Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
CAMERON WEIFFENBACH, DIRECTOR OFFICE OF
ENROLLMENT AND DISCIPLINE
v.
WILLIAM F. FRANK RESPONDENT
Proceeding No. D91-1
February 22, 1991
Harry F. Manbeck, Jr.
Assistant Secretary and Commissioner of Patents and Trademarks
FINAL ORDER
*1 The Director
and William F. Frank (Respondent), being fully advised, desire to settle this
disciplinary matter without the need for a hearing before the Administrative
Law Judge. The Director and Respondent therefore present to the Commissioner
this agreed upon FINAL ORDER as a settlement of the above- identified disciplinary proceeding.
On November 26, 1990, a
Complaint and Notice of Proceeding under 35 U.S.C. 32 (Complaint) was filed
against the Respondent. Respondent duly filed an answer. The charges against
the Respondent were set forth in the following count:
COUNT
Respondent, a
practitioner who is not an attorney, represented, for fees, one or more
trademark applicants by advising applicant(s) about registrability of proposed
trademarks and/or by prosecuting one or more trademark applications including
drafting the application(s) and preparing responses to one or more Office
actions, all of which Respondent arranged for the applicant to submit as pro se
documents. In so doing, Respondent engaged in the unauthorized representation
of trademark applicants before the U.S. Patent and Trademark Office, prohibited
by 37 CFR 10.14(b), and handled legal trademark matters which the Respondent
knew or should have known he was not competent to handle.
1. Respondent has been
registered to practice, since 1965, as a patent agent before the PTO.
Respondent, as a registered patent agent, being neither an individual who is a
member in good standing of the bar of any United States court or the highest
court of any State nor recognized to practice before the Office in trademark cases under 37 CFR prior
to January 1, 1957, was not and is not authorized to represent trademark
applicants before the PTO at any time since he became a patent agent. See 37
CFR 10.14(b), its predecessor, 37 CFR 2.12(b).
2. In response to a
Request for Comments, Respondent informed the Office of Enrollment and
Discipline in 1988 that, in 1981, Respondent was told by an attorney that the
Respondent could not represent trademark applicants. According to the response,
the attorney told Respondent to advise any clients, whose applications were
then pending, of this disability and to suggest that the clients obtain the
services of a lawyer to take over the applications or represent themselves
before the Trademark Office.
3. In 1981, Respondent
was representing foreign and domestic trademark applicants directly before the
PTO. In 1981, Respondent wrote letters to his trademark clients, advising them
that, "the U.S. rules do not permit a non- attorney to practice trademarks
before the Patent and Trademark Office," in one letter and, "I
recently learned that a patent agent is not permitted to practice before the Trademark
Division ...," in a second letter.
*2 4. Respondent
prepared trademark and/or service mark applications after 1985, which were
subsequently signed and submitted to the PTO as pro se applications, including:
Love Fever (R) (stylized)
Perfume, Cologne, Body
Lotions, Skin Toners, Bath Oils and Soap.
Application Serial No.
73/609,681, filed 07/16/86
Registration No.
1,455,997, date 09/08/87
B. Steve Lehrhoff DBA
Seal-A-Drive
Seal-A-Drive (R)
Coating Driveways,
Parking Lots ...
Application Serial No.
73/678,358, filed 08/14/87
Registration No.
1,545,032, date 06/20/89
C. Remembrances, Inc.
Remembrances (R)
(stylized)
Reproduction of
turn-of-the-century jewelry ...
Application Serial No.
73/719,081, filed 03/28/88
Registration No.
1,514,537, date 10/29/88
The Love Fever (R) Application
5. During the prosecution
of the trademark application for Love Fever (R), Respondent prepared the
application for Margaret Hodge.She relied on and was charged by Respondent for
assistance in preparing the response to the Office action and for
representation before the PTO.
6. In the Love Fever (R) trademark
application, prepared by the Respondent, the trademark examining attorney
rejected the trademark application: (a) because it was indefinite whether the
person, Margaret Hodge, or the Margaret Hodge Company was the applicant, (b)
because the identification of goods covered by the application as filed was
indefinite, (c) because the application did not address (i.e., it omitted)
labelling information required under the Federal Food, Drug and Cosmetic Act,
and (d) because the application omitted the required "now in use"
statement. For reasons stated by the trademark examining attorney, this
application was improperly prepared by the Respondent.
7. Respondent wrote to
the Office of Enrollment and Discipline:
Since 1986, I have
prepared and filed the following trademark applications after carefully and
thoroughly explaining during telephone conversations the options of applicants
representing themselves, or being represented by an attorney; thoroughly
advising the prospective applicants that if they filed the application the
Trademark Office would correspond with them and they could talk or write to the
Trademark Attorney or have an attorney do so; as well as stressing the
requirements for continuous use in interstate commerce for a federal
registration.
***
That I received a copy of a letter from
Miss Hodge to Trademark Attorney Mandir.... I telephoned her reminded her I
could not talk to any attorney in the Trademark Office and suggested she
consult an attorney in New York.
8. Even if Respondent
phoned Margaret Hodge as he claimed, and "carefully and thoroughly"
explained her options of representing herself or having an attorney represent
her, Margaret Hodge wrote to the Respondent on November 5, 1986: "The
brief [the Office Action] sent, indicates that we must answer each item
paragraphed, so that we do not lose the application for this failure in
complying with their itemized request. POSSIBLY A CALL TO MR. MANDIR [the
trademark examiner] WOULD BE BEST.... I do owe you monies and would appreciate
an update bill."
*3 9.
Notwithstanding the telephone reminder in which the Respondent states that he
told Ms. Hodge, the applicant, that he, "could not talk to any attorney in
the [Patent and] Trademark Office and suggested she consult an attorney in New
York," Ms. Hodge wrote to the trademark examiner on February 6, 1987,
"Following my telephone conversation of today, I am herewith attaching a
copy of a brief sent to Mr. William Frank [Respondent] who is handling this
property for me. It is my [applicant's] understanding that Mr. Frank will be in
communication with you [the Trademark Attorney] to cover the matter of the
items outlined in your correspondence with me." Applicant's communication
with the Office occurred approximately three months after the applicant's
letter to Respondent, cited in paragraph 8
above.
The Seal-A-Drive (R) Application
10. On December 7, 1987,
an attorney representing the applicant for a service mark registration for
Seal-A-Drive (R), provided information under 37 CFR 10.24 about alleged
misconduct of the Respondent in searching, preparing, filing and prosecuting
the original application for the applicant's mark. Respondent performed a
"Trademarkability" search, analyzed and reported the results,
prepared the application and filed the application.
11. Respondent charged
the applicant fees, inter alia, for Respondent's "Trademarkability" search and analysis, and for
preparation and filing of the service mark application.
12. Respondent prepared
and filed the service mark application for Seal-A- Drive (R). In the
Seal-A-Drive (R)service mark application, the trademark examining attorney
rejected the application: (a) because it omitted a required statement of
citizenship, (b) because the description of services covered by the mark as
filed was indefinite, and (c) because the application, as filed, was improperly
classified. For reasons stated by the trademark examining attorney, this
application was improperly prepared by the respondent.
13. Respondent testifies:
"That as to why I 'gave Mr. Lehrhoff's address (not your (my)) address as the correspondence
addressee [sic] in his trademark application', I believe the Patent and
Trademark Office requires correspondence to be sent to an applicant at his
address, or to the attorney transmitting the application, or the attorney
designated in a power of attorney. Since I did not qualify as any one of the
two alternatives to the applicant, giving Mr. Lehrhoff's address was in
compliance with the rules."
14. The Respondent was
conscious of limitations on his authority to practice before the U.S. Patent
and Trademark Office as a patent agent. To practice in the trademarks and
service marks field before the PTO, Respondent intentionally and with
deliberation concealed his impermissible practice by using the applicant's
address as the correspondence address to evade these limitations.
The Remembrances (R) Application
*4 15. Respondent
prepared the trademark application for Remembrances (R) for which he charged
applicant.
16. By engaging in
conduct described in paragraphs 4 through 15 inclusive (drafting one or more trademark applications
and drafting applicant's responses to Office Actions or advising applicants on
"trademarkability" and/or advising them on the form and content of
their application(s) and response(s) to Office Actions), Respondent extended
the scope of his practice beyond the scope of his representational authority as a patent agent.
The totality of his conduct in connection with his trademark practice adversely
reflects on his fitness to practice before the Office, proscribed by 37 CFR
10.23(b)(6).
17. By engaging in
conduct described in paragraphs 4 through 15 inclusive Respondent handled one
or more legal trademark matters which he knew or should have known that he was
not competent to handle, because it required the Respondent to be engaged in
the unauthorized practice of trademark law under the standard imposed by PTO
Rule 37 CFR 10.14(b). Practice of trademark law by non-attorneys, even if they
are patent agents, is one form of incompetence, prohibited by 37 CFR 10.77(a).
SETTLEMENT
For purposes of settling
this disciplinary matter without any determination by the Administrative Law
Judge, and without a hearing, The Director and the Respondent have agreed as
follows:
1. Respondent
acknowledges that he is aware of the charges and that he is guilty of
violations of the Patent and Trademark Office Code of Professional
Responsibility as set forth in the Count of the Complaint.
2. Respondent
acknowledges that he is entitled to have a hearing in this proceeding and that
he hereby waives his rights thereto.
3. Respondent acknowledges that he freely
and voluntarily enters into this settlement and accepts this FINAL ORDER.
4. Respondent further
acknowledges that he is not acting under duress or coercion from the Patent and
Trademark Office.
5. Respondent further
acknowledges that he is fully aware of the implications of entering into
settlement and accepting this FINAL ORDER.
6. The Director and the
Respondent shall bear their own costs.
7. The Director and the
Respondent request that the Commissioner enter the FINAL ORDER.
8. The Respondent agrees,
henceforth, that he will not participate in any way whatsoever, in assisting
others, directly or indirectly, in connection with any immediate, prospective
or pending business before the Patent and Trademark Office in trademark
matters, including but not necessarily limited to searching trademarks,
drafting documents, filing documents, paying fees, offering advice or opinions,
and making referrals to other practitioners. Respondent further agrees to
promptly return all documents received from clients or other persons in
non-terminated trademark matters and all funds received for any such trademark
matter now in his possession or which shall come into his possession in the
future. Respondent further agrees to promptly inform such clients or other
persons, or anyone who in the future inquires, that he is not authorized to
work on trademark matters. The word "trademark" as used in this
paragraph shall include any activity which
is subject to the jurisdiction of the Patent and Trademark Office under 15
U.S.C. 1051 et. seq.
*5 9. Respondent
shall comply with all PTO Disciplinary Rules.
10. Respondent shall be
publicly reprimanded for his conduct as specified in the Count. This public
reprimand shall take place upon the approval and entry of the FINAL ORDER.
11. The following notice
will be published in the OFFICIAL GAZETTE
PUBLIC REPRIMAND
William F. Frank of
Arlington, Virginia, whose registration number is 22,626, has been publicly
reprimanded. This action is taken under the provisions of 35 U.S.C. 32 and 37
CFR 10.130(a)(1) and 10.133(g).
12. The Director and the
Respondent agree that the FINAL ORDER may be published in its entirety, and the
Director shall give notice of the FINAL ORDER, SETTLEMENT and information in
investigative files in the Office of Enrollment and Discipline, concerning
Respondent, to appropriate authorities in the State of Virginia.
Agreed to:
William F. Frank,
Respondent
Date: February 14, 1991
Ellsworth H. Mosher,
Attorney for Respondent
Date: February 14, 1991
Agreed to:
Cameron K. Weiffenbach,
Director, Office of Enrollment and Discipline
Date: February 19, 1991
Agreed to:
Harris A. Pitlick, Associate Solicitor Counsel for the Director
Date: February 19, 1991
Approved and FINAL ORDER
Entered:
18 U.S.P.Q.2d 1397
END OF DOCUMENT