Trevor Little

The founder of The Trademark Company, one of the most prolific trademark filers at the USPTO, has agreed to resign from practising before the office. The development ends a fractious relationship between the USPTO and one of its biggest customers.

In recent years, The Trademark Company rocketed up the list of the most prolific filers at the USPTO. Last year we reported that – in fiscal year 2015 - the company ranked second in terms of representative filers at the office, trailing only Raj Abhyanker of Trademarkia. What the two organisations have in common is the utilisation of web technologies to make low cost trademark applications accessible to a wide audience, this approach predicated on reducing the clerical work and administrative burden related with applications. What they also have in common is criticism from law firms which argue that trademark applications are not something that can be commoditised. Further, that there is a risk of applicants are missing out on the advice and counselling that attorneys offer, and that the quality of applications can be compromised, leading to later complications (and additional expense for the applicant).

That debate continues and last year we reported that the founder of The Trademark Company, Matthew H Swyers, had commenced legal action against the USPTO and the Office of Enrolment and Discipline (OED), alleging that his constitutional rights had been violated by an OED investigation into his trademark-related work. That investigation, the documents noted, was focused specifically on his work as a trademark lawyer, encompassing up to 15,000 applications and without affording him “any means to challenge the RFIs' over-breadth, oppressiveness, or invasion of the attorney-client privilege”. In the same way that it raised eyebrows in legal circles, the documents suggested that it was the sheer volume of filings made by Swyers that prompted the move by the OED.

On May 27 2016, a motion to dismiss the complaint was granted, with the court noting that the USPTO’s administrative process was ongoing and that a “collateral attack on the pending PTO proceedings is precluded”. Effectively, the process laid out that a party unsatisfied with the outcome of an OED investigation can petition the OED director, and then the USPTO director. At that point federal court action becomes an option.

Fast forward seven months and Swyers submitted an affidavit resigning from practice before the USPTO (which was approved on January 26 2016). World Trademark Review was alerted to the development by Funk & Bolton’s Michael McCabe, who explains: “As a result, and because his resignation was tendered while he was the subject of a disciplinary proceeding, the USPTO director issued an order excluding Mr Swyers on consent pursuant to 37 CFR Section 11.27. What this means in practical terms is that while Mr Swyers ‘goes out’ denying the allegations in the USPTO's disciplinary complaint, if he ever seeks reinstatement to practice again before the USPTO – which cannot occur for at least five years – then the Director of the OED will conclusively presume that the allegations in the USPTO's disciplinary complaint are true and that Mr Swyers could not have defeated those allegations. The consequence of his resignation is that Mr Swyers no longer will be able to provide trademark services.”

McCabe’s expanded analysis of the battle between Swyers and the OED on the IPethics and INsights blog is well worth a read. One allegation made by the organisation in its complaint for discipline was that non-attorneys were permitted to practice trademark law for Swyers with little or no supervision, and that he did not personally review or sign thousands of trademark applications and related documents prepared by non-lawyer employees and filed with the USPTO. While the disciplinary complaint has been ended with no formal findings, McCabe comments: “It does go to show that trademark practitioners must be very careful in ensuring that they properly supervise their staff and that they not permit non-attorney staff to sign the attorneys' name--even if that signature is an ‘e-signature’. The OED is very serious about enforcing its disciplinary rules.”

The one unanswered question at present relates to the future of The Trademark Company. World Trademark Review has reached out to Swyers for his perspective on last month’s affidavit and to explore what the future holds for the company (we will update this blog if we receive comment). Although a call to the organisation went unanswered, at present the company’s website is live and is still open for trademark business online. Many in the legal community will be watching closely, to see if one of the more prolific filing factories retains its position on the top representatives list going forward.

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