Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA917489
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`Filing date:
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`08/22/2018
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
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`92065546
`
`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Plaintiff
`John P. Bertoldi
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`NEDEEN NASSER
`NASSER LAW
`501 W BROADWAY, STE A202
`SAN DIEGO, CA 92101
`UNITED STATES
`nn@nasserlegal.com, alison@markstarlaw.com
`310-999-9464
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`Other Motions/Papers
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`Nedeen Nasser, Esq.
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`nn@nasserlegal.com, alison@markstarlaw.com
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`/Nedeen Nasser/
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`08/22/2018
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`01_Confidential Filing Caption Page.pdf(57941 bytes )
`02_Bertoldi_T001_PetToDisqualify_081918finalReduced_Redacted.pdf(120056
`bytes )
`03_Bertoldi_CasesCaptioned.pdf(1213353 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Trademark Registration:
`Mark:
`
`MAJESTICS
`Serial No.
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`77939505
`Registration No.
`4109381
`Registration Date:
`06 March 2012
`
`
`John P. Bertoldi
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`v.
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`Carlos Ramirez
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`Petitioner,
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`Respondent.
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`Cancellation No. 92065546
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`PETITIONER’S PETITION TO DISQUALIFY
`RESPONDENT’S COUNSEL, GORDON E.
`GRAY III, ESQ.
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`Mark: MAJESTICS
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`CONFIDENTIAL MATERIALS FILED UNDER SEAL PURSUANT TO THE
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`BOARD’S STANDARD PROTECTIVE ORDER
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`Petitioner John P. Bertoldi hereby files the following documents under seal pursuant to
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`the Standard Protective Order in this Proceeding:
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`1. Petition to Disqualify Respondent’s Counsel Gordon E. Gray III, Esq.
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`2. Exhibits in Support of the Petition
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`3. Cases and Statute in Support of the Petition
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`Dated: 21 August 2018
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`Respectfully submitted,
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`For John P. Bertoldi
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`1
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`By: /Nedeen Nasser/
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`Nedeen Nasser
`Nasser Law
`501 W. Broadway, Ste A202
`San Diego, CA 92010
`(310) 999-9464
`Attorney for Plaintiff
`
`2
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Trademark Registration:
`Mark:
`
`MAJESTICS
`Serial No.
`
`77939505
`Registration No.
`4109381
`Registration Date:
`06 March 2012
`
`
`John P. Bertoldi
`
`
`
`
`
`v.
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`Carlos Ramirez
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`Petitioner,
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`Respondent.
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`Cancellation No. 92065546
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`PETITIONER’S PETITION TO DISQUALIFY
`RESPONDENT’S COUNSEL, GORDON E.
`GRAY III, ESQ.
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`Mark: MAJESTICS
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`
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`PETITIONER’S PETITION TO DISQUALIFY RESPONDENT’S COUNSEL,
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`GORDON E. GRAY III, ESQ.
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`PLEASE TAKE NOTICE that pursuant to the provisions of 37 C.F.R. §§ 11.19(c),
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`11.106-116, and 11.307 and Trademark Trial and Appeal Board Manual of Procedure §§ 115.03
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`and 513.02, Petitioner John P. Bertoldi, by and through his counsel, hereby petitions to
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`disqualify Gordon E. Gray III, Esq. (“Mr. Gray” or “Counsel”) from serving as counsel for
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`Carlos Ramirez (“Respondent”).
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`1. INTRODUCTION
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`Petitioner seeks to disqualify Mr. Gray because (
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`Cancellation No. 92065546
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`would permit Mr. Gray’s continued representation of Respondent without harm to the Petitioner.
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` No exception to any rule applies which
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`2. FACTUAL BACKGROUND
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`Cancellation No. 92065546
`PETITIONER’S PETITION TO DISQUALIFY RESPONDENT’S COUNSEL, GORDON E. GRAY III, ESQ.
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`3. ARGUMENT
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`Petitions to disqualify a practitioner are “handled on a case-by-case basis under such
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`conditions as the USPTO Director deems appropriate” and are not considered disciplinary
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`proceedings. 37 C.F.R. § 11.19(c); TBMP § 513.02.
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`a.
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`1 Contained in ttabvue-91196016-OPP-20.
`2 Petitioner has not yet received the transcript of the deposition but will provide relevant portions of testimony
`referred to in this Petition upon receipt.
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`3
`Cancellation No. 92065546
`PETITIONER’S PETITION TO DISQUALIFY RESPONDENT’S COUNSEL, GORDON E. GRAY III, ESQ.
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`“A practitioner who has formerly represented a client in a matter shall not 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… (c) A practitioner who has
`formerly represented a client in a matter… shall not thereafter: (1) Use information
`relating to the representation to the disadvantage of the former client except as the
`USPTO Rules of Professional Conduct would permit or require with respect to a client,
`or when the information has become generally known.” 37 C.F.R. § 11.109(a) and (c)
`(emphasis added).
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`The Board has previously explained that petitions to disqualify based on former client
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`conflicts must demonstrate three things, namely (1) the disqualifying party must have been a
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`former client; (2) the practitioner now represents an adverse party; and (3) the subject matter of
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`the current representation is “substantially related” to the subject matter of the previous matter.
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`Plus Products v. Con-Stan Industries, Inc., 221 USPQ 1071, 1074 (Comm’r Pat. 1984).
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`1. Counsel Impliedly Represented Petitioner in the Prior Opposition.
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`When deciding whether legal representation arose between counsel and a person, the
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`person’s understanding and belief that he was communicating with an attorney is determinative.
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`The attorney-client relationship and attorney-client privilege are governed by State rules of
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`evidence and the state bar’s rules of professional conduct. In California, Evidence Code section
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`951 provides that a “client” is “a person or entity who, directly or through an authorized
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`representative, consults a lawyer for the purposes of retaining the lawyer or securing legal
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`service or advice from him in his professional capacity.” (emphasis added).
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`4
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`PETITIONER’S PETITION TO DISQUALIFY RESPONDENT’S COUNSEL, GORDON E. GRAY III, ESQ.
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`. In the Matter of Peavey, 4 Cal. State Bar Ct. Rptr.
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`483, 489 (Rev. Dept. 2002), A formal agreement or payment of a fee is not required to create the
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`attorney-client relationship. Lister v. State Bar, 51 Cal.3d 1117, 1125, 1126 (1990). Although a
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`person’s hindsight in believing that an attorney-client relationship existed has been found
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`irrelevant, the California Supreme Court carved out an exception: when the client’s state of mind
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`was reasonably induced by the attorney’s statements or conduct. Fox v. Pollack, 181 Cal.App.3d
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`954, 959 (1986); Zenith Ins. Co. v. Cozen O’Connor, 148 Cal.App.4th 998, 1010 (2007).
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`•
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`5
`Cancellation No. 92065546
`PETITIONER’S PETITION TO DISQUALIFY RESPONDENT’S COUNSEL, GORDON E. GRAY III, ESQ.
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`2.
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`3.
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`Under California law, the court reasons that a “’substantial relationship’ exists whenever
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`the ‘subjects’ of the prior and current representations are linked in some rational manner.”
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`Knight v. Ferguson, 149 Cal.App.4th 1207, 1213 (2007). Where a substantial relationship exists,
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`“it is presumed the attorney had access to confidential information.” Id (citing People ex rel.
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`Dept. of Corporations v. SpeeDee Oil Change Systems, Inc., 20 Cal.4th 1135, 1146 (1999)).
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`.
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`3 Petitioner also notes that Counsel was attorney of record in connection with Application Serial No. 77662861 for
`MAJESTICS, which matured to Registration No. 4565858.
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`6
`Cancellation No. 92065546
`PETITIONER’S PETITION TO DISQUALIFY RESPONDENT’S COUNSEL, GORDON E. GRAY III, ESQ.
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`

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`Under 37 C.F.R. § 11.307, a practitioner is not permitted to represent a client in a
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`proceeding before a tribunal in which the practitioner is likely to be called as a necessary
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`witness. There are three exceptions to this rule, namely, if testimony relates to an uncontested
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`issue, testimony relates to the nature and value of legal services rendered in this case, or if the
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`represented party would suffer an undue hardship. Further, under 37 C.F.R. § 11.106(b)(3), a
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`practitioner may disclose confidential information to “prevent, mitigate or rectify substantial
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`injury to the financial interests or property of another that is reasonably certain to result or has
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`resulted from client’s commission of a crime, fraud, or inequitable conduct before the Office”.
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`Lastly, a practitioner must withdraw if “representation will result in violation of the USPTO
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`Rules of Professional Conduct or other law.” 37 C.F.R. § 11.116(a)(1). A practitioner is
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`considered a necessary witness when no one else can testify in his place. Northbrook Digital,
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`LLC v. Vendio Servs., Inc., 625 F.Supp. 2d 728, 765 (D. Minn. 2008). A practitioner as witness
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`is also one “who has crucial information in his possession that must be divulged.” SMI Indus.
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`Canada Ltd. V. Caelter Indus. Inc., 586 F.Supp. 808, 817, 223 USPQ 742, 748 (N.D.N.Y. 1984).
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`s. INTS It Is Not The Same, GmbH v.
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`Disidual Clothing, LLC, Opposition No. 91212768, is one example. In that case, the Board
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`refused to disqualify an attorney for merely signing the opposer’s application. Id at 2. The Board
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`held that a practitioner may sign a verification on behalf of his client applicant or registrant and
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`doing so does not create a circumstance where the practitioner needs to testify.
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`7
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`PETITIONER’S PETITION TO DISQUALIFY RESPONDENT’S COUNSEL, GORDON E. GRAY III, ESQ.
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`Based on all of the foregoing, Mr. Gray should be disqualified from representing the
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`Respondent.
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`4. CONCLUSION
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`For the foregoing reasons, Petitioner respectfully requests that the Board grant the
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`Petition to Disqualify Gordon E. Gray III, Esq., issue an action suspending proceedings in this
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`8
`Cancellation No. 92065546
`PETITIONER’S PETITION TO DISQUALIFY RESPONDENT’S COUNSEL, GORDON E. GRAY III, ESQ.
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`case and advise the parties that no additional papers should be filed by the parties until further
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`notice, pending consideration of the Petition.
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`Dated: 21 August 2018
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`Respectfully submitted,
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`For John P. Bertoldi
`
`By: /Nedeen Nasser/
`
`Nedeen Nasser
`Nasser Law
`501 W. Broadway, Ste A202
`San Diego, CA 92010
`(310) 999-9464
`Attorney for Plaintiff
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`9
`Cancellation No. 92065546
`PETITIONER’S PETITION TO DISQUALIFY RESPONDENT’S COUNSEL, GORDON E. GRAY III, ESQ.
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`CERTIFICATE OF SERVICE
`
`
`I hereby certify that on 21 August 2018, a true and complete copy of the foregoing
`PETITIONER’S PETITION TO DISQUALIFY RESPONDENT’S COUNSEL, GORDON E.
`GRAY III, ESQ. has been served on counsel for Defendant by email to geg@grayiplaw.com.
`
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`Dated: 21 August 2018
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`By: _/Nedeen Nasser/__
`
`Nedeen Nasser
`Nasser Law
`501 W. Broadway, Ste A202
`San Diego, CA 92010
`(310) 999-9464
`Attorney for Plaintiff
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`10
`Cancellation No. 92065546
`PETITIONER’S PETITION TO DISQUALIFY RESPONDENT’S COUNSEL, GORDON E. GRAY III, ESQ.
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Trademark Registration:
`Mark:
`
`MAJESTICS
`Serial No.
`
`77939505
`Registration No.
`4109381
`Registration Date:
`06 March 2012
`
`
`John P. Bertoldi
`
`
`
`
`
`v.
`
`Carlos Ramirez
`
`
`
`
`Petitioner,
`
`Respondent.
`
`
`
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`
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`Cancellation No. 92065546
`
`PETITIONER’S PETITION TO DISQUALIFY
`RESPONDENT’S COUNSEL, GORDON E.
`GRAY III, ESQ.
`
`Mark: MAJESTICS
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`CASES AND STATUTE CITED IN PETITIONER’S PETITION TO
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`DISQUALIFY RESPONDENT’S COUNSEL, GORDON E. GRAY III, ESQ.
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`Petitioner provides copies of the following cases and statute cited in the Petition to
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`Disqualify Respondent’s Counsel Gordon E. Gray III, Esq.:
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`CASES
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`1. In the Matter of Peavey, 4 Cal. State Bar Ct. Rptr. 483, 489 (Rev. Dept. 2002) [Petitioner
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`has requested a copy of this case from the State Bar of California and will provide it on
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`receipt.].
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`2. Lister v. State Bar, 51 Cal.3d 1117, 1125, 1126 (1990).
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`3. Fox v. Pollack, 181 Cal.App.3d 954, 959 (1986).
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`Cancellation No. 92065546
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`4. Zenith Ins. Co. v. Cozen O’Connor, 148 Cal.App.4th 998, 1010 (2007).
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`5. Knight v. Ferguson, 149 Cal.App.4th 1207, 1213 (2007).
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`6. Northbrook Digital, LLC v. Vendio Servs., Inc., 625 F.Supp. 2d 728, 765 (D. Minn.
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`2008).
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`7. SMI Indus. Canada Ltd. v. Caelter Indus. Inc., 586 F.Supp. 808, 817, 223 USPQ 742,
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`748 (N.D.N.Y. 1984).
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`STATUTE
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`Cal. Ev. C. § 951
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`Dated: 21 August 2018
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`Respectfully submitted,
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`For John P. Bertoldi
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`By: /Nedeen Nasser/
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`Nedeen Nasser
`Nasser Law
`501 W. Broadway, Ste A202
`San Diego, CA 92010
`(310) 999-9464
`Attorney for Plaintiff
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`2
`Cancellation No. 92065546
`PETITIONER’S PETITION TO DISQUALIFY RESPONDENT’S COUNSEL, GORDON E. GRAY III, ESQ.
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`CERTIFICATE OF SERVICE
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`I hereby certify that on 21 August 2018, a true and complete copy of the foregoing CASES AND
`STATUTE CITED IN PETITIONER’S PETITION TO DISQUALIFY RESPONDENT’S
`COUNSEL, GORDON E. GRAY III, ESQ. has been served on counsel for Defendant by email
`to geg@grayiplaw.com.
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`Dated: 21 August 2018
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`By: _/Nedeen Nasser/__
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`Nedeen Nasser
`Nasser Law
`501 W. Broadway, Ste A202
`San Diego, CA 92010
`(310) 999-9464
`Attorney for Plaintiff
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`3
`Cancellation No. 92065546
`PETITIONER’S PETITION TO DISQUALIFY RESPONDENT’S COUNSEL, GORDON E. GRAY III, ESQ.
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`Lister v. State Bar, 275 Cal.Rptr. 802, 51 Cal.3d 1117, 800 P.2d 1232 (Cal., 1990)
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`Page 802
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`275 Cal.Rptr. 802
`51 Cal.3d 1117, 800 P.2d 1232
`Sherman L. LISTER, Petitioner,
`v.
`The STATE BAR OF CALIFORNIA,
`Respondent.
`Nos. S008641, S009884.
`Supreme Court of California,
`In Bank.
`Dec. 13, 1990.
`
` [51 Cal.3d 1119] Sherman L. Lister, in
`pro. per.
`
`Page 803
`
` [800 P.2d 1233] Pansky & Markle, Ellen
`A. Pansky and R. Gerald Markle, Los Angeles,
`for petitioner.
`
` Diane C. Yu, Truitt A. Richey, Jr., Marta
`B. Galeano, Lawrence C. Yee, San Francisco
`and Harriet Cohen, Los Angeles,
`for
`respondent.
`
` THE COURT:
`
`the
`review
`this proceeding we
` In
`recommendations of the Review Department
`of the State Bar Court (review department) in
`two
`separate matters which we have
`consolidated for purposes of decision. In [51
`Cal.3d 1120] case No. S008641, the review
`department recommended that petitioner,
`Sherman L. Lister, be suspended from the
`practice of law for three years, that execution
`of the order be stayed, and that petitioner be
`placed on probation for three years upon
`conditions including actual suspension for six
`months. In case No. S009884, the review
`department recommended that petitioner
`receive similar discipline for different acts of
`misconduct. It also recommended that the six
`months'
`actual
`suspension be
`served
`consecutively to that imposed in case No.
`S008641. In sum, therefore, the review
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`department has recommended one year of
`actual suspension.
`
` Petitioner contends that the findings and
`conclusions of the State Bar Court are not
`supported by
`the
`evidence,
`that
`the
`recommended discipline was excessive, and,
`in the first proceeding, that the referee erred
`in
`refusing
`to consider alleged newly
`discovered
`evidence
`that would have
`exculpated him.
`
` After reviewing the record, we set aside
`one finding of misconduct, and modify the
`discipline to include a total of only nine
`months' actual suspension.
`
`FACTS
`
` Petitioner was admitted to the practice of
`law on June 21, 1966. He has been disciplined
`once before, a private reproval in 1978.
`
` The evidence and the findings of fact of
`the referees in the two matters, as adopted by
`the review department, indicate the following:
`
` A. The Merritt Matter
`S008641).
`
`(Case No.
`
`retained
`1983, Juanita Merritt
` In
`petitioner on an hourly fee basis (Merritt
`contended it was on a contingency fee basis)
`to file suit for improper use of photographs of
`her. Petitioner prepared a complaint but did
`not file it because his bill had not been paid.
`The statute of limitations expired. Petitioner
`took no action to protect the matter from
`being barred; gave no warning, oral or
`written, to Merritt regarding the time limits;
`and did not provide her with the prepared
`complaint so she could file it herself.
`
` The referee and review department found
`that had the complaint been filed, "it is
`extremely unlikely that there would have been
`a recovery since the defendants were difficult
`to find, hid well their assets and were
`otherwise mean spirited characters."
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`Lister v. State Bar, 275 Cal.Rptr. 802, 51 Cal.3d 1117, 800 P.2d 1232 (Cal., 1990)
`
` The relationship between Merritt and
`petitioner eroded, and she retained Stanley
`Handman as new counsel for all of her legal
`affairs. On September [51 Cal.3d 1121] 20,
`1984, Handman wrote
`to
`petitioner
`requesting Merritt's
`files. Receiving no
`response, he again wrote to petitioner on
`October 11, 1984. Again, there was no
`response.
`
` In early March 1985, Merritt personally
`contacted
`petitioner,
`and made
`an
`appointment to pick up her files. She arrived
`on time but found the door locked. She had to
`go downstairs to make a telephone call before
`someone answered the door. Merritt was
`given many but not all of her files, which she
`delivered to Handman. On March 7, 1985,
`Handman wrote
`again
`to
`petitioner
`requesting
`the remainder of
`the
`files.
`Petitioner provided neither
`a written
`response to the
`letter nor any
`further
`materials.
`
` B. The Raisor Matter
`S008641).
`
`(Case No.
`
` In April 1977, Jessie Jacobson died.
`Jessie's daughter and son-in-law, Helen and
`Donald Raisor, retained petitioner to "handle
`all the affairs of" Jessie's estate. The
`
`Page 804
`
`[800 P.2d 1234] Raisors were unsophisticated
`in the necessary legal requirements, and
`relied on petitioner to properly advise them.
`
` Prior to her death, Jessie had deeded
`certain real property to Helen and other real
`property of about equal value to her son,
`Ronald Jacobson. Jessie retained a life estate
`in the properties. If the properties were
`deemed as belonging to the estate of Jessie,
`the total taxes would have been about
`$34,000. If the properties were deemed a
`proper gift from Jessie to each of the children,
`they would pass outside the estate, and each
`child would have been obligated to pay an
`
`amount equal to about one-half of that tax
`liability, or about $17,000.
`
` Upon Jessie's death, petitioner calculated
`that there was a tax liability for Helen's
`property of $17,000. He tendered a cashier's
`check in that amount to the Internal Revenue
`Service
`(IRS). The check contained a
`restrictive endorsement stating that it was
`"Full payment of Federal Estate Taxes due
`from Helen Marie Raisor on property
`acquired by her upon the death of Jessie G.
`Jacobson." In a cover letter to the IRS dated
`August 10, 1978, petitioner stated that he
`represented only Helen and the executrix of
`the estate.
`
`the
` In October 1979, Alice Reed,
`administratrix of the estate, received from the
`IRS a letter and check for a little over
`$18,000 made out to the "Jessie G Jacobson
`Estate" and Reed. The amount constituted the
`original amount paid the IRS plus interest.
`The letter stated that the estate tax liability
`was considerably greater than that paid, and
`advised the filing of appropriate forms and
`payment of the correct amount of taxes.
`
` [51 Cal.3d 1122] Reed turned the matter
`over to petitioner. He advised the Raisors that
`they were not obligated to pay the taxes and
`that he would take care of the matter.
`
` Petitioner put the check from the IRS in
`his file, where it remained until March 1982.
`Petitioner contended that during this two and
`one-half year period he was "negotiating"
`with
`the
`IRS
`regarding
`the payment.
`However, the referee and review department
`found the claim not credible, as there was no
`corroborating evidence to support it.
`
` In 1982, the IRS demanded that the
`proper forms be filed and that about $52,000
`in taxes, penalties and interest be paid. The
`Raisors brought this to petitioner's attention.
`He told them that they did not have to pay
`taxes on property Helen did not inherit or
`recieve (i.e., the property that went to brother
`
`-2-
`
`
`
`

`

`Lister v. State Bar, 275 Cal.Rptr. 802, 51 Cal.3d 1117, 800 P.2d 1232 (Cal., 1990)
`
`Ronald), and that he would "fight the IRS on
`this matter." At some point during these
`events, Ronald apparently died. The status of
`Ronald's property is unclear.
`
` Several months later, the IRS seized the
`real property that Helen had received. Donald
`immediately contacted petitioner, who said
`that "he was in an area of law that he was not
`too familiar...." Petitioner referred the Raisors
`to a tax attorney, Marshall Minster. Minster
`determined that the estate did indeed owe the
`taxes the IRS claimed. He negotiated a
`reduction of the total amount, including
`penalties and interest, to about $45,000. The
`Raisors paid this by returning the IRS check
`for $18,000 and writing a check for the
`difference. Thus, on an original tax liability of
`$34,000, the Raisors eventually paid about
`$45,000.
`
` C. The Payton Matter
`S009884).
`
`(Case No.
`
` In June 1986, James Payton retained
`petitioner to represent him in an action for
`age discrimination against Payton's former
`employer. Payton paid petitioner $350 as
`attorney fees. Payton had retired from his
`employment in May 1986. His claim was
`based on a demotion sometime before his
`retirement from a supervisory position to a
`nonsupervisory job which he claimed he was
`not physically capable of handling.
`
` Petitioner made some investigation of
`Payton's claims and concluded that they were
`weak. Petitioner did not, however, inform
`Payton of this conclusion. Around this time,
`petitioner moved his offices hurriedly and
`somewhat unexpectedly. Payton's file was lost
`in the process. Petitioner did not inform
`Payton of his new address..
`
`Page 805
`
`[800 P.2d 1235] Petitioner's support staff,
`especially his secretarial staff, was in a state
`of chaos during this period.
`
` [51 Cal.3d 1123] Payton repeatedly
`attempted to contact petitioner by telephone
`but was unable to do so. Petitioner did not
`return Payton's calls. At one point, petitioner
`instructed a secretary to tell Payton that
`petitioner could no longer represent him, and
`to obtain another attorney. In early 1987,
`Payton wrote to petitioner complaining about
`the lack of communication, and stating the
`intent to report the matter to the State Bar if
`petitioner did not respond. Petitioner did not
`reply to the letter.
`
` On October 6, 1987, Payton filed an
`action in small claims court against petitioner
`for the return of his fee, and attempted to
`serve him at his old address. It is not clear
`whether the action was ever served, but
`petitioner somehow
`learned of
`it. On
`November 12, 1987, petitioner sent a check to
`Payton for the full amount of the claim.
`
` D. The State Bar Investigation (Case No.
`S009884).
`
` Payton and an attorney in another matter
`filed complaints with the State Bar. (The State
`Bar Court found no misconduct regarding this
`latter complaint.) On June 11, 1987, and again
`on September 22, 1987, S. Hank Oh, Special
`Investigator for the Office of Investigation of
`the State Bar, wrote to petitioner at his
`address of record with
`the State Bar
`summarizing Payton's claim, and requesting
`that petitioner respond. Oh sent similar
`letters regarding the other complaint on July
`29, 1987, and September 22, 1987. Petitioner
`did not respond to any of the letters.
`
`FINDINGS AND RECOMMENDATIONS
`BELOW
`
` A. Case No. S008641.
`
` In the Merritt matter, the referee found
`that petitioner
`violated Business
`and
`Professions Code sections 6068 and 6103, 1
`and former rules 2-111(A)(2) and 6-101(A)(2)
`of the State Bar Rules of Professional
`
`-3-
`
`
`
`

`

`Lister v. State Bar, 275 Cal.Rptr. 802, 51 Cal.3d 1117, 800 P.2d 1232 (Cal., 1990)
`
`Conduct, 2 in that he wilfully withdrew from
`employment without taking reasonable steps
`to avoid foreseeable prejudice to the client,
`and by so doing failed to use reasonable
`diligence and his best
`judgment
`in her
`representation. The violations did not harm
`the client. The referee also found that
`petitioner wilfully failed to deliver to the
`client the files demanded by her new attorney
`until some six months after the
`initial
`demand for them.
`
` [51 Cal.3d 1124] In the Raisor matter, the
`referee found that petitioner violated sections
`6068 and 6103, and rules 6-101(A)(1) and 6-
`101(A)(2), in that he knew or should have
`known that he was not competent to handle
`the tax and probate questions involved in this
`case,
`yet he wilfully
`continued his
`representation of the Raisors; and that he
`wilfully failed to use his best judgment and
`learning in accomplishing the settlement of
`the estate with reasonable speed. The clients
`suffered harm in the form of additional
`penalties and interest accrued.
`
` The referee also found that petitioner
`violated sections 6068 and 6103, and rules 8-
`101(A)(2), 8-101(B)(2) and 8-101(B)(3), in
`that he wilfully failed to place the property of
`a client in a place of safekeeping, and failed to
`maintain complete records of all
`funds
`belonging
`to a client and
`to
`render
`appropriate accounts. The clients did not
`suffer harm as a result of these violations.
`
` The referee also found misconduct in a
`separate matter (the Alvord matter).
`
` The referee recommended that petitioner
`be suspended from the practice of law for
`three years, that the suspension be stayed,
`and that petitioner be placed on probation for
`three
`years with
`six months'
`actual
`suspension.
`
`Page 806
`
` [800 P.2d 1236] The review department
`unanimously adopted the referee's findings
`except that
`it set aside the finding of
`the Alvord matter. 3 It
`misconduct
`in
`recommended the same discipline as did the
`referee.
`
` B. Case No. S009884.
`
` In the Payton matter, the referee found
`that petitioner violated: rule 2-111(A)(2), in
`that he
`failed, upon withdrawal
`from
`employment by Payton, to deliver to Payton
`the papers and property to which he was
`entitled; rule 2-111(A)(3),
`in that, upon
`withdrawal from employment by Payton, he
`failed promptly to return any part of the $350
`fee which had been paid to him; rule 6-
`101(A)(2), in that his failure to communicate
`to Payton his misgivings on the merits of
`Payton's case and to urge him to seek other
`advice was
`a
`failure
`of
`competent
`performance of his
`responsibilities as
`Payton's counsel; and section 6103, because
`of the foregoing misconduct.
`
`the State Bar
`the matter of
` In
`investigation,
`the
`referee
`found
`that
`petitioner violated sections 6068, subdivision
`(i), and 6103 because his failure to [51 Cal.3d
`1125] reply to Mr. Oh's letters amounted to a
`failure to cooperate and participate in a
`disciplinary proceeding pending against him.
`
` In mitigation, the referee found that the
`1978 private reproval was too remote and of
`too little significance to carry any aggravating
`weight, that the misconduct (in case No.
`S009884) did not involve multiple acts of
`wrongdoing or a pattern of wrongdoing, that
`Payton suffered
`little or no harm, that
`petitioner has reimbursed Payton, and that
`petitioner has been candid and cooperative
`since the filing of the notice to show cause in
`the action.
`
` The referee recommended that petitioner
`be suspended from the practice of law for
`three years, that the suspension be stayed,
`
`-4-
`
`
`
`

`

`Lister v. State Bar, 275 Cal.Rptr. 802, 51 Cal.3d 1117, 800 P.2d 1232 (Cal., 1990)
`
`and that petitioner be placed on probation for
`three years with
`three months' actual
`suspension consecutive to the suspension
`imposed in case No. S008641.
`
` By a 13-to-1 vote, the review department
`adopted the findings of the referee except that
`it found that petitioner also violated section
`6068, subdivision (a) in the matter of the
`State Bar investigation. It recommended that
`the period of actual consecutive suspension
`be six months, not three months. The
`dissenter found the recommended discipline
`to be insufficient.
`
`DISCUSSION
`
` Petitioner first challenges the sufficiency
`of the evidence to support the findings and
`conclusions below. Petitioner bears
`the
`burden of showing that the State Bar's
`findings are not supported by substantial
`evidence. (Dixon v. State Bar (1982) 32 Cal.3d
`728, 736, 187 Cal.Rptr. 30, 653 P.2d 321.) In
`assessing
`the evidence,
`"[a]lthough we
`independently examine the record, we give
`great weight to the findings below, especially
`when
`they
`are based on
`conflicting
`testimony." (Van Sloten v. State Bar (1989)
`48 Cal.3d 921, 931, 258 Cal.Rptr. 235, 771
`P.2d 1323.)
`
` After reviewing the record we find that,
`with one exception, petitioner has failed to
`meet his burden. The record supports the
`findings
`regarding
`the Merritt matter.
`Petitioner failed to communicate with his
`client, failed to protect her interests so that
`the statute of limitations expired, and failed
`to timely return her files upon demand.
`"Failure
`to
`communicate with,
`and
`inattention to the needs of, a client may,
`standing alone, constitute grounds
`for
`discipline." (Layton v. State Bar (1990) 50
`Cal.3d 889, 903-904, 268 Cal.Rptr. 845, 789
`P.2d 1026.)
`
` [51 Cal.3d 1126] Petitioner contends that
`because Merritt never paid him, there was no
`
`attorney-client relationship. Although there
`apparently was a misunderstanding as to
`whether or not petitioner was retained on a
`contingency fee basis, the record supports the
`finding that an attorney-client relationship
`existed between them. Merritt testified that
`she asked petitioner to file the lawsuit on her
`behalf, and gave him all the
`
`Page 807
`
`[800 P.2d 1237] relevant documents. She
`understood that petitioner was working on
`the matter. Petitioner's office did, in fact, do
`substantial work on the case. "No formal
`contract or arrangement or attorney fee is
`necessary
`to create
`the relationship of
`attorney and client. It is the fact of the
`relationship which is important." (Farnham v.
`State Bar (1976) 17 Cal.3d 605, 612, 131
`Cal.Rptr. 661, 552 P.2d 445.) Under the
`circumstances, an attorney-client relationship
`existed between petitioner and Merritt. He
`could not simply abandon her and let the
`statute of limitations expire.
`
` The findings regarding the Payton matter
`are similarly supported. Although petitioner
`conducted some investigation regarding the
`strength of Payton's claim, and concluded it
`was weak--a conclusion never questioned--he
`failed to communicate this to Payton. Because
`of this, Payton did not benefit from whatever
`efforts petitioner made on his behalf. It is
`misconduct for an attorney to wilfully fail to
`perform the legal services for which he has
`been retained, and
`to wilfully
`fail
`to
`communicate with a client. If an attorney is
`essentially withdrawing from employment, he
`is obligated to give due notice to the client
`(Ridge v. State Bar (1989) 47 Cal.3d 952, 963,
`254 Cal.Rptr. 803, 766 P.2d 569.)
`
` Petitioner also failed to "cooperate and
`participate in any disciplinary investigation ...
`pending against" him. (§ 6068, subd. (i).) He
`repeatedly ignored letters from the State Bar
`requesting a response to the claims of
`misconduct it was investigating.
`
`-5-
`
`
`
`

`

`Lister v. State Bar, 275 Cal.Rptr. 802, 51 Cal.3d 1117, 800 P.2d 1232 (Cal., 1990)
`
` Regarding the Raisor matter, we find the
`record supports the findings that petitioner
`wilfully continued to represent the Raisors
`even though he knew or should have known
`he was not competent to handle the matter,
`and that he failed to use his best judgment
`and learning in accomplishing the settlement
`with reasonable speed. After petitioner
`received the check for $18,000 from the IRS