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Abstract

The conduct of practitioners and agents before the U.S. Patent and Trademark Office (“USPTO” or “Office”) is subject to regulation by the Office under 35 U.S.C. § 2(b)(2)(D). This provision grants the Under Secretary of Commerce for Intellectual Property and the Director of the USPTO the authority to establish regulations to govern the conduct of agents, attorneys, or other representatives before the Office, including establishing disciplinary measures for non-compliance with those regulations. The USPTO regulations governing conduct include the Patent and Trademark Office Code of Professional Responsibility. This article summarizes the key canons and disciplinary rules applicable to trademark practitioners and authorized representatives; outlines common ethical issues for practitioners and other authorized representatives that arise in ex parte and inter partes trademark proceedings before the USPTO. This article also discusses the case law that has developed relating to these issues. Although the practice of law is generally regulated by State ethics rules and regulations, trademark practitioners and authorized representatives should be equally familiar with the separate set of USPTO regulations governing their conduct before the Office. Additionally, although the USPTO canons and disciplinary rules are based on the Model Code of Professional Responsibility of the American Bar Association (like some State ethics codes), there are a number of ethical issues unique to the conduct of trademark practitioners and agents before the Office. Failure to adhere to these unique rules and regulations can result in disciplinary action by the USPTO that compounds or even exceeds any disciplinary action by the State.

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