its RFIs before
learning of the scope of plaintiff’s putative misconduct.
CONCLUSION
For the foregoing reasons, this Court should dismiss plaintiff’s complaint against the
USPTO.
Respectfully submitted,
DANA J. BOENTE
UNITED STATES ATTORNEY
By: _________/s/____________________
DENNIS C. BARGHAAN, JR.
Assistant U.S. Attorney
2100 Jamieson Avenue
Alexandria, Virginia 22314
Telephone: (703) 299-3891
Fax: (703) 299-3983
Email: [email protected]
DATE: March 22, 2016 ATTORNEYS FOR DEFENDANTS
OF COUNSEL: Tracy Kepler
United States Patent and Trademark Office
10For this reason, plaintiff’s reflexive invocation of the attorney-client relationship does
not change the constitutional calculus. Indeed, even § 11.801(b) itself provides that a
practitioner cannot be sanctioned merely for refusing to provide information that the rules
otherwise deem confidential, see 37 C.F.R. § 11.106, as a result of the attorney-client
relationship.
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28
CERTIFICATE OF SERVICE
I hereby certify that on this date, I electronically filed the foregoing with the Clerk of
Court using the CM/ECF system, which will transmit a true and correct copy of the same to the
following:
Danny M. Howell
Sands Anderson, P.C.
1497 Chain Bridge Road, Suite 202
McLean, Virginia 22101
Email: [email protected]
Date: March 22, 2016 ______/s/______________________
DENNIS C. BARGHAAN, JR.
Assistant U.S. Attorney
2100 Jamieson Avenue
Alexandria, Virginia 22314
Telephone: (703) 299-3891
Fax: (703) 299-3983
Email: [email protected]
ATTORNEYS FOR DEFENDANTS
Case 1:16-cv-00015-LO-IDD Document 15 Filed 03/22/16 Page 29 of 29 PageID# 411
I N THE UNI TED STATES PATENT AND TRADEMARK OFFI CE
BEFORE THE TRADEMARK TRI AL AND APPEAL BOARD
EXHI BI T D
Hallmark Licensing, LLC
Opposer,
v.
Hallmark I ndust r ies, I nc.,
Applicant .
Consolidated Opposit ion No.
9 1 2 1 1 3 9 2 ( PARENT)
91215884