Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA683165
`ESTTA Tracking number:
`07/13/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91221955
`Defendant
`Intimidator, inc.
`JAMES E SHLESINGER
`SHLESINGER ARKWRIGHT & GARVEY LLP
`5845 RICHMOND HIGHWAY, SUITE 415
`ALEXANDRIA, VA 22303
`UNITED STATES
`jim@sagllp.com, nitasantiago@sagllp.com
`Other Motions/Papers
`James E. Shlesinger
`jim@sagllp.com, danearle@sagllp.com, nitasantiago@sagllp.com
`/jes/
`07/13/2015
`Applicant's Response Brief 07132015.pdf(465990 bytes )
`Responsibilities of Practitioners.pdf(254292 bytes )
`Celgard v. LG Chem.pdf(293279 bytes )
`In re Atoptech.pdf(240403 bytes )
`Apeldyn v. Samsung.pdf(953968 bytes )
`Thorner v Sony.pdf(763910 bytes )
`Armor Screen v. Storm Catcher.pdf(1513150 bytes )
`Merck Eprova v. ProThera.pdf(1365680 bytes )
`Sunbeam v. Hamilton Beach.pdf(712155 bytes )
`Advanced Messaging v. EasyLink.pdf(1380353 bytes )
`GSI Commerce v. BabyCenter.pdf(493384 bytes )
`Concat v. Unilever.pdf(2696062 bytes )
`Chang's Imports v. Srader.pdf(1047776 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Bad Boy, Inc.,
`
`Opposer,
`
`v.
`
`Intirnidator, Inc.,
`
`Applicant.
`
`:
`
`:
`
`‘
`
`-
`
`Opposition No. 9I22l955
`
`V
`
`(Serial No. 85632767)
`
`APPLICANT, INTIMIDATOR, INC.’S REPLY TO OPPOSER’S ANSWER TO
`PETITION TO DISQUALIFY TRENT C. KEISLING, AND THE LAW FIRM OF
`KEISLING & PIEPER, PLC FROM REPRESENTING BAD BOY, INC.
`
`Applicant, Intimidator, Inc. submits this reply brief.
`
`The pertinent U.S. Patent and Trademark Office Rule of Professional Conduct is 37
`
`C.F.R. § 11.09, and states in part as follows:
`
`A practitioner who has formerly represented a client in a matter shall not
`(a)
`thereafter represent another person in the same or a substantially related matter in
`which that person's interests are materially adverse to the interests of the former
`client unless the former client gives informed consent, confirmed in writing.
`
`In Plus Products v. Corz~Sl'cm Industries, 221 USPQ I071, (Comni'r Pat. 1984), which
`
`Applicant has cited in its Petition to Disqualify, an attorney was disqualified from representing
`
`Con—Stan in a trademark opposition. The disqualification was premised upon Plus Products showing
`
`that (1) the attorney was its former attorney; (2) he now represented an adverse party; and (3) the
`
`subject matter embraced by the present representation was "substantially related" to the subject
`
`matter where the attorney previously represented Plus Products. The ruling stated that it was
`
`manifest that in the trademark opposition matter, the attorney and his firm were taking positions on
`
`behalf of Con-Stan that directly conflict with positions previously taken by the attorney on behalf of
`
`

`
`Opposition No. 91221955
`
`Plus Products. In addition, it was also reasonable to conclude that there were other actual conflicts,
`
`or there reasonably may be other potential conflicts, between prior positions taken by the attorney on
`
`behalf of Plus Products and positions being taken by the attorney's firm on behalf of Con—Stan.
`
`Factors (2) and (3) are self-evident and not in dispute, which leaves only (1), whether Mr. Keisling
`
`was Applicant’s.former attorney.
`There can be no dispute that Mr. Keisling represented Applicant, Intimidator, Inc.,
`
`notwithstanding Opposer’s representation that “Keisling has only represented Bad Boy and its
`
`interests, and has not represented Applicant at anytime.” Mr. Keisling signed application papers and
`
`otherwise represented Applicant in prosecuting applications involving the mark, INTIMIDATOR, in
`
`the USPTO. Mr. Keisling sent letters to Applicant advising of Office Actions with recommendations
`
`and time estimates for responding to the office actions. Mr. Keisling had telephone discussions with
`
`Applicant’s personnel, and Mr. Keisling provided recommendations to Applicant}
`
`The USPTO recognizes Mr. Keisling’s actions as the representative of Applicant. Under
`
`TMEP 604.01, and 37 CFR § 2.17 (b), the qualifiction of a practitioner as a representative of the
`
`Applicant in a trademark case is recognized by signing a document on behalf of an applicant. Mr.
`
`Keisling signed documents on behalf of Intimidator, Inc., as its Attorney of Record on multiple
`
`occasions as referenced in Applicant’s Petition to Disqualify. Mr. Keisling identifies himself as the
`
`Attorney of Record for Applicant. A qualified practitioner who appears in person or signs a
`
`document on behalf of an applicant or registrant will be accepted as the representative of the
`
`I There are letters from Mr. Keisling to Robert Foster of Intimidator, Inc. as Well as telephone
`communications between Mr. Keisling and Applicant addressing issues during the prosecution of
`the relevant applications. Applicant reserves the right to waive the Attorney/Client privilege in
`the future of these communications; but, for now, preserves its privilege of non-disclosure.
`
`

`
`Opposition No. 91221955
`
`applicant or registrant._ See TMEP §604.01 and 37 CFR § 2.17 (b). The USPTO will only
`
`communicate and conduct business with that practitioner or with another qualified practitioner from
`
`the same finn. And once the USPTO recognizes a qualified practitioner as the representative of
`
`Applicant, as it has with Mr. Keisling and the two INTIMIDATOR applications, a new qualified
`
`practitioner from a different firm is not permitted to represent the applicant until the Applicant
`
`revokes the previous power of attorney and submits a new power of attorney; or the previously
`
`recognized practitioner files a request to withdraw. TMEP § 604.03.
`
`Mr. Keisling’s communications with Bad Boy and alleged compensation by Bad Boy does
`
`not change the fact that Intimidator was Mr. Keisling’ s client. An arrangement for a practitioner to
`
`receive instructions from a trademark owner “through a foreign attorney or agent does not change
`
`the fact that the client is still the ...trademark owner rather than the ...agen .” See, Responsibilities
`
`0fPractz'z‘i0ners Representing Clients in Proceedings Before the Patent and Trademark Ofiice, 1091
`
`TMOG 26 (Asst. Commissioner of Patents and Trademarks 1988.) [Copy attached]
`
`Bad Boy believes the Petition to Disqualify should fail because such petitions should be
`
`disfavored and are a drastic remedy. But the present case calls for disqualification of Mr. Keisling
`
`and his firm and there is an abundance of case law in support.
`
`In Sunkist‘ Growers, Inc. V. Benjamin Ansehl C0., 221 USPQ 1077 (Comm'r Pat. 1984),
`
`decided only several weeks after Plus Products, the opinion states in pertinent part as follows:
`
`"Inasmuch as Hejlek was an attorney for Sunkist, is now an associate in the Senniger
`firm which represents a party adverse to Sunkist, and the subject matter of the
`Senniger firm‘s representation of the adverse party is "substantially related" to
`Hejlek's representation of Sunkist, it is manifest that Ansehl properly does not oppose
`disqualification of Hejlek."
`
`

`
`Opposition No. 91221955
`
`See Celgara’, LLC v. LG Chem, Ltd. , 594 F. 669 (Fed. Cir. 2014) [case attached]. See, also,
`
`In re Aroprec/1, Inc. , 565 F. Appx 912 (Fed. Cir. 2014) [case attached] (district court had sound basis
`for disqualifying competitor's counsel in action for infringement of patent. There was substantial
`
`relationship between current and former representations because competitor's counsel had previously
`
`represented patent's former owner in patent
`
`infringement actions brought by plaintiff, and
`
`confidential material information was presumably transmitted to counsel during that previous
`
`representation);
`
`See Apeldyrz C0117. v. Samsung Elec. Co., 693 F. Supp. 2d 399 (D. Del. 2010) [case attached]
`
`("substantial relationship" existed between attorney's representation of former client in patent
`
`litigation and attorney's representation of present client
`
`in patent case so as to warrant
`
`disqualification of attorney). See, also, Thorrzer v. Sony Computer Enz‘m’tAm., Inc., Civ. Act. No.
`
`09-] 894(GEB), 2009 WL 4041624 (D.N.J. Nov. 20, 2009) [case attached] (attorney and his firm
`
`were disqualified from representing a client in patent infringement litigation against attorney's former
`
`client. Attorney attended training courses on former client's products, spoke to engineers who
`
`designed the systems, and worked on patent matters related to the system for the former client.
`
`Attorney therefore had access to former client personnel, information, andidocuments closely related
`
`to the system and auxiliary products. The level of attorney's interaction with former client's property
`
`and personnel made it impossible to narrowly limit the type and scope of the information to which
`
`attorney may have been privy);
`
`See, also,/lrmor Screen Corp. v. Storm Catcher, Irzc., 709 F. Supp. 2d 1309 (S.D. Fla. 2010)
`
`[case attached] (attorney who had discussed case as potential expert for competitors, but was never
`
`retained, would be disqualified from later serving as counsel for patent holder as opposing party in
`
`4
`
`

`
`Opposition No. 91221955
`
`same infringement case, pursuant to Florida Bar rules; attorney had been privy to confidential
`
`information over course of his discussions with competitors, with expectation of continued
`
`confidentiality, and such information could have been unfairly used against competitors).
`
`See also, Merck Eprova AG v. Pr0Thera, Inc., 670 F. Supp. 2d 201 (S.D.N.Y. 2009) [case
`
`attached] (law firm that represented drug manufacturer in patent application on behalf of inventor
`
`also represented inventor, who had joint attomey-client relationship with manufacturer, as required
`
`for application of per se disqualification rule in unfair competition action between inventor and
`
`another party represented by law firm, even though manufacturer dealt with firm, who had
`
`represented it in prior matters, where parties intended to file joint patent applications and parties
`
`reasonably believed they were joint clients; disqualification of law firm was warranted, where the
`
`uniqueness of trademark holder's patent was an important element of both representations).
`
`In the same category as the above-cited cases is another such instructive case from Virginia
`
`which references commtmications between attorney and client which pertain to Mr. Keisling’s
`
`representation of Applicant.
`
`In Sunbeam Products, Inc. v. Hamilton Beach Brands, Inc., 727 F.
`
`Supp. 2d 469 (ED. Va. 2010), [case attached] the court ruled that under Virginia law, an attorney's
`
`prior representation of an alleged infringer in litigation and patent applications involving the accused
`
`product disqualified his current law firm from representing a patentee in a patent infringement
`
`action, even though attorney did not perform any work in the current litigation and there was no
`
`evidence that he disclosed confidential information to firm members. The attorney had analyzed
`
`prior art for an application that he drafted for the accused product, had performed non~infringement
`
`analysis as part of the process, and had unrestricted access to the alleged infringer's files. Under
`
`Virginia law, once an attorney-client relationship has been established, an irrebuttable presumption
`
`

`
`Opposition No. 91221955
`
`arises that confidential information was conveyed to the attorney in the prior matter, and a party
`
`moving for disqualification of the attorney in a successive representation context does not have the
`
`evidentiary burden of showing actual disclosure of confidences.
`
`Id. at 472.
`
`As the court observed in Apelclyn Corp., an attorney may be disqualified for failing to avoid
`
`even the appearance of impropriety, and any doubt as to the propriety of the representation should be
`
`resolved in favor of disqualification. 693 F. Supp. 2d at 404.
`
`It having been established that Keisling and his law firm have a disqualifying conflict of
`
`interest, he and the firm may only represent Bad Boy, lnc., in the subject proceedings if there is
`
`informed and written consent given by Intimidator, Inc., his former client. There has been no such
`
`consent.
`
`Bad Boy suggests that the necessary consent can be found in Schedule 1, "services"
`
`paragraph 3, ofthe Transition Services Agreement between Bad Boy and Applicant. That provision
`
`states that one of the services to be provided by Bad Boy to Intimidator is "[1]egal advice and
`
`assistance as requested by Intimidator, and ofthe nature previously and customarilyprovided by Bad
`
`Boy's general counsel." (Transition Servs. Agrmt. sched. 1 (emphasis added).)
`
`The quoted provision is expressly confined to legal services like those provided by its
`
`corporate counsel, who is Scott Lancaster, and does not extend to services of outside counsel, such as
`
`Mr. Keisling. Thus, it cannot be said, on the basis of this provision or otherwise, that Intimidator
`
`gave informed written consent to Mr. Keisling's representation of Bad Boy, lnc., after he had
`
`previously represented Intimidator, Inc., in substantially related matters.
`
`Relevant cases involving patent and trademark litigation support Applicant's position on this
`
`issue. For example, in Advanced Messaging Technologies, Inc. v. Easy./Link Services lnZ‘ernal'z'onal
`6
`.
`
`

`
`Opposition No. 91221955
`
`Corp., 913 F. Supp. 2d 900 (C.D. Cal. 2012) [case attached], patent infringement cases against a
`
`defendant whose "outside in-house counsel" on intellectual property matters had once represented the
`
`plaintiff were substantially related to the prior cases, and, thus, the court would presume that the
`
`attorney learned confidential information about the plaintiff that was relevant to the current cases,
`
`even though the patents were altered. Nothing required the court to extensively analyze the patents’
`
`modifications or do an in-depth comparison ofthe products, since a rational link between the subject
`
`matter ofthe two cases would suffice, and both the attorney's professional experience and the extent
`
`of his work for the plaintiff were significant. No remedy short of disqualification of the law firm
`
`would suffice, where a conflict waiver was not obtained from the plaintiff, no ethical wall was
`
`enacted around the attorney who worked for the plaintiffbefore engaging in work for the defendant,
`
`and the conflict was not collateral to the subject matter of the case. Id. at 912.
`
`Similarly, an engagement agreement between a parent corporation and its counsel did not
`
`waive a corporate affiliate conflict, as required to prevent counsel's disqualification for simultaneous
`
`representation in a breach-of-contract action in which it represented the plaintiff against the parent
`
`corporation's subsidiary, even though the engagement agreement provided that counsel represented
`
`the parent only and not its affiliates or subsidiaries. GSI Commerce Solutions, Inc. v. BabyCenter,
`
`LL. C., 618 F.3d 204 (2d Cir. 2010), afl’g in part 644 F. Supp. 2d 333 (S.D.N.Y. 2009) [case
`
`attached]. The agreement didlnot waive any conflict, as it was strictly limited to matters involving
`
`patent litigation, did not waive the conflict at issue in the contract action, and the plain language of
`
`the agreement addressed corporate affiliate conflicts.
`
`In another case, a client's general waiver of conflict of interest, applicable to "any"
`
`representation by a law firm of an adverse party in an unrelated dispute, was insufficient to cover a
`
`

`
`Opposition No. 91221955
`
`case in which an attorney undertook estate planning work for a client, and his firm later undertook to
`
`represent an adverse party in a patent dispute with the company in which the client had ownership
`
`interest; a second waiver specifically addressing the patent dispute was required. Concat LP v.
`
`Um'Zever, PLC, 350 F. Supp. 2d 796 (N.D. Cal. 2004) [case attached]. Under the same reasoning, the
`
`very general contract provision relied on by Keisling in this case, apart from being limited by its
`
`terms to services of a general counsel, does not at all address the specific proceedings at issue here.
`
`Thus, it cannot constitute an informed written consent as to these proceedings.
`
`The instant case is in stark contrast with Chang's Imports, Inc. v. Srader, 216 F. Supp. 2d 325
`
`(S.D.N.Y. 2002) [case attached]. There, by signing a waiver letter provided by an attorney, which
`
`disclosed that the attorney, who had previously represented a trademark licensor, would be acting as
`
`a neutral mediator with respect to settlement negotiations between the licensor and the licensee, the
`
`licensor and licensee explicitly waived any conflict issue under New York law. The signed letter
`
`constituting a waiver in Chang's Imports used unequivocal and specific language bearing no
`
`resemblance to the contract language relied on by Keisling in this case:
`
`You have requested me to assist you in finding an amicable resolution to your
`differences relating to the trademark Margaret Jerrold and the business relating
`thereto.
`
`As you can well understand this places me in a clear conflict of interest and I
`have advised you that you should be represented by different attorneys. However, you
`have represented to me that you are both aware of the conflict of interest issue and
`still desire me to assist you in finding a common resolution of your difficulty and
`structuring a settlement.
`
`Please sign below to evidence your waiving any claim of conflict of interest,
`your request that I act for both ofyou and your consent to my doing so with regard to
`this matter.
`
`Id. at 329.
`
`

`
`Opposition No. 91221955
`
`The client's informed and written consent must be unequivocal, as it most certainly is not in
`
`this case. GSI Commerce Solutions, 644 F. Supp. 2d 333 (engagement agreement between parent
`
`corporation and counsel did not provide unequivocal express waiver that would be necessary to
`
`prevent counsel's disqualification from representing petitioner in arbitration proceedings against
`
`parent corporation's subsidiary, based upon conflict of interest arising from counsel's simultaneous
`
`representation).
`
`In the present case, there has been nothing remotely like the Written informed consent,
`
`explaining all risks in detail, that was required of Mr. Keisling ifhe was to represent a party adverse
`
`to his former client. As a result, the conflict of interest was never consented to by Intimidator, Inc.,
`
`and Mr. Keisling and his law firm should be disqualified.
`
`For all of the above reasons and reasons set forth in the initial Petition, Mr. Keisling and his
`
`firm should be disqualified from representing Opposer, Bad Boy,
`
`in this proceeding. The
`
`disqualification should also apply to Opposition No. 91221304 in which Bad Boy is the Applicant
`
`and Intimidator is the Opposer, and for which consolidation with the present proceeding has been
`
`previously requested.
`
`Respectfully submitted,
`
`INTIMIDATOR, INC.
`
`
`
` James E. Shlesinger
`Daniel T. Earle
`
`Attorneys for Applicant
`SHLESINGER, ARKWRIGHT
`& GARVEY, LLP
`
`5845 Richmond Highway, Suite 415
`Alexandria, Virginia 22303
`(703) 684-5600
`
`

`
`Opposition No. 91221955
`
`Harry A. Light, Esq
`Friday Eldredge & Clark
`400 West Capitol Avenue, Ste 2000
`Little Rock, Arkansas 72201-3552
`
`CERTIFICATE OF SERVICE
`
`It is hereby certified that this Applicant, Intimidator, Inc.’s Reply to Opposer’s Answer to
`Petition to Disqualify Trent C. Keisling, and the Law Firm of Keisling & Pieper, PLC from
`Representing Bad Boy, Inc. has been served upon Opposer, by prepaid first class mail, to Council
`for Opposer, Trent C. Keisling, Keisling & Pieper PLC, PO Box 10379, Fayetteville, Arkansas,
`72703, this 13th day of July, 2015.
`
`
`
`Daniel T. Earle
`
`

`
`Responsibilities of Practitioners
`
`Page 1 of 4
`
`(149)
`
`Responsibilities of Practitioners Representing
`Clients in Proceedings Before
`The Patent and Trademark Office
`
`This notice is intended to remind practitioners of certain aspects of
`their responsibilities in representing clients in proceedings before the
`Office. The Notice is also intended to supplement
`the discussion set forth
`in the Official Gazette Notice published at 1086 Official Gazette 457
`(Jan. 12, 1988) entitled "Practitioner's Responsibility to Avoid Prejudice
`to the Rights of a Client/Patent Applicant" and to amplify and supersede
`the Helpful Hint published at 1084 Official Gazette 34
`(Nov. 24, 1987)
`titled "Correspondence Address and/or Fee Address of Maintenance Fees."
`Part 10 of title 37, Code of Federal Regulations, sets forth the
`Patent and Trademark Office (PTO) Code of Professional Responsibility.
`Each attorney or agent who practices before the PTO is subject
`to the
`rules set forth in Part 10 and should carefully study the rules
`promulgation originally published at 50 Federal Register 5158 (Feb. 6,
`1985) and at 1052 Official Gazette 4
`(Mar. 5, 1985) and reproduced as
`item number 172 in the Consolidated Listing of Official Gazette Notices,
`published at 1086 Trademark Official Gazette 3
`(Jan. 5, 1988).
`
`Practitioner's Client
`
`During the promulgation of Part 10, 37 CFR, several individuals
`suggested that "it may be difficult to determine the identity of the
`‘client’.
`., particularly in corporate patent departments." The
`response to that suggestion was that "[t]he PTO will presume that
`practitioners know the identities of their clients .
`.
`.." 50 Federal
`Register 5163 (Feb. 6, 1985); 1086 Trademark Official Gazette 356 (Jan.
`5, 1988). For example,
`in a patent application, practitioner's client is
`ordinarily the inventor who gives practitioner a power of attorney to
`prosecute the application (37 CFR 1.31). A practitioner may represent
`only the assignee of the entire interest in a patent application if the
`assignee has filed a power of attorney and the assignee is conducting
`the prosecution of the application to the exclusion of the inventor.
`CFR 1.32).
`a commenter raised a
`In the promulgation of Part 10, 37 CFR,
`question of who is the client when an application is filed on behalf of
`an individual, but the individual's assignee pays practitioner's bill.
`The question was answered in the following manner:
`
`(37
`
`"Practitioners are expected to know the identities of their clients. If
`a practitioner is hired by a corporation and wishes to make that fact
`plain on the record of a patent application,
`the practitioner may file
`an assignment and a power of attorney signed by the assignee. If a
`dispute should then occur between the individual and the assignee,
`record would be clear that the assignee is the client." 50 Federal
`Register 5164 (Feb. 6, 1985); 1086 Trademark Official Gazette 357
`5, 1988).
`
`(Jan.
`
`the
`
`In some instances, practitioners deal with a corporate liaison or
`foreign agent. Such arrangements do not automatically change the person
`whom practitioner represents, e.g.,
`the inventor or trademark owner. The
`fact that a U.S. practitioner receives instructions from the inventor or
`trademark owner through a foreign attorney or agent does not change the
`fact that the client is still the inventor or trademark owner rather
`than the foreign attorney or agent. See Strojirenstvi v. Toyoda,
`2 USPQ
`2nd 1222 (Comm'r Pat. 1986), which at 1223 cited Yetter Manufacturing
`Co. v. Hiniker Co., 213 USPQ 119, 120 (D. Minn. 1981)
`for the principle
`
`http://wWw.uspto. gov/web/offices/com/so1/og/con/files/cons149.htm
`
`7/10/2015
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`

`
`Responsibilities of Practitioners
`
`Page 2 of 4
`
`that "when attorney served as local counsel for a law firm representing
`Hiniker Co.,
`the attorney represented Hiniker and not the law firm" and
`also cited Toulmin v. Becker, 105 USPQ 511 (Ohio Ct. App. 1954)
`for the
`principle that "foreign patent agents or attorneys were not clients of
`U.S. patent attorney." The PTO expects practitioners to know the
`identities of their clients and to take reasonable steps to avoid
`foreseeable prejudice to the rights of their clients.
`
`Obtaining Instructions Through Persons Other Than The Client
`
`In practice, it is common for instructions relating to the application
`of an inventor or trademark owner, who is the client of the U.S.
`practitioner,
`to be passed to the U.S. practitioner through
`intermediaries, such as corporate liaisons or foreign agents. Clearly, a
`client may choose to use a corporate liaison or a foreign agent
`to
`convey instructions, etc.,
`to a practitioner.
`In such an arrangement,
`the practitioner may rely upon instructions of, and accept compensation
`from,
`the corporate liaison or the foreign agent as to the action to be
`taken in a proceeding before the Office so long as the practitioner is
`aware that the client has consented to have instructions conveyed
`through the liaison or agent. See 37 CFR lO.68(a) and (b). An agreement
`between the client and the liaison or agent establishes an agency
`relationship between the liaison or agent and the client such that the
`U.S. practitioner can rely upon the liaison or agent as the
`representative of the client for the purpose of communicating the
`client's instructions about
`the proceeding to the U.S. practitioner.
`PTO will assume that the client has an agreement with the liaison or
`agent to be represented by the liaison or agent. It is the
`responsibility of the client to notify the practi tioner that the agency
`relationship between the client and the liaison or agent has ceased to
`exist and that instructions from the liaison or agent should no longer
`be accepted.
`A practitioner could secure evidence that such an agreement exists by
`having a patent or trademark applicant sign a statement
`to that effect
`at the same time that the power of attorney is executed. For example,
`the following language could be inserted in an oath, declaration, or
`power of attorney form:
`
`The
`
`"The undersigned hereby authorizes the U.S. attorney or agent named
`herein to accept and follow instructions from as to any action to be
`taken in the Patent and Trademark Office regarding this application
`without direct communication between the U.S. attorney or agent and the
`undersigned.
`In the event of a change in the persons from whom
`instructions may be taken,
`the U.S. attorney or agent named herein will
`be so notified by the undersigned."
`
`Without an agency relationship between the liaison or agent and the
`client, a practitioner would be bound by 37 CFR lO.68(b)
`to "not permit
`a person who recommends, employs, or pays the practitioner to render
`legal services for another,
`to direct or regulate the practitioner's
`professional judgment in rendering such legal services."
`
`Practitioner's Responsibility to a Client After the Client's Patent
`Issues or Trademark is Registered
`
`The Office has received inquiries from practitioners as to their
`responsibilites to a client
`(patent or trademark applicant) after the
`client's patent was issued or trademark has been registered.
`In response
`thereto, it is pointed out that a power of attorney given during
`prosecution of a patent or trademark application is considered to be
`
`http://www.uspto. goV/web/off1ces/com/sol/og/con/files/cons149.htm
`
`7/10/2015
`
`

`
`Responsibilities of Practitioners
`
`Page 3 of 4
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`viable after the patent is issued or the trademark is registered. See 50
`Federal Register 5164 (Feb. 6, 1985); 1086 Trademark Official Gazette
`357 (Jan. 5, 1988). While the Office considers such a power of attorney
`to be viable for purposes of the practitioner taking actions in
`proceedings before the Office if practitioner and the client so desire,
`the existence of the power of attorney to file and/or prosecute the
`application through issuance of the patent or registration of the
`trademark does not establish whether practitioner has a responsibility,
`and a dutaffirmatively in a proceeding before the Office on behalf of
`the client after the patent issues or the trademark is registered.
`Practitioner's responsibility to take affirmative action in a
`proceeding before the Office after the patent issues or the trademark is
`registered depends upon whether practitioner still has a
`practitioner-client relationship with the client which has continued
`after the patent issued or trademark is registered. The mere existence
`of the power of attorney to file and/or prosecute the application
`through issuance of the patent or registration of the trademark would
`not establish such a practitioner client relationship in the absence of
`other facts establishing such a relationship since the purpose for which
`the power of attorney was originally given has been accomplished.
`
`Practitioner's Responsibility to a Former Client
`
`While practitioner may no longer have a practitioner—client relationship
`with a client and therefore has no duty to represent the client in a
`proceeding before the Office, a practitioner nevertheless has certain
`obligations to a former client. These obligations are placed upon
`practitioner by the Office rules and are necessary for the proper
`conduct of proceedings before the Office. Under 37 CFR 10.23(c)(8),
`practitioners have a duty to inform a client or former client or timely
`notify the Office of an inability to notify a client or former client of
`certain correspondence received from the Office and also from the
`client's or former client's opponent in an inter partes proceeding
`before the Office. Practitioners have an obligation whether the client
`is a present client or a former client.
`Included among the items of
`correspondence of which practitioners have the obligation to inform
`clients or former clients are notices regarding maintenance fees,
`reexamination proceedings, and institution of inter partes patent and
`trademark proceedings.
`
`Address to Which Correspondence is Sent Regarding Patent Maintenance
`Fees and Reexamination Proceedings
`
`Under 37 CFR 1.33(d), a "correspondence address" or a change thereto
`may be filed with the Office during the enforceable life of a patent.
`This "correspondence address" will be used in any correspondence
`relating to maintenance fees unless a separate "fee address" has been
`specified solely for maintenance fee purposes as provided by 37 CFR
`1.363. Practitioners who do not wish to receive correspondence relating
`to maintenance fees must change the correspondence address in the
`patented file or provide the PTO with a fee address to which the
`correspondence should be sent. It is not required that a practitioner
`file a request for permission to withdraw pursuant to 37 CFR 1.36 solely
`for the purpose of changing the correspondence address in a patent even
`though a withdrawal of a practitioner would change the correspondence
`address.
`
`Since 37 CFR 1.33(c) specifies that all notices, official letters and
`other communications for the patent owner or owners in a reexamination
`proceeding will be directed to the attorney or agent of record in the
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`patent file, a request for permission to withdraw pursuant to 37 CFR
`1.36 must be filed in the patent if the attorney or agent of record does
`not desire to receive correspondence relating to reexamination. For
`information on requests to withdraw, see the discussion in the Jan. 12,
`1988 Official Gazette Notice cited above.
`
`Contact Points For Information
`
`the conduct of, or requirements
`If a practitioner has questions about
`relating to a particular proceeding before the Office,
`those questions
`should be directed to the particular area of the Office responsible for
`the proceeding. If practitioners have questions about their
`responsibilities to their clients,
`those questions should be directed to
`the Office of Enrollment and Discipline. The telephone number of that
`Office is (703) 557-2012.
`
`May 25, 1988
`
`DONALD J. QUIGG
`Assistant Secretary and Commissioner
`of Patents and Trademarks
`
`[1091 TMOG 26]
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`Ceigard, LLC v. LG Chem, Ltct., 59¢ Fed.Appx. 669 (2014)
`
`594 Fed.Appx. 669
`This case was not selected for
`publication in West's Federal Reporter.
`See Fed. Rule of Appellate Procedure
`32.1 generally governing citation
`ofjudicial decisions issued on
`or after Jan. 1, 2007. See also
`U.S.Ct. of App. Fed. Cir. Rule 32.1.
`United States Court of Appeals,
`Federal Circuit.
`
`CELGARD, LLC,
`
`Plaintiff—Cross Appellant,
`v
`
`LG CHEM, LTD. and LG Chem
`
`America, Inc., Defendants—Appellants.
`
`Nos. 2014-1675, 2014-1733,
`
`2014-1806.
`
`I Dec. 10,2014.
`
`Synopsis
`
`Background: Patentee commenced action
`
`against competitor and its affiliate companies,
`
`former client and co1npetitor's customer,
`
`to
`
`warrant disqualification.
`
`Motion granted.
`
`West Headnotes (2)
`
`[1] Attorney and Client
`aw» Patent law
`
`Law f1rm's representation of owner
`
`of
`
`patent
`
`on
`
`lithium battery
`
`components was sufficiently adverse
`to manufac