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ESTTA Tracking number: ESTTA824817

Filing date: 06/05/2017

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 91211392

Party DefendantHallmark Industries, Inc.

CorrespondenceAddress

ERIK M PELTONERIK M PELTON & ASSOCIATES PLLC111 PARK PLACEFALLS CHURCH, VA 22046UNITED [email protected]

Submission Other Motions/Papers

Filer's Name Erik M. Pelton

Filer's e-mail [email protected]

Signature /ErikMPelton/

Date 06/05/2017

Attachments 2017-06-05 HALLMARK INDUSTRIES INC - Motion FINAL.pdf(89341 bytes )EX A and B.pdf(3349139 bytes )EX C and D.pdf(450223 bytes )

http://estta.uspto.gov

I N THE UNI TED STATES PATENT AND TRADEMARK OFFI CE

BEFORE THE TRADEMARK TRI AL AND APPEAL BOARD

REQUEST FOR RECONSI DERATI ON

& MOTI ON FOR RELI EF FROM JUDGMENT

COMES NOW, Applicant , by counsel, and subm its this Request for

Reconsiderat ion & Mot ion for Relief From Judgment . The judgment at issue is the

Board’s May 3, 2017, grant ing of Pet it ioner’s Mot ion for Summary Judgment . 50

TTABVUE. The Request for Reconsiderat ion is made pursuant to 37 CFR § 2.129(c)

and TBMP § 543. The Mot ion for Relief from Judgment is made pursuant to Fed. R.

Civ. Pr. 60(b) , 37 CFR § 2.116(a) and TBMP § 544.1

To begin, Applicant acknowledges that grant ing such mot ions are rare, and

that they are granted only when the circum stances at hand are except ional.

Applicant f iles this mot ion because the circumstances here are indeed except ional,

and the interests of j ust ice just ify a re-br iefing of the Mot ion for Summary

1 “Fed. R. Civ. P. 60(b) , as made applicable by 37 CFR § 2.116(a) , applies to all

final j udgments issued by the Board, including default and consent j udgments,

grants of summary judgments, and judgments entered after t r ial on the merits. As

a pract ical mat ter, m ot ions to vacate or set aside a final Board j udgment are

usually based upon the reasons set forth in subsect ions (1) , (2) and/ or (6) of Fed.

R. Civ. P. 60(b) .” TBMP § 544.

Hallmark Licensing, LLC

Opposer,

v.

Hallmark I ndust r ies, I nc.,

Applicant .

Consolidated Opposit ion No.

9 1 2 1 1 3 9 2 ( PARENT)

91215884

91211392: Request for Reconsiderat ion & Mot ion for Relief from Judgm ent p. 2

Judgment filed by Opposer on October 16, 2016, and granted by the Board on May

3, 2017. 42 TTABVUE and 50 TTABVUE.

The except ional circumstances here relate primar ily to the pr ior counsel of

Applicant , Mat thew Swyers, who represented Applicant at the t ime of the filing of a

response to the Mot ion for Summary Judgment and since March of 2015. See

Not ice of Appearance of Counsel. 21 TTABVUE.

The circumstances are except ional because (A) Applicant ’s pr ior counsel

Mat thew Swyers was under invest igat ion by the USPTO’s Office of Enrollm ent and

Discipline ( “OED”) and, j ust days after f iling the Response to the Mot ion for

Summary Judgment , signed an Affidavit for Consent Exclusion pursuant to 37

C.F.R. §11.27 barr ing him from pract icing before the USPTO for at least f ive (5)

years; and (B) Mr. Swyers om it ted a great deal of relevant informat ion in

responding to the Mot ion for Summary Judgment . See Final Order issued by the

Director of the U.S. Patent and Trademark Office, Proceeding No. D2016-20,

at tached hereto as Exhibit A.2 The Not ice of Exclusion on Consent was also

published in the March 28, 2017 Official Gazet te. See Exhibit B.

Applicant ’s pr ior counsel, j ust two weeks after filing the response to the

Mot ion for Summary Judgment in this mat ter on November 30, 2016, signed an

Affidavit for Consent Exclusion in which he acknowledged a litany of failures,

oversights, rule v iolat ions and ethical v iolat ions in represent ing clients while

pract icing before the USPTO. The details of these allegat ions are contained in

Exhibit A and discussed more thoroughly below.

2 The Board could also take judicial not ice of the documents from the proceedings

against Mr. Swyers pursuant to TBMP § 704.12 since they are (a) USPTO or court

records, (b) public, and (c) were not available to Applicant at the t ime of its last

filing with the Board.


I n December 2016, at the t ime of the filing of Mr. Swyers’ response to the

MSJ and his mot ion to withdraw in this proceeding, it appears that Mr. Swyers was

counsel in dozens of TTAB proceedings. 3

I n Mr. Swyers’ filing of the mot ion for Withdrawal of Counsel, 46 TTABUVE,

on December 16, 2016, he made no reference to the disciplinary act ion, the

consent exclusion or any other diff icult ies. Rather, counsel stated:

Counsel is no longer receiving direct ives from Applicant as to lit igat ion

decisions, st rategy, and the like required to cont inue its representat ion in this

mat ter. Despite numerous at tempts to communicate with the Applicant ,

counsel cert if ies that Applicant has denied counsel for the Applicant the

cont inued author ity to proceed in his representat ive capacity in this mat ter.

As such, Counsel for Applicant ’s ability to represent Applicant has been

comprom ised to the extent that he can no longer effect ively represent

Applicant .

As a result of the foregoing circumstances which are ext remely except ional

and which prejudiced Applicant ’s ability to receive a fair hear ing on the merits in

this m at ter, Applicant hereby requests that the Board grant the request for

reconsiderat ion or relief from judgment and allow Applicant to re-brief the mot ion

for summary judgment .

LEGAL STANDARD

Mot ion for Relief from Judgm ent

Federal Rule of Civil Procedure 60(b) states that :

3Mr. Swyers m ay have been counsel for dozens upon dozens of applicants in inter partes or

ex parte m at ters before the TTAB in Novem ber and Decem ber of 2016 when the key events,

nam ely the m ot ion for sum m ary judgm ent and the conclusion of the OED invest igat ion,

were taking place. However, searching such cases in TTABVUE is not possible because if Mr.

Swyers filed to withdraw he would no longer be listed as counsel and there is no m echanism

to search for cases where he used to be counsel.


On m ot ion and just term s, the court m ay relieve a party or its legal

representat ive from a final judgm ent , order, or proceeding for the

follow ing reasons:

(1) m istake, inadvertence, surprise, or excusable neglect ;

(2) newly discovered evidence that , with reasonable diligence, could not have

been discovered in t ime to move for a new t r ial under Rule 59(b) ;

(3) fraud (whether previously called int r insic or ext r insic) , m isrepresentat ion,

or m isconduct by an opposing party;

(4) the judgment is void;

(5) the judgment has been sat isfied, released, or discharged; it is based on

an earlier j udgment that has been reversed or vacated; or applying it

prospect ively is no longer equitable; or

( 6 ) any other reason that just ifies relief .

Fed. R. Civ. Proc. 60(b) (emphasis added) .

Mot ion for Reconsiderat ion of Final Decision

The standard for granted a mot ion for reconsiderat ion is quite open.

“Generally, the prem ise underly ing a request for rehearing, reconsiderat ion, or

modificat ion under 37 CFR § 2.129(c) is that , based on the evidence of record and

the prevailing author it ies, the Board erred in reaching the decision it issued. The

request may not be used to int roduce addit ional evidence, nor should it be devoted

simply to a reargument of the points presented in the request ing party’s br ief on

the case. Rather, the request normally should be lim ited to a demonst rat ion that ,

based on the evidence properly of record and the applicable law, the Board’s ruling

is in error and requires appropriate change.” TBMP § 543.

Nothing in the TBMP precludes the Board from considering other evidence or

from grant ing a mot ion for reconsiderat ion in ext raordinary circumstances when the

interests of just ice require it .

PROCEDURAL HI STORY

This Mot ion comes before the Board after the grant ing of Opposer’s Mot ion

for Summary Judgment for the consolidated proceedings Nos. 91211392 (parent )


and 91215884 on May 3, 2017. 50 TTABVUE. The procedural history of this mat ter

prior to the judgment is rather lengthy and complicated.

These proceedings began when Opposer served the Not ice of Opposit ion on

July 3, 2013. 1 TTABVUE. Applicant served its Answer on August 7, 2013. 4

TTABVUE. On February 18, 2014, the Part ies st ipulated to suspend the proceedings

pending disposit ion of a civ il act ion in the U.S. Dist r ict Court for the Western

Dist r ict of Arkansas. 10 TTABVUE and11 TTABVUE. During the suspension, on

March 5, 2014, the Board granted Applicant ’s counsel’s Mot ion to Withdraw, 12

TTABVUE. Applicant subsequent ly appointed Mat thew H. Swyers of The Trademark

Company, PLLC as counsel on May 23, 2015. 13 TTABVUE.

I n No. 91215884, Opposer served the Not ice of Opposit ion on April 14, 2014,

No. 91215884, 1 TTABVUE, and the proceedings were init iated by the Board the

same day. No. 91215884, 3 TTABVUE. Applicant served the Answer to No.

91215884 on May 16, 2014, appoint ing Mr. Swyers as counsel. No. 91215884, 4

TTABVUE.

On September 24, 2014, Opposer not if ied the Board that the civ il act ion had

been dism issed, and moved to consolidate this proceeding with 91215884. 17

TTABVUE. Following a var iety of other procedural f ilings including re-appointment of

Mr. Swyers as counsel and the grant ing of Opposer’s mot ion to compel, Opposer

moved for summary j udgment on October 26, 2016. 42 TTABVUE. Applicant served

a response opposing the mot ion on November 30, 2016. 44 TTABVUE. Opposer

served its Reply on December 15, 2016. 45 TTABVUE. The next day, December 16,

2016, Mr. Swyers moved to withdraw from the proceedings. 46 TTABVUE.


On December 20, 2016, Mr. Swyers subm it ted an Affidavit For Consent

Exclusion to the USPTO for the purpose of being excluded on consent pursuant to

37 C.F.R. § 11.27, and was subsequent ly excluded from USPTO pract ice for no less

than five years by the Director on January 26, 2017. I n re Mat thew H. Swyers, No.

D2016-20 (USPTO Jan. 26, 2017) .

Applicant appointed present counsel on February 10, 2017. 48 TTABVUE. The

mot ion for summary j udgment was granted on May 3, 2017.

Details of Mr. Sw yers’ Exclusion on Consent

I n the December 20, 2016, twelve-page Affidavit For Consent Exclusion4, Mr.

Swyers acknowledged the violat ion of many sect ions of the code of conduct . See

Exhibit A. These violat ions include direct ing or allowing Mr. Swyers employees to

sign or forge his elect ronic signature; failing to review documents before they were

filed with the Office; violat ing the USPTO Code of Professional Responsibilit y; and

engaging in conduct involving dishonesty, fraud, deceit , or m isrepresentat ion.

As stated in the Director’s Final Order:

Mr. Swyers’ affidavit acknowledged that the disciplinary complaint f iled

against him alleged that his conduct v iolated the following provisions

of the USPTO Code of Professional Responsibilit y, for conduct pr ior to

May 3, 2013: 37 C.F.R. §§ 10.23(a) (engaging in disreputable or gross

m isconduct ) ; 10.23(b) (4) (engaging in conduct involving dishonesty,

fraud, deceit , or m isrepresentat ion) ; 10.23(b) (5) (engaging in conduct

prejudicial to the adm inist rat ion of j ust ice) ; 10.23(a) and (b) v ia

10.23(c) (2) ( ii) ( knowingly giv ing false or m isleading informat ion or

knowingly part icipat ing in a mater ial way in giv ing false or m isleading

informat ion to the USPTO or any employee of the USPTO) ; 10.23(a)

and (b) via 10.23(c) (15) (violat ing the cert if icat ions m ade to the

USPTO under 37 C.F.R. § 11.18) ; 10.31(a) (deceiv ing or m isleading

prospect ive applicants or other persons having immediate or

prospect ive business before the Office by advert ising with respect to

prospect ive business before the Office) ; 10.47(a) and (c) (aiding a

4The Affidavit executed by Mr. Swyers is not included in the Director s Final Order, but the details of it are

contained in the Order.


non-pract it ioner in the unauthorized pract ice of law before the Office) ;

10.48 (sharing legal fees with a non-pract it ioner) ; 10.77(b) (handling

a legal mat ter without preparat ion adequate under the circumstances) ;

10.77(c) (neglect ing client mat ters) ; 10.84(a) (1) ( intent ionally failing

to seek the lawful object ives of a client ) ; 10.84( a) (3) ( intent ionally

prejudicing or damaging the client dur ing the course of a professional

relat ionship) ; 10.89(c) (6) ( intent ionally or habitually v iolat ing any

provision of the USPTO Code of Professional Responsibilit y while

appearing in a professional capacity before a t r ibunal) ; 10.112(a)

( failing to deposit legal fees paid in advance into a separate client t rust

account ) ; and 10.23(b) (6) (engaging in other conduct that adversely

reflects on the pract it ioner’s f itness to pract ice before the Office) .”

Furthermore, in a filing made last year by the Assistant U.S. At torney on

behalf of the USPTO in a case stemming from the OED invest igat ion into Mr.

Swyers’ pract ice before the USPTO, the government noted that :

After an invest igat ion into his conduct as a t rademark pract it ioner, and

a finding of probable cause to believe he had engaged in substant ial

m isconduct by an independent commit tee of USPTO officials, the OED

Director has filed a lengthy complaint against plaint iff that presents

eight separate counts of v iolat ions of USPTO’s professional

responsibilit y rules.

See Memorandum of Law in Support of United States Patent & Trademark Office’s

Mot ion to Dism iss at p. 1, Civ. Act ion 1: 16cv15, ED. VA (Filed March 22, 2016) ,

at tached at Exhibit C with exhibits thereto om it ted.

Oversights by Mr. Sw yers in this Proceeding

As noted above, the ext raordinary circumstances related to Applicant ’s prior

counsel and the pending OED invest igat ion and subsequent exclusion from pract ice

did not afford Applicant the opportunit y to provide a full, complete, and fair

response to Opposer’s Mot ion for Summary Judgment . Without subm it t ing

addit ional evidence here given the nature of this mot ion and the relief requested5,

5 Although, upon request from the Board, Applicant would be glad to subm it such

evidence as part of a supplemental br ief.


Applicant notes that the response to the mot ion was lacking in the following

manners:

• Mr. Swyers’ response to the MSJ did not reference evidence that could

cont radict the ownership assert ions by Opposer.

• Mr. Swyers’ response to the MSJ did not reference Opposer’s prior - to

opposit ion, f iled in 2005, to the then pending applicat ions of Applicant ’s

predecessor- in- interest , Diastar , I nc., for HALLMARK RI NGS and HALLMARK

DI AMONDS. ht tp: / / t tabvue.uspto.gov/ t tabvue/ v?pno= 91167232&pty= OPP

o The prior opposit ion was dism issed against Hallmark with prejudice on

November 24, 2010. See 91167232 33 TTABVUE. Hallmark now

asserts ownership of these very same records which it previously lost

–with prejudice - the opportunity to challenge.

o Applicant ’s init ial counsel in this proceeding raised this issue in the

Affirmat ive Defenses filed in the or iginal Answer of August 7, 2013. 4

TTABVUE.

• Mr. Swyers’ response to the MSJ did not challenge Opposer’s prior ity.

• Mr. Swyers’ response to the MSJ did not challenge Opposer’s standing.

• Mr. Swyers’ response to the MSJ did not reference the possible abandonment

of any r ights asserted by Opposer in the HALLMARK RINGS and HALLMARK

DI AMONDS regist rat ions, and Opposer filed no evidence to show cont inuous

use of said marks throughout the period during which Opposer has allegedly

owned the r ights to those marks and the corresponding regist rat ions thereof.

• Mr. Swyers failed to disclose to Applicant that he was being invest igated by

OED. See Exhibits A, B, and C.


• Mr. Swyers failed to disclose to Applicant that he was being barred from

pract icing before the USPTO. Mr. Swyers told Applicant via email on October

128, 2017: “Please accept this correspondence as not ice that after a

dist inguished 20-year career I will be ret ir ing from the pract ice of law

effect ive later this month. I t has been my dist inct honor and pr iv ilege to have

represented tens of thousands of wonderful clients over the years and

especially you.” 6

• Mr. Swyers failed to deliver copies of all proceeding documents to Applicant ,

despite the statement made by counsel in the mot ion t o withdraw.

• Upon the hir ing and ent ry of an Appearance by the undersigned firm , Er ik M.

Pelton & Associates, PLLC, Mr. Pelton had to contact Mr. Swyers numerous

t imes over several weeks to finally receive copies of the files in this

proceeding. See March 7, 2017 let ter from Pelton to Swyers, At tached as

Exhibit D. Mr. Pelton cannot be sure that he received all of the files, including

discovery documents produced by the part ies, as the documents eventually

provided by Mr. Swyers were not produced in any organized or indexed

manner.

Argum ent

Ext reme remedies are appropr iate only with the circumstances are indeed

ext reme. The Board rules and Federal Rules of Civil Procedure feature mechanisms

for such remedies when the circumstances – and the interests of j ust ice – merit

them. I n handling of dozens of mat ters before the Board over more than fifteen

6Applicant will make this email available to the Board under seal if requested to guard against any waiver of

privilege or other issues.


(15) years, the undersigned firm has certainly never seen circum stances more

except ional than the present case. Here, Applicant requests the Board to grant it

relief from the summ ary judgment ordered a few weeks ago so that Applicant may

properly br ief the mot ion. The circumstances are aberrant because Applicant ’s pr ior

counsel acknowledged, within weeks of his last ‘substant ive’ fling in this mat ter to a

litany of professional and ethical shortcom ings. These shortcom ings direct ly

impacted Applicant ’s ability to seek a fair and just result in this mat ter on the actual

merits after review of the appropr iate arguments.

As a result of the t ruly except ional circumstances detailed above,

ext raordinary relief is appropriate. The relief requested, namely vacat ing the ent ry

of summary judgment and allowing the part ies to re-br ief the Mot ion for Summary

Jjudgment , would be in the interests of j ust ice. Following the events and

circumstances surrounding Applicant ’s pr ior counsel in December 2016, the current

decision of the Board entering summary judgment on May 3, 2017, does not serve

the interests of j ust ice.

The relief requested by Applicant here would not significant ly prejudice

Opposer as Opposer would st ill be perm it ted to make its case for summary

judgment , and even if summary judgment was eventually denied Opposer would

st ill be perm it ted to pursue the complet ion of the opposit ion process seeking to

block regist rat ion of Applicant ’s marks.

Rule 60(b) (6) grants federal courts author it y to relieve a party from a final

judgment “upon such terms as are just .” Lilj eberg v. Health Servs. Acquisit ion

Corp. , 486 U.S. 847, 863–64 (1988) ; see Fed. R. Civ. Proc. 60(b) ( “ [ T] he Court

may relieve a party from a final j udgment for (6) any other reason that j ust if ies


relief.” ) . A movant is ent it led to relief under Rule 60(b) (6) —the “catch-all”

provision—if “such act ion is appropr iate to accomplish just ice” and only in

“ext raordinary circum stances.” I d. at 863–64 (quot ing Klapprot t v. United States,

335 U.S. 601, 614–15 (1949) ( internal quotat ion marks om it ted) ) .

Most of the cases, as well as the scholar ly art icles, on Rule 60(b) (6) involve

mat ters where a default j udgment was entered, or where a decision was eligible for

an appeal but none was filed. Since this case does not involve a movant who

deliberately stopped pursuing its remedies, there is scant precedent available.

“To just ify relief under subsect ion (6) , a party must show ‘ext raordinary

circumstances’ suggest ing that the party is fault less in the delay.” ) ; Lilj eberg v.

Health Servs. Acquisit ion Corp. at 863-64 ( “ [ W] e have previously noted that [ Rule

60(b) (6) ] provides courts with author ity adequate to enable them to vacate

judgments whenever such act ion is appropr iate to accomplish just ice, while also

caut ioning that it should only be applied in ‘ext raordinary circumstances.’” ( citat ion

om it ted) .

The Ninth Circuit has found that gross negligence by a party’s counsel may

const itute ext raordinary circumstances under Rule 60(b) (6) . Comm unity Dental

Services v. Tani, 282 F.3d 1164, 1170 (9th Cir. 2002) ( “When an at torney is

grossly negligent , as counsel was here, the judicial system loses credibilit y as well

as the appearance of fairness, if the result is that an innocent party is forced to

suffer drast ic consequences.” ) Several other courts have reached sim ilar

conclusions; see, e.g. L.P. Steuart , I nc. v. Mat thews, 329 F.2d 234, 235 (D.C. Cir.

1964) (stat ing that R. 60(b) (6) " is broad enough to perm it relief when as in this


case personal problems of counsel cause him grossly to neglect a diligent client ’s

case and m islead the client ") .

The litany of professional and ethical shortcom ings of Applicant ’s prior

counsel explain the otherwise inexplicable inadequacy of substance contained in the

response filed to Opposer’s Mot ion for Summary Judgment . Despite Applicant ’s

previous content ions regarding ownership of the HALLMARK t rademark and the

validity of the purported assignment from a creditor to Opposer, Mr. Swyers failed

to provide any evidence or to dispute any of the facts alleged in the Mot ion for

Summary Judgment . I nstead, he offered m inim al, cut -and-paste arguments about

the sim ilar ity of the marks, the channels of t rade, and the classes of consumers.

44 TTABVUE. By failing to even address perhaps the most salient issue in this

mat ter, the proper ownership of the HALLMARK t rademarks, Mr. Swyers effect ively

abandoned his client . The response to mot ion for summary judgment did not

provide Applicant a full or fair opportunit y to defend its t rademark. As recognized

by the Ninth Circuit , monetary damages recovered in a malpract ice lawsuit do not

provide adequate rem edy to a lit igant who loses its t rademark r ights. Com m unity

Dental Servs., 282 F.3d at 1171. “Thus, relief under Rule 60(b) (6) may often

const itute the only m echanism for affording a client actual and full relief from his

counsel’s gross negligence — that is, the opportunit y to present his case on the

merits.” I d. at 1172.

I f the Summary Judgment order by the Board stands, Applicant may be

affected well beyond its r ights to achieve the benefits of regist rat ion of the marks at

issue. B&B Hardware, I nc. v. Hargis I ndust r ies, I nc. , 575 U.S.____; 135 S.Ct . 1293


(2015) (holding that a finding by the Board may be given preclusive effect where

issue preclusion would otherwise apply) .

The adm issions by Applicant ’s pr ior counsel in the Aff idavit for Consent

Exclusion signed a m ere three weeks after the response to the mot ion for summary

judgment detail Mr. Swyers’ malfeasance, poor judgment , poor counsel, lack of

oversight , and ethical wrongdoings. To make mat ters worse, prior counsel failed to

properly and fully inform Applicant why he was “ ret ir ing” when he told Applicant v ia

email, j ust days before the Mot ion for Summary Judgment was filed, that he could

no longer represent Applicant .

While a request for reconsiderat ion normally should be lim ited to a

demonst rat ion that , based on the evidence properly of record and the applicable

law, the Board’s ruling is in error and requires appropriate change, there is nothing

in the statute or the rules precluding the grant ing of reconsiderat ion for other

reasons. See, e.g., Steiger Tractor I nc. v. Steiner Corp. , 221 USPQ 165 (TTAB

1984) , reh’g granted, 3 USPQ2d 1708 (TTAB 1984) . Again, the circumstances here

are not normal; they are ext remely except ional. Applicant is not seeking to enter

new evidence as a part of the current mot ion, or to argue the Board m isinterpreted

the law or erred in its opinion, rather Applicant asks the Board to take judicial

not ice of the Director’s order of January 26, 2017, and the Affidavit on Consent

Exclusion – both of which were entered during the pendency of the mot ion for

summary judgment – and in the interests of j ust ice and equity vacate the judgment

and allow Applicant the opportunity to file a new response to the Mot ion for

Summary Judgment .


Applicant has not delayed in br inging this m ot ion. Grant ing Applicant ’s

mot ion and allowing re-briefing of the Mot ion for Summary Judgment will not

prejudice Opposer as its mot ion, and if applicable the ent ire case, would st ill be

determ ined on the m erits. Applicant should not be penalized for the ext reme

circumstances regarding its pr ior counsel, Mr. Swyers, given that Applicant was not

even aware of the OED invest igat ion or the Affidavit for Consent Exclusion at the

t ime.7

WHEREFORE, Applicant moves the Board to grant this mot ion and to allow

Applicant 60 days to file a response to the mot ion for summary filed on October 26,

2016.

Dated this 5th day of June, 2017.

Erik M. Pelton

Erik M. Pelton & Associates, PLLC

At torney for Applicant

Exhibits

Exhibit A: Final Order issued by the Director of the U.S. Patent and Trademark

Office, Proceeding No. D2016-20

Exhibit B: Not ice of Exclusion on Consent published in the March 28, 2017 Official

Gazet te

Exhibit C: Memorandum of Law in Support of United States Patent & Trademark

Office’s Mot ion to Dism iss at p. 1, Civ. Act ion 1: 16cv15, ED. VA (Filed March

22, 2016) with exhibits om it ted

Exhibit D: March 7, 2017 let ter from Pelton to Swyers

7 Note the even if Applicant was to make a claim of malpract ice and to succeed, it

would not remedy or affect the t rademark r ights at issue in this proceeding.


CERTI FI CATE OF SERVI CE

I hereby cert ify that a t rue and accurate copy of the Request for

Reconsiderat ion & Mot ion for Relief from Judgm ent has been served on the

following by deliver ing said copy on June 5, 2017, v ia email, to counsel for Opposer

at the following address:

Timothy J Feathers

St inson Leonard St reet LLPt imothy.feathers@st insonleonard.com, t rademark@st insonleonard.com

By:

Erik M. Pelton, Esq.



EXHI BI T A


Opposer,

v.


Applicant .


9 1 2 1 1 3 9 2 ( PARENT)

91215884

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE DIRECTOR OF THE

UNITED STATES PATENT AND TRADEMARK OFFICE

In the Matter of

Matthew H. Swyers,

Respondent

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FINAL ORDER

Proceeding No. D2016-20

Pursuant to 37 C.F.R. § 11.27(b), the Director of the United States Patent and

Trademark Office ("USPTO" or "Office") received for review and approval from the

Director of the Office of Emollment and Discipline ("OED Director") an Affidavit For

Consent Exclusion pursuant to 37 C.F.R. § 11.27, executed by Matthew H. Swyers

("Respondent") on December 20, 2016. Respondent submitted the twelve-page Affidavit

For Consent Exclusion to the USPTO for the purpose of being excluded on consent

pursuant to 37 C.F.R. § 11.27.

For the reasons set forth herein, Respondent's Affidavit For Consent Exclusion

shall be approved, and Respondent shall be excluded on consent from practice before the

Office in trademark and non-patent matters commencing on the date of this Final Order.

Jurisdiction

Respondent, of Vienna, Virginia, is an attorney licensed to practice law in the

Commonwealth of Virginia and the District of Columbia and has practiced before the

USPTO in trademark matters. As such, he is subject to the USPTO Code of Professional

Responsibility, which is set forth at 37 C.F.R. § 10.20 et seq., and the USPTO Rules of

Professional Conduct, which are set forth at 37 C.F.R. §§ 11.101through11.901.1

Pursuant to 35 U.S.C. §§ 2(b)(2)(D) and 32 and 37 C.F.R. § 11.27, the USPTO

Director has the authority to approve Respondent's Affidavit for Consent Exclusion and

to exclude Respondent on consent from the practice of trademark and non-patent matters

before the Office.

Allegations of the Disciplinary Complaint

A disciplinary complaint is pending against Respondent (Proceeding No. 2016-20)

which alleges that:

a. Respondent, an experienced trademark lawyer and former USPTO

Trademark Examining Attorney, established The Trademark

Company, PLLC, and through that business systematically

permitted non-attorneys to practice trademark law for him with little

or no supervision.

b. Respondent, the sole attorney at the company, did not personally

review or sign thousands of trademark applications and related

documents (including statements of use, § 2(f) declarations, and

responses to Office actions) prepared by his non-lawyer employees

and filed with the USPTO, in violation of USPTO signature and

certification rules and despite assurances on the company website

that trademark applicants would be represented by a specialized

attorney.

c. As a result of Respondent's failure to supervise his employees,

multiple fraudulent or digitally manipulated specimens of use were

filed with the Office, which potentially jeopardized the trademark

applications of his clients.

1 The USPTO Code of Professional Responsibility applies to conduct prior to May 3, 2013, and

the USPTO Rules of Professional Conduct apply to conduct on or after May 3, 2013.

2

d. Respondent failed to deposit client funds paid in advance into a

client trust account and improperly split legal fees with his non

practitioner employees.

e. Respondent failed to respond to lawful requests for information or

cooperate with the investigation conducted by the Office of

Enrollment and Discipline.

Respondent's Affidavit For Consent Exclusion

Respondent acknowledges in his December 20, 2016 Affidavit For Consent

Exclusion that:

1. His consent is freely and voluntarily rendered, and he is not being subjected

to coercion or duress.

2. He is aware that the disciplinary complaint filed against him (Proceeding

No. D2016-20) alleges that he violated the following Disciplinary Rules of the USPTO

Code of Professional Responsibility and/ or the USPTO Rules of Professional Conduct:

a. 37 C.F.R. § 10.23(a) (engaging in disreputable or gross

misconduct by, inter alia: directing or allowing his employees

to prepare, sign, and file trademark applications, responses to

Office Actions, and other trademark documents; directing or

allowing his employees to provide legal advice and guidance

to trademark applicants; and/ or directing or allowing his

employees to communicate with his clients about trademark

search reports and opinions, without his involvement or

supervision; engaging in disreputable or gross misconduct

by, inter alia: failing to comply with the USPTO's electronic

signature rules by not personally electronically signing

trademark applications and trademark documents filed with

the USPTO and, instead, directing or allowing his employees

to sign or forge his electronic signature to the documents,

which resulted in the validity of registered trademarks being

jeopardized; engaging in disreputable or gross misconduct

by, inter alia: directing or allowing his employees to sign or

forge his name to § 2(£) declarations and file the § 2(f)

declarations with the Office, when (i) he knew that the

3

Trademark Examining Attorneys would rely on the

declarations when examining trademark applications and

issuing registrations and when he knew or reasonably should

have known that the validity of an applicants' applications

and registrations were jeopardized by the false and/ or forged

declarations; and/ or (ii) he knew or should have known his

employees did not have adequate knowledge to aver, "The

mark has become distinctive of the goods/ services through

the applicant's substantially exclusive and continuous use in

commerce that the U.S. Congress may lawfully regulate for at

least the five years immediately before the date of this

statement;" engaging in disreputable or gross misconduct by,

inter alia: (i) failing to adequately supervise his employees or

adequately review their work, thus permitting them to create

false or fraudulent specimens and/ or digitally altered images

of marks that did not depict the actual mark as used in

commerce and file these specimens with the Office, and as a

result, in some cases, the USPTO issued trademark

registrations based on the false or fraudulent specimens or

digitally altered marks, putting the validity of the resulting

trademarks in jeopardy, (ii) failing to inform his clients that

their trademark registrations or applications were potentially

invalid and/ or take timely and effective remedial action on

their behalf and/ or offer or provide restitution to them,

and/ or (iii) failing to inform the USPTO of the potentially

invalid applications and/ or registrations that resulted from

the filing of false or fraudulent specimens or digitally altered

marks; engaging in disreputable or gross misconduct by, inter

alia: (i) not informing clients who purchased trademark legal

services from The Trademark Company that their

applications and other trademark documents were not

prepared or reviewed by an attorney prior to being filed with

the Office; and/ or (ii) collecting fees from clients for

trademark legal services that were supposed to be performed

by an attorney when their applications and other trademark

documents were not prepared or reviewed by an attorney

prior to being filed with the Office);

b. 37 C.F.R. § 10.23(b)(4) (engaging in conduct involving

dishonesty, fraud, deceit, or misrepresentation by, inter alia:

not informing clients who purchased trademark legal services

from The Trademark Company that their applications and

other trademark documents were not prepared or reviewed

4

by an attorney prior to being filed with the Office; engaging

in conduct involving dishonesty, fraud, deceit, or

misrepresentation by, inter alia: (i) not personally

electronically signing trademark applications and trademark

documents filed with the USPTO and, instead, directing or

allowing his employees to sign or forge his electronic

signature to the documents, thereby misleading the USPTO,

his clients, and the public into believing that Respondent had

actually signed the trademark application or trademark

document; and/ or (ii) not affirmatively informing the

Trademark Examining Attorney that the actual signatory, the

employee, was not identified on the document; engaging in

conduct involving dishonesty, fraud, deceit, or

misrepresentation by, inter alia: directing or allowing his

employees to sign or forge his name to § 2(f) declarations and

file the § 2(f) declarations with the Office, when (i) he knew

that the Trademark Examining Attorneys would rely on the


issuing registrations, and/ or (ii) he knew or should have

known his employees did not have adequate knowledge to

aver, "The mark has become distinctive of the goods/ services

through the applicant's substantially exclusive and

continuous use in commerce that the U.S. Congress may

lawfully regulate for at least the five years immediately before

the date of this statement;" engaging in conduct involving


(i) failing to adequately supervise his employees or















marks; engaging in conduct involving dishonesty, fraud,

deceit, or misrepresentation by, inter alia: (i) not informing

5

clients who purchased trademark legal services from The

Trademark Company that their applications and other

trademark documents were not prepared or reviewed by an

attorney prior to being filed with the Office; and/ or (ii)

collecting fees from clients for trademark legal services that

were supposed to be performed by an attorney when their



the Office);

c. 37 C.F.R. § 10.23(b)(5) (engaging in conduct prejudicial to the

administration of justice by, inter alia: (i) directing or allowing

his employees to prepare, sign, and file trademark

applications, responses to Office Actions, and other

trademark documents; directing or allowing his employees to

provide legal advice and guidance to trademark applicants;

and/ or directing or allowing his employees to communicate

with his clients about trademark search reports and opinions,

without his involvement or supervision; and/ or (ii) not

reviewing trademark applications and other trademark

documents (e.g., responses to Office Actions) prepared and

filed by his employees before they were filed with the Office;

engaging in conduct prejudicial to the administration of

justice by, inter alia: (i) failing to comply with the USPTO's

electronic signature rules by not personally electronically

signing trademark applications and trademark documents

filed with the USPTO and, instead, directing or allowing his

employees to sign or forge his electronic signature to the

documents, which resulted in the validity of registered

trademarks being jeopardized and/ or (ii) directing or


signature to trademark applications and other trademark

documents knowing that the actual signatory, the employee,

was not identified on the documents contrary to

Respondent's certifications under § 11.18; engaging in

conduct prejudicial to the administration of justice by, inter

alia: directing or allowing his employees to sign or forge his

name to§ 2(f) declarations and file the § 2(f) declarations with

the Office, when (i) he knew that the Trademark Examining

Attorneys would rely on the declarations when examining

trademark applications and issuing registrations; and/ or (ii)

he knew or should have known his employees did not have

adequate knowledge to aver, "The mark has become

6

distinctive of the goods/ services through the applicant's

substantially exclusive and continuous use in commerce that

the U.S. Congress may lawfully regulate for at least the five

years immediately before the date of this statement;" and/ or

(iii) he knew that (a) the actual signatory, the employee, was

not identified on the document and (b) the actual signatory,

the employee, did not have the knowledge to support the

factual contentions found in the declaration; engaging in

conduct prejudicial to the administration of justice by, inter alia: (i) failing to adequately supervise his employees or








trademarks in jeopardy, and/ or (ii) failing to inform the

USPTO of the potentially invalid applications and/ or

registrations that resulted from the filing of false or

fraudulent specimens or digitally altered mark);

d. 37 C.F.R. § 10.23(b)(6) (engaging in any other conduct that

adverse! y reflects on the practitioner's fitness to practice

before the Office, by engaging in the conduct referenced in

Count I of the Complaint to the extent that his conduct does

not otherwise violate a provision of the USPTO Code of

Professional Responsibility; engaging in any other conduct

that adversely reflects on the practitioner's fitness to practice


Count II of the Complaint to the extent that his conduct does



that adversely reflects on the practitioner's fitness to practice


Count III of the Complaint to the extent that his conduct does


Professional Responsibility; any other conduct that adversely

reflects on the practitioner's fitness to practice before the

Office, by engaging in the conduct referenced in Count IV of

the Complaint to the extent that his conduct does not

otherwise violate a provision of the USPTO Code of

Professional Responsibility);

7

e. 37 C.F.R. §§ 10.23(a) and (b) via 10.23(c)(2)(ii) (knowingly

giving false or misleading information or knowingly

participating in a material way in giving false or misleading

information to the USPTO or any employee of the USPTO by,

inter alia: directing or allowing his employees to sign or forge

his name to § 2(£) declarations and file the § 2(f) declarations

with the Office, when (i) he knew that the Trademark

Examining Attorneys would rely on the declarations when

examining trademark applications and issuing registrations,

and/ or (ii) he knew or should have known his employees did

not have adequate knowledge to aver, "The mark has become

distinctive of the goods/services through the applicant's







factual contentions found in the declaration);

f. 37 C.F.R. §§ 10.23(a) and (b) via 10.23(c)(15) (violating the

certifications made to the USPTO under 37 C.F.R. § 11.18 by,


his electronic signature to trademark applications and other

trademark documents knowing that the actual signatory, the

employee, was not identified on the documents; violating the

certifications made to the USPTO under 37 C.F.R. § 11.18 by,


his name to § 2(f) declarations and file the § 2(f) declarations

with the Office, knowing that (i) the actual signatory, the

' employee, was not identified on the document and (ii) the

actual signatory, the employee, did not have the knowledge

to support the factual contentions found in the declaration;

violating the certifications made to the USPTO under 37

C.F.R. § 11.18 by, inter alia, failing to adequately supervise his

employees or adequately review their work, thus permitting

them to create false or fraudulent specimens and/ or digitally

altered images of marks that did not depict the actual mark as

used in commerce and file these specimens with the Office);

g. 37 C.F.R. § 10.31(a) (deceiving or misleading prospective

applicants or other persons having immediate or prospective

8

business before the Office by word, circular, letter, or

advertising with respect to prospective business before the

Office by, inter alia: advertising on The Trademark Company's

website that trademark applications would be prepared by an

attorney when Respondent knew that trademark applications

were not prepared or reviewed by an attorney prior to being

filed with the USPTO; engaging in any other conduct that

adversely reflects on the practitioner's fitness to practice


Count V of the Complaint to the extent that his conduct does


Professional Responsibility);

h. 37 C.F.R. § 10.47(a) and (c) (aiding a non-practitioner in the

unauthorized practice of law before the Office by, inter alia: (i)

directing or allowing his employees to prepare, sign, and file

trademark applications, responses to Office Actions, and

other trademark documents; directing or allowing his

employees to provide legal advice and guidance to trademark

applicants; and/ or directing or allowing his employees to

communicate with his clients about trademark search reports

and opinions, without his involvement or supervision;

and/ or (ii) not reviewing trademark applications and other

trademark documents (e.g., responses to Office Actions)

prepared and filed by his employees before they were filed

with the Office);

i. 37 C.F.R. § 10.48 (sharing legal fees with a non-practitioner by

paying employees non-discretionary monthly bonuses tied to

the proceeds generated by the trademark legal services

provided to applicants with whom they interacted);

j. 37 C.F.R. § 10.77(b) (handling a legal matter without

preparation adequate under the circumstances by, inter alia:

failing to comply with the USPTO' s electronic signature rules

by not personally electronically signing trademark

applications and trademark documents filed with the USPTO

and, instead, directing or allowing his employees to sign or

forge his electronic signature to the documents, which

resulted in the validity of registered trademarks being

jeopardized);

9

k. 37 C.F.R. § 10.77(c) (neglecting client matters by, inter alia: not

reviewing trademark applications, responses to Office

Actions, and other trademark documents prepared and filed

by his employees before they were filed with· the Office;

neglecting client matters by, inter alia: (i) failing to adequately

supervise his employees or adequately review their work,

thus permitting them to create false or fraudulent specimens

and/ or digitally altered images of marks that did not depict

the actual mark as used in commerce and file these specimens

with the Office, and as a result, in some cases, the USPTO

issued trademark registrations based on the false or

fraudulent specimens or digitally altered marks, putting the

validity of the resulting trademarks in jeopardy, and/ or (ii)

failing to inform his clients that their trademark registrations

or applications were potentially invalid and/ or take timely

and effective remedial action on their behalf and/ or offer or

provide restitution to them);

1. 37 C.F.R. § 10.84(a)(l) (intentionally failing to seek the lawful

objectives of a client through reasonably available means

permitted by law by, inter alia: intentionally failing to inform

his clients that their trademark registrations or applications

were potentially invalid and/ or take timely and effective

remedial action on their behalf and/ or offer or provide

restitution to them);

m. 37 C.F.R. § 10.84(a)(3) (intentionally prejudicing or damaging

the client during the course of a professional relationship by,

inter alia: intentionally failing to inform his clients that their

trademark registrations or applications were potentially


their behalf and/ or offer or provide restitution to them);

n. 37 C.F.R. § 10.89(c)(6) (intentionally or habitually violating

any provision of the USPTO Code of Professional

Responsibility while appearing in a professional capacity

before a tribunal by, inter alia: (i) directing or allowing his

employees to prepare, sign, and file trademark applications,

responses to Office Actions, and other trademark documents;

directing or allowing his employees to provide legal advice

and guidance to trademark applicants; and/ or directing or

allowing his employees to communicate with his clients about

trademark search reports and opinions, without his

10

involvement or superv1s10n; and/ or (ii) not reviewing

trademark applications, responses to Office Actions, and

other trademark documents prepared and filed by his

employees before they were filed with the Office;

intentionally or habitually violating any provision of the

USPTO Code of Professional Responsibility while appearing

in a professional capacity before a tribunal by, inter alia: failing

to comply with the USPTO's electronic signature rules by not

personally electronically signing trademark applications and

trademark documents filed with the USPTO and, instead,

directing or allowing his employees to sign or forge his

electronic signature to the documents, which resulted in the

validity of registered trademarks being jeopardized;



in a professional capacity before a tribunal by, inter alia: directing or allowing his employees to sign or forge his name

to § 2(f) declarations and file the § 2(f) declarations with the

Office, when (i) he knew that the Trademark Examining

Attorneys would rely on the declarations when examining

trademark applications and issuing registrations, and/ or (ii)

he knew or should have known his employees did not have

adequate knowledge to aver, "The mark has become




years immediately before the date of this statement;";



in a professional capacity before a tribunal by, inter alia: (i)

failing to adequately supervise his employees or adequately

review their work, thus permitting them to create false or

fraudulent specimens and/ or digitally altered images of

marks that did not depict the actual mark as used in








fraudulent specimens or digitally altered marks);

11

o. 37 C.F.R. § 10.112(a) (failing to deposit legal fees paid in

advance into a separate client trust account by depositing

them instead into The Trademark Company's operating

account);

p. 37 C.F.R. § 11.101 (failing to provide competent

representation by, inter alia: not reviewing trademark


trademark documents prepared and filed by his employees

before they were filed with the Office; failing to provide

competent representation by, inter alia: failing to comply with

the USPTO's electronic signature rules by not personally




signature to the documents, which resulted in the validity of

registered trademarks being jeopardized; failing to provide

competent representation by, inter alia: directing or allowing

his employees to sign or forge his name to § 2(f) declarations

and file the § 2(£) declarations with the Office, when (i) he

knew that the Trademark Examining Attorneys would rely on

the declarations when examining trademark applications and

issuing registrations and when he knew or reasonably should

have known that the validity of the applicants' applications

and registrations were jeopardized by the false declarations;

failing to provide competent representation by, inter alia: (i)

failing to adequately supervise his employees or adequately

review their work, thus permitting them to create false or

fraudulent specimens and/ or digitally altered images of

marks that did not depict the actual mark as used in





trademarks in jeopardy, and/ or (ii) failing to inform his

clients that their trademark registrations or applications were

potentially invalid and/ or take timely and effective remedial

action on their behalf and/ or offer or provide restitution to

them);

q. 37 C.F.R. § 11.104(a) (failing to keep his client reasonably

informed by, inter alia: (i) not informing Ms. Teague of the

Office Action received on her behalf in U.S. Trademark

12

Application No. 86/287,301 and by not informing her that he

had filed substitute specimens without confirming with her

whether the substitute specimens depicted her mark as used

in commerce, and/ or (ii) failing to inform his clients that their

trademark registrations or applications were potentially


their behalf and/ or offer or provide restitution to them);

r. 37 C.F.R. § 11.115(a) (failing to hold property of a client or

third person that is in the lawyer's possession in connection

with a representation separate from the lawyer's own

property, by depositing fees paid in advance by clients for

trademark legal services and costs into his operating account);

s. 37 C.F.R. § ll.115(c) (failing to deposit into a client trust

account legal fees and expenses that have been paid in

advance, to be withdrawn by the practitioner only as fees are

earned or expenses incurred, by depositing fees paid in

advance by clients for trademark legal services and costs into

his operating account);

t. 37 C.F.R. § ll.303(a)(l) (knowingly making a false statement

of fact to a tribunal or failing to correct a false statement of

material fact previously made to the tribunal by the

practitioner by, inter alia: failing to inform the USPTO of the

potentially invalid applications and/ or registrations that

resulted from the filing of false or fraudulent specimens or

digitally altered marks);

u. 37 C.F.R. § ll.303(d) (failing, in an ex parte proceeding, to

inform the tribunal of all material facts known to the

practitioner that will enable the tribunal to make an informed

decision, even if the facts are adverse by, inter alia: directing

or allowing his employees to sign or forge his name to § 2(f)

declarations and file the § 2(f) declarations with the Office,

when (i) he knew that the Trademark Examining Attorneys

would rely on the declarations when examining trademark

applications and issuing registrations and/ or (ii) he knew or

should have known his employees did not have adequate

knowledge to aver, "The mark has become distinctive of the

goods/services through the applicant's substantially

exclusive and continuous use in commerce that the U.S.

Congress may lawfully regulate for at least the five years

13

immediately before the date of this statement;"; failing, in an

ex parte proceeding, to inform the tribunal of all material facts

known to the practitioner that will enable the tribunal to make

an informed decision, even if the facts are adverse, by, inter

alia, failing to inform the USPTO of the potentially invalid

applications and/ or registrations that resulted from the filing

of false or fraudulent specimens or digitally altered marks);

v. 37 C.F.R. § 11.503(a) (failing to make reasonable efforts to

ensure that The Trademark Company had in effect measures

giving reasonable assurance that its employees' conduct was

compatible with Respondent's professional obligations, as is

required by him as a partner or a person of comparable

managerial authority of The Trademark Company by, inter

alia: failing to adequately supervise his employees or








trademarks in jeopardy);

w. 37 C.F.R. § 11.503(b) (failing to make reasonable efforts to

ensure that the conduct of The Trademark Company

employees over whom he had direct supervisory authority

was compatible with Respondent's professional obligations

by, inter alia: failing to adequately supervise his employees or








trademarks in jeopardy);

x. 37 C.F.R. § 11.503(c) (ordering or ratifying the conduct of the

employees of The Trademark Company which would have

been a violation of the USPTO Rules of Professional Conduct

had it been committed by a practitioner, and/ or failing to take

remedial measures once he learned of the conduct by, inter

14

alia: (i) failing to adequately supervise his employees or















marks);

y. 37 C.F.R. § 11.504(a) (sharing legal fees with a non

practitioner by paying employees non-discretionary monthly

bonuses tied to the proceeds generated by the trademark legal

services provided to applicants with whom they interacted);

z. 37C.F.R.§11.505 (assisting other persons in the unauthorized

practice of law before the USPTO by, inter alia: (i) directing or

allowing his employees to prepare, sign, and file trademark









filed by his employees before they were filed with the Office);

aa. 37 C.F.R. § 11.701 (making false or misleading

communications about the practitioner or the practitioner's

services by, inter alia: advertising on The Trademark

Company's website that trademark applications would be

prepared by an attorney when Respondent knew that

trademark applications were not prepared or reviewed by an

attorney prior to being filed with the USPTO);

15

bb. 37 C.F.R. §11.SOl(b) (failing to respond to lawful requests for

information and failing to cooperate with OED by inter alia: (i)

telling a witness not to talk to OED; (ii) falsely telling potential

witnesses that talking to OED could affect their trademark

rights; (iii) withholding the names of former employees for

months; and/ or (iv) not providing OED with the documents

it sought (invoices, employment agreements, correspondence

about§ 2(£) declarations, and/ or a privilege log));

cc. 37 C.F.R. § ll.804(c) (engaging in conduct involving


not informing clients who purchased trademark legal services

from The Trademark Company that their applications and

other trademark documents were not prepared or reviewed

by an attorney prior to being filed with the Office; engaging

in conduct involving dishonesty, fraud, deceit, or

misrepresentation by, inter alia: (i) not personally




signature to the documents, thereby misleading the USPTO,

his clients, and the public into believing that Respondent had

actually signed the trademark application or trademark

document; and/ or (ii) not affirmatively informing the

Trademark Examining Attorney that the actual signatory, the

employee, was not identified on the document; engaging in

conduct involving dishonesty, fraud, deceit, or

misrepresentation by, inter alia: directing or allowing his

employees to sign or forge his name to § 2(£) declarations and

file the § 2(f) declarations with the Office, when (i) he knew

that the Trademark Examining Attorneys would rely on the


issuing registrations, and/ or (ii) he knew or should have

known his employees did not have adequate knowledge to

aver, "The mark has become distinctive of the goods/ services

through the applicant's substantially exclusive and

continuous use in commerce that the U.S. Congress may

lawfully regulate for at least the five years immediately before

the date of this statement;" engaging in conduct involving

dishonesty, fraud, deceit, or misrepresentation, by, inter alia:

(i) failing to adequately supervise his employees or



16













marks; engaging in conduct involving dishonesty, fraud,

deceit, or misrepresentation by, inter alia: (i) not informing

clients who purchased trademark legal services from The

Trademark Company that their applications and other

trademark documents were not prepared or reviewed by an

attorney prior to being filed with the Office; and/ or (ii)

collecting fees from clients for trademark legal services that

were supposed to be performed by an attorney when their



the Office; engaging in conduct involving dishonesty, fraud,

deceit, or misrepresentation by, inter alia, falsely telling

potential witnesses that talking to OED could affect their

trademark rights);

dd. 37 C.F.R. § 11.804(d) (engaging in conduct prejudicial to the

administration of justice by, inter alia: (i) directing or allowing

his employees to prepare, sign, and file trademark









filed by his employees before they were filed with the Office;

engaging in conduct prejudicial to the administration of

justice by, inter alia: (i) failing to comply with the USPTO's

electronic signature rules by not personally electronically

signing trademark applications and trademark documents

17

filed with the USPTO and, instead, directing or allowing his

employees to sign or forge his electronic signature to the

documents, which resulted in the validity of registered

trademarks being jeopardized and/ or (ii) directing or


signature to trademark applications and other trademark

documents knowing that the actual signatory, the employee,

was not identified on the documents contrary to

Respondent's certifications under § 11.18; engaging in

conduct that is prejudicial to the administration of justice by,


his name to § 2(f) declarations and file the § 2(f) declarations

with the Office, when (i) he knew that the Trademark

Examining Attorneys would rely on the declarations when

examining trademark applications and issuing registrations,

and/ or (ii) he knew or should have known his employees did

not have adequate knowledge to aver, "The mark has become








factual contentions found in the declaration; engaging in

conduct that is prejudicial to the administration of justice by,

inter alia: (i) failing to adequately supervise his employees or











fraudulent specimens or digitally altered marks; engaging in

conduct prejudicial to the administration of justice by, inter aliri: (i) telling a witness not to talk to OED; (ii) falsely telling

potential witnesses that talking to OED could affect their

trademark rights; (iii) withholding the names of former

employees for months; and/ or (iv) not providing OED with

18

the documents it sought (invoices, employment agreements,

correspondence about § 2(f) declarations, and/ or a privilege

log));

ee. 37 C.F.R. § 11.804(i) (engaging in any other conduct that

adversely re£1ects on the practitioner's fitness to practice


Count I of the Complaint, to the extent that the conduct does

not otherwise violate another provision of the USPTO Rules

of Professional Conduct; engaging in any other conduct that

adversely refiects on the practitioner's fitness to practice


Count II of the Complaint, to the extent that the conduct does


of Professional Conduct; engaging in any other conduct that

adversely refiects on the practitioner's fitness to practice


Count III of the Complaint to the extent that his conduct does

not otherwise violate a provision of the USPTO Rules of

Professional Conduct; engaging in any other conduct that

adverse] y refiects on the practitioner's fitness to practice


Count IV of the Complaint to the extent that his conduct does



that adversely refiects on the practitioner's fitness to practice


Count V of the Complaint, to the extent that the conduct does


of Professional Conduct; other conduct that adversely refiects

on the practitioner's fitness to practice before the Office, by

engaging in the acts and omissions described in Count VIII

above).

3. Without admitting that he violated any of the Disciplinary Rules of the USPTO

Code of Professional Responsibility and/ or the Rules of Professional Conduct which are

the subject of the disciplinary complaint in Proceeding No. D2016-20, he acknowledges

that, if and when he applies for reinstatement to practice before the USPTO in trademark

or other non-patent matters under 37 C.F.R. § 11.60, the OED Director will conclusively

19

presume, for the limited purpose of determining the application for reinstatement, that

(a) the allegations regarding him in the complaint filed in Proceeding No. D2016-20 are

true and (b) he could not have successfully defended himself against such allegations.

4. He has fully read and understands 37 C.F.R. §§ 11.5(b), 11.27, 11.58, 11.59, and

11.60, and is fully aware of the legal and factual consequences of consenting to exclusion

from practice before the USPTO in trademark and non-patent matters.

5. He consents to being excluded from practice before the USPTO in trademark

and non-patent matters.

Exclusion on Consent

Based on the foregoing, the USPTO Director has determined that Respondent's

Affidavit For Consent Exclusion complies with the requirements of 37 C.F.R. § 11.27(a).

Accordingly, it is hereby ORDERED that:

1. Respondent's Affidavit For Consent Exclusion shall be, and hereby is,

approved;

2. Respondent shall be, and hereby is, excluded on consent from practice

before the Office in trademark and non-patent matters commencing on the date of this

Final Order;

3. The OED Director shall electronically publish the Final Order at the Office

of Enrollment and Discipline's electronic FOIA Reading Room, which is publicly

accessible at http://e-foia.uspto.gov/Foia/ OEDReadingRoom.jsp;

4. The OED Director shall publish a notice in the Official Gazette that is

materially consistent with the following:

20

Notice of Exclusion on Consent

This notice concerns Matthew H. Swyers of Vienna, Virginia, an

attorney licensed to practice law in the Commonwealth of Virginia

and the District of Columbia and practicing before the United States

Patent and Trademark Office ("USPTO" or "Office) in trademark

matters. The Director of the USPTO has accepted Mr. Swyers'

affidavit for consent exclusion and ordered his exclusion on consent

from practice before the Office in trademark and non-patent matters.

Mr. Swyers voluntarily submitted his affidavit at a time when a

disciplinary complaint was pending against him. The complaint

alleged that Mr. Swyers, an experienced trademark lawyer and

former USPTO Trademark Examining Attorney, established The

Trademark Company, PLLC, and through that business

systematically permitted non-attorneys to practice trademark law

for him with little or no supervision. The complaint alleged that Mr.

Swyers, the sole attorney at the company, did not personally review

or sign thousands of trademark applications and related documents

(including statements of use, § 2(f) declarations, and responses to

Office actions) prepared by his non-lawyer employees and filed with

the USPTO, in violation of USPTO signature and certification rules

and despite assurances on the company website that trademark

applicants would be represented by a specialized attorney. Further,

the complaint alleged that, as a result of Mr. Swyers' failure to

supervise his employees, multiple fraudulent or digitally

manipulated specimens of use were filed with the Office, which

potentially jeopardized the trademark applications of his clients. The

complaint also asserted that Mr. Swyers failed to deposit client funds

paid in advance into a client trust account and improperly split legal

fees with his non-practitioner employees. Finally, the complaint

alleged that Mr. Swyers failed to respond to lawful requests for

information or cooperate with the investigation conducted by the

Office of Enrollment and Discipline.

Mr. Swyers' affidavit acknowledged that the disciplinary complaint

filed against him alleged that his conduct violated the following

provisions of the USPTO Code of Professional Responsibility, for

conduct prior to May 3, 2013: 37 C.F.R. §§ 10.23(a) (engaging in

disreputable or gross misconduct); 10.23(b)(4) (engaging in conduct

involving dishonesty, fraud, deceit, or misrepresentation);

21

10.23(b)(5) (engaging in conduct prejudicial to the administration of

justice); 10.23(a) and (b) via 10.23(c)(2)(ii) (knowingly giving false or

misleading information or knowingly participating in a material

way in giving false or misleading information to the USPTO or any

employee of the USPTO); 10.23(a) and (b) via 10.23(c)(15) (violating

the certifications made to the USPTO under 37 C.F.R. § 11.18);

10.31(a) (deceiving or misleading prospective applicants or other

persons having immediate or prospective business before the Office

by advertising with respect to prospective business before the

Office); 10.47(a) and (c) (aiding a non-practitioner in the

unauthorized practice of law before the Office); 10.48 (sharing legal

fees with a non-practitioner); 10.77(b) (handling a legal matter

without preparation adequate under the circumstances); 10.77(c)

(neglecting client matters); 10.84(a)(1) (intentionally failing to seek

the lawful objectives of a client); 10.84( a)(3) (intentionally

prejudicing or damaging the client during the course of a

professional relationship); 10.89(c)(6) (intentionally or habitually

violating any provision of the USPTO Code of Professional

Responsibility while appearing in a professional capacity before a

tribunal); 10.112(a) (failing to deposit legal fees paid in advance into

a separate client trust account); and 10.23(b)(6) (engaging in other

conduct that adversely reflects on the practitioner's fitness to

practice before the Office).

Mr. Swyers's affidavit also acknowledged that the disciplinary

complaint alleged that his conduct violated the following provisions

of the USPTO Rules of Professional Conduct, for conduct on or after

May 3, 2013: 37 C.F.R. §§ 11.101 (failure to provide competent

representation); 11.104(a)(3) (failing to keep the clients reasonably

informed about the status of a matter); 11.115(a) (failing to hold

property of a client or third person that is in the lawyer's possession

in connection with a representation separate from the lawyer's own

property); 11.115(c) (failing to deposit into a client trust account legal

fees and expenses that have been paid in advance, to be withdrawn

by the practitioner only as fees are earned or expenses incurred);

11.303(a)(1)(knowingly making a false statement of fact to a tribunal

or failing to correct a false statement of material fact previously made

to the tribunal); 11.303( d) (failing, in an ex parte proceeding, to inform

the tribunal of all material facts known to the practitioner that will

enable the tribunal to make an informed decision, even if the facts

are adverse); 11.503(a) (failing to make reasonable efforts to ensure

that The Trademark Company had in effect measures giving

reasonable assurance that its employees' conduct was compatible

22

with Respondent's professional obligations); 11.503(b) (failing to

make reasonable efforts to ensure that the conduct of The Trademark

Company employees over whom he had direct supervisory

authority was compatible with Respondent's professional

obligations); 11.503(c) (ordering or ratifying the conduct of the

employees of The Trademark Company which would have been a

violation of the USPTO Rules of Professional Conduct had it been

committed by a practitioner, and/ or failing to take remedial

measures once he learned of the conduct); 11.504(a) (sharing legal

fees with a non-practitioner); 11.505 (aiding in the unauthorized

practice of law before the USPTO); 11.701 (making false or

misleading communications about the practitioner or the

practitioner's services); 11.801 (b) (failing to cooperate with the Office

of Emollment and Discipline in an investigation); 11.804(c)

(engaging in conduct involving dishonesty, fraud, deceit or

misrepresentation); 11.804( d) (engaging in conduct that is prejudicial

to the administration of justice); and 11.804(i) (engaging in the acts

and omissions that adversely reflect on Respondent's fitness to

practice before the Office).

While Mr. Swyers did not admit to violating any of the Disciplinary

Rules of the USPTO Code of Professional Responsibility or the

USPTO Rules of Professional Conduct as alleged in the pending

disciplinary complaint, he acknowledged that, if and when he

applies for reinstatement, the OED Director will conclusively

presume, for the limited purpose of determining the application for

reinstatement, that (i) the allegations set forth in the OED

investigation against him are true, and (ii) he could not have

successfully defended himself against such allegations.

This action is taken pursuant to the provisions of 35 U.S.C.

§§ 2(b)(2)(D) and 32, and 37 C.F.R. §§ 11.27 and 11.59. Disciplinary

decisions involving practitioners are posted for public reading at the

Office of Enrollment and Discipline Reading Room, available at:

http://go.usa.gov/x9rhg.

5. Respondent shall comply fully with 37 C.F.R. § 11.58; and

23

6. Respondent shall comply fully with 37 C.F.R. § 11.60 upon any request for

reinstatement.

ｾ＠David Shewchuk

Deputy General Counsel for General Law

United States Patent and Trademark Office

on behalf of

Michelle K. Lee

Under Secretary of Commerce for Intellectual Property and

Director of the United States Patent and Trademark Office

cc:

Director of the Office of Emollment and Discipline

U.S. Patent and Trademark Office

Danny M. Howell

Robert Jackson Martin IV

Anne M. Sterba

Law Office of Danny M. Howell, PLLC

2010 Corporate Ridge, Suite 700

Mclean, VA 22102

Counsel for Matthew H. Swyers

24

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Date



EXHI BI T B


Opposer,

v.


Applicant .


9 1 2 1 1 3 9 2 ( PARENT)

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EXHI BI T C


Opposer,

v.


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9 1 2 1 1 3 9 2 ( PARENT)

91215884

UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF VIRGINIA

Alexandria Division

MATTHEW H. SWYERS, )

)

Plaintiff, )

)

vs. ) Civil Action No. 1:16cv15

)

UNITED STATES PATENT & )

TRADEMARK OFFICE, et al., )

)

Defendants. )

_________________________________ )

MEMORANDUM OF LAW IN SUPPORT OF UNITED STATES PATENT &

TRADEMARK OFFICE’S MOTION TO DISMISS

DANA J. BOENTE

UNITED STATES ATTORNEY

DENNIS C. BARGHAAN, JR.

Assistant U.S. Attorney

2100 Jamieson Avenue

Alexandria, Virginia 22314

Telephone: (703) 299-3891

Fax: (703) 299-3983

Email: [email protected]

DATE: March 22, 2016 ATTORNEYS FOR DEFENDANTS

OF COUNSEL: Tracy Kepler


Case 1:16-cv-00015-LO-IDD Document 15 Filed 03/22/16 Page 1 of 29 PageID# 383

1

INTRODUCTION

It is difficult to overstate the importance of intellectual property in our modern society.

The United States Patent and Trademark Office (“USPTO”) is charged with not only regulating

intellectual property issues, but also with ensuring the integrity and fairness of the system itself –

including those practitioners who represent the intellectual property interests of others before the

USPTO. To this end, as the Federal Circuit has held, Congress and the USPTO have created a

comprehensive scheme governing the regulation of those practitioners, including a process by

which the USPTO investigates the conduct of a practitioner, and if necessary, the Director of

USPTO’s Office of Enrollment and Discipline (“OED”) files and ultimately prosecutes charges

of unprofessional conduct. That scheme provides a practitioner with extensive procedural

protections, including the ability to present oral testimony and written evidence before an

independent hearing examiner on the record, and an avenue for administrative and judicial

review of any adverse decision.

Plaintiff Matthew Swyers is a practitioner who has represented thousands of individuals

and entities before the USPTO in trademark matters. After an investigation into his conduct as a

trademark practitioner, and a finding of probable cause to believe he had engaged in substantial

misconduct by an independent committee of USPTO officials, the OED Director has filed a

lengthy complaint against plaintiff that presents eight separate counts of violations of USPTO’s

professional responsibility rules. Plaintiff will now have the ability to defend himself against

those charges before an independent hearing officer (an administrative law judge outside of the

USPTO), and to appeal any adverse decision to the USPTO Director, and then – if necessary – to

this Court.


2

Despite this exclusive scheme for administrative and judicial review of USPTO

disciplinary decision-making, plaintiff now asks this Court to intervene while his disciplinary

proceeding remain pending, and to enjoin the USPTO from continuing with charges that are

premised on his alleged failure to respond to requests for information (“RFI”) that he maintains

were unconstitutional. Leaving aside the fact that plaintiff eschewed the opportunity to

challenge the propriety of the RFIs during the investigation via a specific review mechanism that

the USPTO created for exactly that purpose, see 37 C.F.R. § 11.2(e), plaintiff can present his

constitutional arguments during the ongoing administrative process in defense of the very

charges that he asks this Court to enjoin. But more importantly, the Supreme Court has held that

federal courts lack jurisdiction to entertain claims for equitable relief against ongoing

administrative proceedings when Congress has – as here – created a specific scheme within a

particular context for administrative and judicial review. Accordingly, any Article III judicial

review of the propriety of the disciplinary charges against plaintiff must await a final

administrative decision from the USPTO Director, and be presented to this Court pursuant to 35

U.S.C. § 32.

Nevertheless, nothing about the RFIs in question ran afoul of plaintiff’s Fourth and Fifth

Amendment rights. As Judge Motz provided in a separate opinion for the Fourth Circuit nearly a

decade ago, an individual does not enjoy any procedural due process protections with respect to

investigative fact-finding by an agency; rather, it is only when an agency actually seeks to

impose a sanction (here, by filing disciplinary charges against a practitioner) that due process

attaches. Nor were any of the RFIs so over-broad – especially in relation to the USPTO’s scope

of inquiry – to come within the ambit of the Fourth Amendment.


3

STATUTORY AND REGULATORY BACKGROUND

In this action, plaintiff asks this Court to exercise judicial review in the middle of the

intricate and comprehensive scheme through which – pursuant to Congress’s express

authorization – the USPTO investigates putative misconduct on the part of those who represent

others before the agency and, in appropriate cases, seeks discipline against those individuals that

are alleged to have acted in contravention of the USPTO’s rules of professional conduct

(“RPC”). It is thus appropriate at the threshold to provide a detailed description of that scheme,

including the several opportunities that are available for administrative and judicial review of

USPTO decision-making and action in the disciplinary context.

I. USPTO’S AUTHORITY TO REGULATE THE CONDUCT OF PRACTITIONERS BEFORE THE

AGENCY

Congress has vested the USPTO with the authority to promulgate regulations

“govern[ing] the recognition and conduct of agents, attorneys, or other persons representing

applicants or other parties before the Office.” 35 U.S.C. § 2(b)(2)(D); see also Haley v. Under

Sec’y of Commerce for Intellectual Prop., --- F. Supp. 3d ---, 2015 WL 5277880, at *8 (E.D. Va.

Sept. 8, 2015). The Federal Circuit has repeatedly recognized that this provision grants broad

authority to the USPTO to govern the conduct of proceedings before the USPTO, and to govern

the recognition and conduct of practitioners who appear before the USPTO. See, e.g., Lacavera

v. Dudas, 441 F.3d 1380, 1383 (Fed. Cir. 2006).

Pursuant to this authority, the USPTO has enacted its own Rules of Professional Conduct

(“RPC”), see 37 C.F.R. §§ 11.101-.901, which govern the conduct of all practitioners engaged in

practice before the USPTO. The USPTO has also, based on 35 U.S.C. §§ 2(b)(2)(D) and 32,

promulgated specific regulations governing the investigation of alleged violations of the RPC on

the part of practitioners, and proceedings geared towards adjudicating both whether practitioners


4

have engaged in professional misconduct, and if so, the appropriate sanction for such

misconduct. See 37 C.F.R. §§ 11.2; 11.19-11.60.

II. THE DISCIPLINARY PROCESS

A. DISCIPLINARY INVESTIGATIONS

The disciplinary process commences when the Director of USPTO’s Office of

Enrollment and Discipline (“OED”) receives information suggesting professional misconduct on

the part of a practitioner, and initiates an investigation.1

1. Prior to 2004, there existed scant formal legal guidance concerning OED’s investigations

into allegations of misconduct. Indeed, USPTO’s regulations simply provided that the OED

Director’s duties included the “[c]onduct [of] investigation into possible violations of the

Disciplinary Rules.” 37 C.F.R. § 10.2(b)(2); see also id. § 10.131(a) (providing that the

“Director is authorized to investigate possible violations of Disciplinary Rules by practitioners”).

No specific regulatory provision identified either the types of investigatory tools at OED’s

disposal, or those mechanisms that were available to a practitioner to challenge decisions made

or actions taken by OED during the course of an investigation. And in all candor, in early 2004,

the Fourth Circuit criticized these gaps in USPTO’s regulatory structure. See Goldstein v.

Moatz, 364 F.3d 205, 217-18 (4th

Cir. 2003). But, contrary to the allegations contained in

plaintiff’s complaint here, Complaint, ¶1, since the Fourth Circuit’s decision in Goldstein, the

USPTO has now filled those gaps.

2.a. Initially, the USPTO’s regulations now clearly provide that OED officials can – as a part

of their investigation into potential misconduct on the part of a practitioner – “request

1Such allegations of misconduct can come to the attention of the OED Director, see 37

C.F.R. § 11.2(b) (delineating duties of OED Director), in any number of ways. For instance, an

individual outside USPTO – e.g., a client, court, or other agency – can report such allegations to

OED, and USPTO personnel can similarly identify potential misconduct for investigation. See

37 C.F.R. § 11.22(b).


5

information and evidence regarding possible grounds for discipline of a practitioner,” 37 C.F.R.

§ 11.22(f)(1), colloquially known as “requests for information” or “RFIs.” OED can exercise

this authority to request information from the “grievant” (i.e., the individual who tendered the

complaint of alleged misconduct), the member him or herself, or “[a]ny person who may

reasonably be expected to provide information and evidence needed in connection with the

grievance or investigation.” Id. As the USPTO noted in promulgating these new rules to the

public, “[r]equesting information and documents from practitioners . . . enables the OED

Director, and ultimately the [USPTO], to efficiently and effectively ascertain whether grounds

for disciplining a practitioner exist.” Changes to Representation of Others Before the United

States Patent and Trademark Office, 72 Fed. Reg. 9196, 9200 (Feb. 28, 2007). And for this

reason, consistent with the vast majority of state bar rules, USPTO’s RPC provide that if a

practitioner “knowingly fail[s] to respond to a lawful demand or request for information” not

protected by the rule on client confidences, such represents an independent ethical violation for

which the practitioner may be disciplined. 37 C.F.R. § 11.801(b) (emphasis added); see also VA.

R. PROF. COND. 8.1(c) (providing that Virginia practitioners “shall not . . . fail to respond to a

lawful demand for information from an admissions or disciplinary authority”).2

Additionally, OED can request information directly from a client of the practitioner under

investigation – even if that client is not simultaneously the individual who complained about the

practitioner’s conduct – but only after following carefully-circumscribed regulatory procedures

designed to protect against unnecessary intrusion into the sanctity of the attorney-client

relationship. Id. § 11.22(f)(2). In this respect, OED may only seek information from a non-

complaining client of the practitioner in question if (a) the practitioner himself consents, or (b)

2Of course, the highlighted terms above – especially within the context of the instant

action – are significant, as the USPTO must establish that the practitioner knowingly failed to

respond to a request for information that was lawful.


6

“upon a finding by a Contact Member of the Committee on Discipline [a group of independent

USPTO employees outside of OED] . . . that good cause exists to believe that the possible

ground for discipline alleged has occurred with respect to non-grieving clients.” Id.

b. But recognizing other concerns about potential investigatory overreaching articulated by

the Fourth Circuit in Goldstein, the USPTO also endeavored to create a remedial mechanism

through which practitioners (or others) could obtain review of OED decision-making and action

– including its issuance of requests for information – during disciplinary investigations:

A party dissatisfied with any action or notice of any employee of the Office of

Enrollment and Discipline during or at the conclusion of a disciplinary investigation shall

seek review of the action or notice upon petition to the OED Director.

Id. § 11.2(e). In order to ensure that the investigation remains on track, and that this petition

process is not utilized by practitioners to preclude the USPTO from filing a disciplinary

complaint within the relevant limitations period,3 any such petition must be filed within thirty

(30) days of the decision or action challenged. See id. Once the OED Director adjudicates the

petition, the party in question may seek administrative appellate review with the USPTO

Director. See id. And importantly, if still dissatisfied, the party may seek Article III judicial

review of the USPTO Director’s final decision on the petition in an appropriate federal court.

See id.; Changes to Representation of Others Before the United States Patent and Trademark

Office, 77 Fed. Reg. 64190, 64191-92 (Oct. 18, 2012) (noting that practitioners dissatisfied with

investigatory action on the part of OED personnel must exhaust these available “administrative

remedies before seeking relief under the Administrative Procedure Act”). As such, in the wake

of the Fourth Circuit’s decision in Goldstein, the USPTO has created specific mechanisms for

3Pursuant to federal statute, USPTO must commence any disciplinary proceeding within

10 years of the allegedly-unprofessional conduct, or within one year of the USPTO’s knowledge

of that conduct. See 35 U.S.C. § 32.


7

practitioners to obtain review of requests for information issued by OED during its investigation

of a given practitioner.

B. DISCIPLINARY PROCEEDINGS

1. If, at the conclusion of its investigation, OED believes that a practitioner has engaged in

unethical conduct, it cannot sua sponte charge that practitioner with a violation of the RPC and

seek a disciplinary sanction. Rather, it must present its investigatory findings to a panel the

“Committee on Discipline” – an independent group of attorneys at USPTO outside and

independent of OED.4 See 37 C.F.R. §§ 11.23(b)(1); 11.32. That panel reviews the evidence,

and determines whether there is probable cause to believe that the practitioner has engaged in

conduct violative of the RPC. See id. § 11.32.

If the panel makes this necessary probable cause finding, the OED Director commences

disciplinary proceedings by filing and serving a complaint against the practitioner. See id. §§

11.32; 11.34-35. The practitioner then has at least thirty (30) days to file an answer to the

complaint, see id. § 11.36, and of course, is entitled to legal representation during disciplinary

proceedings, see id. § 11.40.

2. Disciplinary proceedings against USPTO practitioners are conducted and adjudicated by

completely independent “hearing officers” that are outside the immediate supervision of either

the USPTO or OED Directors, see 35 U.S.C. § 32; 37 C.F.R. § 11.39; typically, Administrative

Law Judges (“ALJs”) from other Executive Branch agencies. And these proceedings, although

administrative in nature, bear the hallmarks of traditional litigation, along with the trappings of

due process afforded to litigants in Article III courts. See 35 U.S.C. § 32 (requiring notice and

4In particular, the USPTO Director is responsible for appointing the Committee on

Discipline, the governing regulations mandate that no member of the committee “shall report

directly or indirectly to the OED Director or any employee designated by the USPTO Director to

decide disciplinary matters.” 37 C.F.R. § 11.23(a).


8

an opportunity to be heard before a practitioner may be sanctioned). The OED Director bears the

“burden of proving the violation by clear and convincing evidence.” Id. § 11.49.

Hearing officers have extensive independent authority over disciplinary proceedings,

including the issuance of rulings on “motions or other requests” and evidentiary issues during the

course of the proceedings. See id. §§ 11.39(c); 11.43. Although full-fledged discovery is not

authorized as a matter of course, either the OED or a practitioner may move the hearing officer

to authorize discovery in the form of reasonable interrogatories and requests for production of

documents. See id. § 11.52(a). Additionally, the hearing officer presides over oral hearings –

akin to a trial – at which she receives both evidence and legal argument on the record concerning

the charges from both OED and the practitioner. See id. § 11.44.

USPTO’s regulations provide that a hearing officer should issue an initial decision on the

disciplinary charges within nine (9) months of the date on which the initial complaint is filed,

unless circumstances dictate otherwise. See id. § 11.39(d). That initial decision – akin to bench

trials before this Court – must include findings of fact and conclusions of law. See id.

§ 11.54(a)(1). And if the hearing officer concludes that the OED Director has borne his burden

to establish the practitioner’s disciplinary infraction, the decision is also to identify the

appropriate sanction for the misconduct. See id. § 11.54(a)(2).

3. If the practitioner is dissatisfied with the hearing officer’s resolution of the OED

Director’s disciplinary complaint, he has several avenues for administrative and judicial review.

a. Within thirty days of the hearing officer’s decision, the practitioner may notice an appeal

of that decision to the USPTO Director, including a brief that – consistent with the Federal Rules

of Appellate Procedure – identifies the grounds of error on the part of the hearing officer. See id.

§ 11.55. OED is entitled to file a responsive brief, and the practitioner a reply brief. See id.


9

Once briefing is completed, the USPTO Director “has authority to conduct a de novo

review of the factual record,” and “may affirm, reverse, or modify the initial decision or remand

to the hearing officer for such further proceedings as [she] may deem appropriate.” Id. § 11.56.

Subsequent to the USPTO Director’s appellate decision, the regulations afford a practitioner who

remains dissatisfied a single opportunity to request reconsideration. Id. § 11.56(c).

b. Once the USPTO Director’s appellate decision becomes final, Congress explicitly

provided a single, streamlined vehicle for Article III review of USPTO disciplinary proceedings,

and in so doing, placed strict limitations on the venue in which that review can be had:

The United States District Court for the Eastern District of Virginia, under such

conditions and upon such proceedings as it by its rules determines, may review the action

of the Director upon the petition of the person so refused recognition or so suspended or

excluded.

35 U.S.C. § 32. As the Federal Circuit has held, § 32 serves as the exclusive means by which a

USPTO practitioner can obtain judicial review of the agency’s disciplinary decisions, and that

such serves as part of the “‘orderly administrative mechanism’ for review” of such issues. See

Franchi v. Manbeck, 972 F.2d 1283, 1288-89 (Fed. Cir. 1992).

FACTUAL BACKGROUND & PROCEDURAL HISTORY5

1. Plaintiff Matthew Swyers is an attorney and trademark practitioner, and thus is currently

authorized to practice before the USPTO in trademark and other non-patent matters. Complaint

(Dkt. No. 1), ¶7; see also 5 U.S.C. § 500. In 2003, Plaintiff founded a law practice called “The

Trademark Company,” which engages in “the representation of clients in the protection of their

5 The following discussion is based on the allegations contained within the four corners of

the complaint, as well as both the attachments to that complaint and the other documents to

which plaintiff refers in the same, all of which may be considered by this Court in adjudicating a

motion to dismiss brought pursuant to Federal Rule 12(b)(6). See Tellabs, Inc. v. Makor Issues

& Rights, Ltd., 551 U.S. 308, 322 (2007). It is also well-settled that this Court can review

materials outside of the complaint in addressing its own jurisdiction pursuant to Federal Rule

12(b)(1). See, e.g., Velasco v. Gov’t of Indonesia, 370 F.3d 392, 398 (4th

Cir. 2004).


10

federal trademark and copyright rights.” Id. ¶13. In the thirteen years since its founding, “the

firm has represented over 20,000 clients,” despite the fact that virtually none of the other

individuals that plaintiff employed over that time were licensed attorneys. Id. ¶¶16; 49.

2. In August 2014, OED commenced an investigation into plaintiff’s conduct in his

representation of others before the USPTO in trademark matters. Complaint, ¶18. Consistent

with the regulations governing disciplinary investigations, OED personnel – during its

investigation – transmitted to plaintiff a series of RFIs. Complaint, ¶¶18; 38; 44; 50; 54. It is

these RFIs that form the backbone for many of plaintiff’s allegations in the instant complaint.

Nowhere within the four corners of the complaint, however, does plaintiff once allege that he

challenged the propriety of OED’s transmission of any of these RFIs through the aforementioned

procedure, see 37 C.F.R. § 11.2(e), explicitly created for that purpose.

a. OED transmitted its first RFI to plaintiff on August 29, 2014. Id. ¶18; see also

Defendant’s Exhibit (“DEX”) 1. These first RFIs explained to plaintiff that it had commenced

an investigation after receiving information regarding his trademark application filings, and that

OED was endeavoring “to develop all information relevant to the received information,

including that information which may justify or exonerate the alleged actions.” Id. at 1. The RFI

also provided a list of the RPC that were “under possible consideration,” so that plaintiff could

generally understand the nature of the potential misconduct being investigated. Id. at 3.

And although plaintiff maintains that this – and other – RFIs contains “threats”

concerning plaintiff’s non-compliance with the RFIs, Complaint, ¶19, the actual text of the RFIs

belie this contention. Rather, the RFIs merely serve to remind a practitioner (such as plaintiff

here) of what the RPC already mandate – i.e., that responding to RFIs is not discretionary – so

that a practitioner cannot later feign ignorance:


11

It is a violation of the USPTO Rules of Professional Conduct to fail to cooperate with

OED in an investigation of any matter before it, or to knowingly fail to respond to a

request from OED. See 37 C.F.R. § 11.801(b). In addition, if you do not respond to this

request for information, the Committee on Discipline may draw an adverse inference in

making a determination under 37 C.F.R. § 11.23. See Baxter v. Palmigiano, 425 U.S.

308 (1975).

DEX 1.

b. After receiving plaintiff’s response to its first set of RFIs, OED transmitted a second RFI

to plaintiff on December 19, 2014. Id. ¶38 & ex.A. And although it was not required to do so,

OED identified for plaintiff those trademark applications with which plaintiff was identified

about which OED had concerns. Id. ex. A. In a lengthy preface to this RFI, OED informed

plaintiff – with citations to the appropriate provisions of the USPTO’s regulations and the

Trademark Manual of Examining Procedure – of exactly the ethical concerns that animated its

questioning. Id. ex.A., at 13-14. More specifically, OED explained that all documents submitted

to the USPTO in trademark matters must be personally signed by an authorized person –

including those signed electronically – and that an attorney’s paralegal or assistant cannot be the

signatory; thus, OED was concerned that other individuals (i.e., those employed by the

Trademark Company) were signing plaintiff’s name electronically to documents without plaintiff

having done so personally as required. Id. The four queries transmitted in this second RFI, once

distilled to its essence, simply asked plaintiff to identify whether his electronic signature had

ever been affixed to an agency filing by another individual, in violation of USPTO signature

rules for trademark matters.

c. Based on these continued concerns about plaintiff’s non-attorney employees signing and

filing documents with the USPTO under his name, on March 30, 2015, OED transmitted its third

RFI to plaintiff. Id. ¶44; DEX 2. This RFI first asked plaintiff to confirm his prior responses

concerning whether other individuals electronically signed his name to trademark applications.


12

DEX 2. And second, this RFI asked plaintiff to provide contact information for current and past

employees of the Trademark Company. DEX 2. Two weeks later, plaintiff responded to this

RFI simply by providing a laundry list of objections to the same, and disclosing information

about one employee. Id. ¶45 & ex.B.

d. In May and June 2015, OED transmitted its final two RFIs to plaintiff. Id. ¶¶50-54, exs.

D-E. These RFIs provided extremely-detailed information about the evidence that OED had

garnered during its investigation to date, including plaintiff’s own admissions, and the potential

misconduct on plaintiff’s part that OED was investigating. And with respect to each series of

requests, OED took the extraordinary step of providing a justification for its requests. As but one

example, OED’s fourth RFI provided as follows, in pertinent part:

Since January 2010, Mr. Swyers filed, or caused to be filed, thousands of trademark

applications and trademark application submissions . . . in the Office. Based on (a) Mr.

Swyers’ admission that he allowed other persons to sign his name to trademark

applications and trademark application submissions filed in the Office under his

electronic signature, and (b) Mr. Swyers’ alleged ignorance of well-known USPTO

signature rules, there is evidence suggesting that Mr. Swyers may have violated

numerous ethical duties that he owes to [his] trademark applicants, to the Office, to the

public, and to the legal profession. Therefore, additional information is requested from

Mr. Swyers as follows.

Id. ex. D., at 2. This comes not from a disciplinary complaint, or from a closing argument before

the Hearing Officer; rather, it is from a RFI transmitted only to plaintiff so that plaintiff can

understand the basis for, and provided complete responses to, OED’s inquiries.6

3. OED’s investigation has now closed. And on March 11, 2016, after the Committee on

Discipline found probable cause that plaintiff had violated the RPC, the OED Director – who is

not a defendant here – commenced disciplinary proceedings against plaintiff through the filing of

6OED personnel also contacted some of plaintiff’s clients to obtain information about his

representation, and did so only after following the process mandated by 37 C.F.R. § 11.22(f)(2),

and receiving permission from an independent member of the Committee on Discipline outside

OED.


13

a fifty-six (56) page complaint against plaintiff with an ALJ at the United States Environmental

Protection Agency, who will serve as the independent hearing officer to adjudicate the charges.

DEX 3. That complaint alleges eight separate counts against plaintiff:

Count I – assisting others in engaging in the unauthorized practice of law; failure to

review trademark applications and other trademark documents before filing;

misrepresentations to clients;

Count II – directing or allowing non-lawyer employees to sign or forge [plaintiff’s] name

to trademark applications and other trademark documents filed in the Office, in violation

of the USPTO signature and certification rules;

Count III – directing or allowing employees to sign or forge [plaintiff’s] name to Section

2(f) declarations filed with the Office;

Count IV – filing with the Office fraudulent or digitally altered specimens which did not

reflect the mark’s use in commerce; failure to inform the Office or clients or false or

fraudulent specimens; failure to remedy or offer restitution;

Count V –misrepresentation on website that a lawyer would prepare and review

documents; collecting fees for trademark work done by non-lawyers when representing

to clients that a lawyer would do the work.

Count VI – failure to deposit client funds paid in advance into a client trust account;

Count VII – impermissibly sharing legal fees with non-practitioners;

Count VIII – witness tampering; failure to respond to lawful requests for information or

cooperate with OED.

DEX 3.

More specifically, the complaint alleges, inter alia, that plaintiff “directed or allowed

non-lawyer employees of the Trademark Company to electronically sign or forge [his] electronic

signature to his clients’ trademark application,” and that plaintiff had “admitted to OED that he

did not review the trademark applications before they were filed.” Id. ¶¶34-35. The complaint

also alleges that plaintiff’s employees filed fraudulent specimens (i.e., those that were not

actually being used in commerce) in support of trademark regulations, id. ¶¶91-117; 126-42, and


14

that at least two of plaintiff’s former clients had provided evidence corroborating that plaintiff’s

employees had created and filed fraudulent specimens with the agency, id. ¶¶97; 182.

Of import to this action, only one part of a single count of the disciplinary complaint

concerns plaintiff’s responses to the RFIs. Id. at 49-53. In this respect, the complaint identifies

that “[a] practitioner has an ethical duty to cooperate with OED and respond to its lawful

requests for information.” Id. at 48 (citing 37 C.F.R. § 11.801(b)). And that single count

concerns only a few discrete issues with respect to plaintiff’s responses: (1) plaintiff’s failure to

provide client invoices (which would have revealed the firm employee who worked on the

application in question); (2) plaintiff’s failure to provide employment agreements (which would

have revealed evidence of whether plaintiff was impermissibly sharing fees with non-lawyers);

(3) plaintiff’s failure to provide requested § 2(f) declarations (which would have provided

evidence of the veracity of plaintiff’s putative trademark filings); and (4) plaintiff’s refusal to

provide a privilege log to corroborate those materials that he was withholding on the basis of

privilege. Id. at 49-52. The complaint avers that each of the OED’s RFIs were “lawful.” Id.

These disciplinary proceedings are, therefore, in their infancy. Plaintiff now has thirty

days within which to answer the complaint. After plaintiff files his answer, the ALJ – as hearing

officer – will conduct the proceedings, consider motions, receive evidence, and issue an initial

decision on the charges contained within the complaint. Should plaintiff be dissatisfied with that

initial decision, he will be afforded the opportunity to appeal the decision to the USPTO

Director, who will issue a final administrative decision. And as stated earlier, plaintiff can seek

Article III judicial review in this Court from the USPTO Director’s final decision.


15

STANDARDS OF REVIEW

I. FEDERAL RULE 12(b)(1)

Federal Rule 12(b)(1) serves as the appropriate vehicle to challenge the court’s subject

matter jurisdiction in a particular matter. See, e.g., Coulter v. United States, 256 F. Supp. 2d

484, 486 n.3 (E.D. Va. 2003), aff’d, 90 Fed. Appx. 60 (4th

Cir. 2004). The plaintiff bears the

burden of establishing the court’s subject matter jurisdiction, and although this Court may utilize

the allegations contained within the four corners of the plaintiff’s complaint as evidence in

determining whether it possesses jurisdiction over a dispute, it may also consider other evidence

outside the pleadings if necessary. See Richmond, Fredericksburg, & Potomac R.R. Corp. v.

United States, 945 F.2d 765, 768 (4th

Cir. 1991); Coulter, 256 F. Supp. 2d at 486 n.3.

II. FEDERAL RULE 12(b)(6)

To the contrary, a motion pursuant to Federal Rule 12(b)(6) serves to test the legal

sufficiency of the plaintiff’s complaint in relation to the factual averments he or she puts

forward. Although a court must accept all well-pled allegations in adjudicating such a motion, it

need not credit allegations that are merely conclusory. See Ashcroft v. Iqbal, 556 U.S. 662, 675

(2009). In Iqbal, the Supreme Court held as follows with respect to the proper standard of

review:

To survive a motion to dismiss, a complaint must contain sufficient factual matter,

accepted as true, to “state a claim to relief that is plausible on its face.” A claim has

factual plausibility when the plaintiff pleads factual content that allow the court to draw

the reasonable inference that the defendant is liable for the misconduct alleged.

Id. at 678 (quoting Twombly, 550 U.S. at 570). Accordingly, although (as before) a court is

required to adjudge the factual averments contained within a complaint against the substantive

law governing the claim, now “where the well-pleaded facts do not permit the court to infer more

than the mere possibility of misconduct,” the complaint fails. Id. at 679 (emphasis added).


16

ARGUMENT

Plaintiff’s instant complaint presents two constitutional claims: (a) the RFIs violated

plaintiff’s Fifth Amendment rights to procedural due process, ostensibly because – in plaintiff’s

erroneous view – there is a “complete absence of any means to challenge the RFIs[],”

Complaint, ¶¶1; 67; and (b) the RFIs “amount[] to an unreasonable search within the meaning of

the Fourth Amendment of the United States Constitution.” Id. ¶70. From these claims, against

the USPTO, plaintiff asks this Court to insert itself into the ongoing disciplinary proceedings

before the independent hearing officer by entering an injunction precluding OED from

continuing with charges against plaintiff for failing to respond to the allegedly unlawful RFIs:

Swyers asks this Court to enjoin Defendants on a preliminary and permanent basis from

the enforcement of charges of violations of disciplinary rules based in whole or in part

upon the failure of Swyers to answer to the OED’s satisfaction RFIs that violate Swyers’

constitutional rights.

Id. ¶77.

II. THIS COURT LACKS JURISDICTION OVER PLAINTIFF’S REQUEST FOR JUDICIAL

INTERRUPTION OF AN ONGOING ADMINISTRATIVE PROCEEDING

The gravamen of plaintiff’s request for injunctive relief in this Court is that any

disciplinary charge against plaintiff based upon his purported failure to respond to putatively-

unlawful RFIs would be unfounded, and that this Court should judicially-intervene and eliminate

those charges immediately. But disciplinary proceedings against plaintiff on these (and many

other) grounds have just commenced, and plaintiff – pursuant to the streamlined process of

administrative and judicial review that Congress has mandated – will have a full and fair

opportunity to present his arguments to the hearing officer, and then (if necessary) to the USPTO

Director, and ultimately to this Court. Plaintiff’s injunctive demand thus asks this Court to insert

itself prematurely into this ongoing process and thus to allow him to circumvent Congress’s


17

desired system for administrative and judicial review. As described below, binding authority

divests this Court of jurisdiction to entertain such a request.

A. THIS COURT LACKS JURISDICTION TO ENTERTAIN ARGUMENTS OF

CONSTITUTIONAL ERROR OUTSIDE OF THE SPECIFIC JUDICIAL REVIEW

SCHEME THAT CONGRESS PROMULGATED

It is by now axiomatic “that no one is entitled to judicial relief for supposed or threatened

injury until the prescribed administrative remedy has been exhausted.” Thetford Properties IV

L.P. v. HUD, 907 F.2d 445, 448 (4th

Cir. 1990) (noting this to be a “long settled rule of judicial

administration”); see also Myers v. Bethlehem Shipbuilding Corp., 303 U.S. 41, 50-51 (1938).

This rule is no less applicable where a litigant raises issues of a constitutional dimension. See,

e.g., Nationsbank Corp. v. Herman, 174 F.3d 424, 429 (4th

Cir. 1999) (recognizing the

“consistent and unambiguous line of cases rejecting the contention that constitutional claims

should be exempt from the exhaustion requirement”). And although administrative exhaustion is

generally a prudential doctrine, see Volvo GM Heavy Truck Corp. v. Dep’t of Labor, 118 F.3d

205, 211-12 (4th

Cir. 1997), it becomes a jurisdictional mandate where Congress has created an

exclusive system for administrative and judicial review within a particular context.

Where Congress has created a streamlined review scheme that channels judicial review

into a single Article III forum, constitutional challenges must be presented to that forum at the

conclusion of administrative proceedings. As the Supreme Court has held:

As for petitioner’s constitutional claim, we agree that “[a]djudication of the

constitutionality of congressional enactments has generally been thought beyond the

jurisdiction of administrative agencies.” This rule is not mandatory, however . . . [and]

the Commission has addressed constitutional questions in previous enforcement

proceedings. Even if this were not the case, however, plaintiff’s statutory and

constitutional claims here can be meaningfully addressed in the court of appeals.

We conclude that the Mine Act’s comprehensive enforcement scheme, combined with the

legislative history’s clear concern with channeling and streamlining the enforcement

process, establishes a ‘fairly discernible’ intent to preclude district court review in the


18

present case. . . . To uphold the District Court’s jurisdiction in these circumstances would

be inimical to the structure and the purposes of the Mine Act.

Thunder Basin Coal Co. v. Reich, 510 U.S. 200, 215 (1994) (emphasis added) (footnotes and

citations omitted) (quoting Johnson v. Robison, 415 U.S. 361, 368 (1974)). Put simply, allowing

a litigant to circumvent Congress’s deliberately-crafted review scheme would both defeat the

purpose behind the streamlined system and merely “duplicate” the specific judicial review that

Congress provided. See Sturm Ruger & Co. v. Herman, 300 F.3d 867, 876 (D.C. Cir. 2002)

(“Our obligation to respect the review process established by Congress bars us from permitting

Sturm Ruger to make this end run [around Congress’s review scheme], and requires dismissal of

its district court complaint.”); see also Hirschberg v. CFTC, 2003 WL 22019310, at *4 (N.D. Ill.

Aug. 27, 2003) (“Because Hirschberg’s constitutional claims also ‘can be meaningfully

addressed in the court of appeals’ . . . this Court’s jurisdiction would duplicate the CEA’s

statutory appeals procedure.”). Put simply, as the Supreme Court has more recently concluded,

“the appropriate inquiry” is “whether it [was] fairly discernible” from the statutory scheme that

Congress intended litigants “to proceed exclusively through the statutory review process.” Elgin

v. Dep’t of the Treasury, 132 S. Ct. 2126, 2133 (2012).

Another Eastern District jurist recently applied these principles to preclude this Court’s

jurisdiction over a request to enjoin the conduct of USPTO administrative proceedings – based

on allegations that those proceedings ran afoul of plaintiff’s constitutional rights – because the

Patent Act established a particular scheme for judicial review. See Cooper v. Lee, 86 F. Supp.

3d 480 (E.D. Va. 2015). In Cooper, plaintiffs were patent owners embroiled in inter partes

review proceedings before the USPTO – proceedings through which the USPTO reconsiders its

prior decision to issue a patent. As here, plaintiffs in Cooper maintained that these inter partes

review proceedings violated their constitutional rights, and asked this Court to enter an


19

injunction terminating those proceedings. See id. at 482. Much like its treatment of USPTO

disciplinary proceedings, the Patent Act provided a single avenue for judicial review of

administrative inter partes review proceedings – i.e., an appeal to the Federal Circuit from the

Patent Trial and Appeal Board’s (“PTAB”) final written decision. See 35 U.S.C. § 319. For this

reason, inter alia, Judge Lee concluded that he could not entertain plaintiff’s claims about the

constitutionality of the proceedings, and that any constitutional challenge needed to be presented

to the Federal Circuit at the end of proceedings pursuant to the congressionally-created scheme

for judicial review. See Cooper, 86 F. Supp. 3d at 489.

And so it is here. There can be little doubt that, as the Federal Circuit has already held,

Congress intended that the filing of a petition for review in this Court pursuant to § 32 – after the

USPTO Director issues her final administrative decision – would serve as the exclusive

mechanism for Article III review of disciplinary charges against a USPTO practitioner. It is

well-settled “that a precisely drawn, detailed statute pre-empts more general remedies.” Brown

v. GSA, 425 U.S. 820, 834 (1976). The Patent Act’s establishment of a private right of action

for Article III judicial review for an aggrieved practitioner pursuant to § 32 easily fits this

principle. The process by which the USPTO may seek to discipline an agency practitioner –

including administrative trial proceedings before an independent hearing officer and

administrative appellate proceedings before the USPTO Director – are, as detailed above, both

comprehensive and specific. And at the end of these administrative proceedings, should the

USPTO enter a final order of suspension against a practitioner, Congress provided a specific

cause of action for Article III judicial review of that order. See 35 U.S.C. § 32. For these

reasons, the Federal Circuit has held that litigants cannot raise challenges – constitutional or


20

otherwise – to disciplinary proceedings outside of the specific circumstances identified in § 32.

See Franchi v. Manbeck, 972 F.2d 1283, 1288-89 (Fed. Cir. 1992).

But that is exactly what plaintiff asks of this Court – to adjudicate the propriety of a

portion of the pending disciplinary charges against him while administrative proceedings related

to those charges are ongoing, before either the independent hearing officer or the USPTO

Director can render a decision on those disciplinary charges, and outside of the specific avenue

for judicial review Congress authorized. The above authority precludes this Court from

exercising jurisdiction over plaintiff’s attempt to circumvent Congress’s system for

administrative and judicial review of disciplinary charges through a collateral Article III

proceeding. And although not dispositive of this issue, plaintiff has an opportunity to press his

argument that the RFIs in question were unconstitutional during the pending administrative

proceedings.7 As the relevant USPTO RPC provides, plaintiff can only be disciplined for failing

to respond to a “lawful” request for information during investigation, see 37 C.F.R. § 11.801(c);

indeed, OED’s complaint against plaintiff specifically provides that its requests of plaintiff were

“lawful” within the meaning of the rule. DEX 3. Plaintiff will thus be able to argue – to the

independent hearing officer, the USPTO Director, and ultimately this Court within § 32 judicial

review – that OED’s RFI’s were unconstitutional (or, in the parlance of the rule, “unlawful”).

Regardless, however, this Court lacks jurisdiction to consider plaintiff’s request for an

injunction terminating that portion of the disciplinary proceedings against him outside of the

exclusive vehicle for judicial review found in § 32. Plaintiff’s constitutional challenge to any

7Importantly, individuals are still required to traverse a particularized administrative and

judicial review scheme even if an administrative agency cannot provide it the constitutional

relief requested. See, e.g., Ticor Title Ins. Co. v. FTC, 814 F.2d 731, 738 (D.C. Cir. 1987)

(opinion of Edwards, J.) (holding that general exhaustion rule “has been applied even where the

plaintiffs have challenged the very authority of the agency to conduct proceedings against them”)


21

potential discipline based on his purported failure to respond to OED’s RFIs in this Court thus

must await the conclusion of administrative review, and proceed pursuant to § 32.

B. THERE HAS BEEN NO “FINAL AGENCY ACTION” OVER WHICH THIS COURT

MAY EXERCISE JURISDICTION

Even if this Court, despite the Federal Circuit’s decision in Franchi, were to conclude that

the administrative and judicial review scheme Congress authorized in § 32 was not the exclusive

means by which to review USPTO disciplinary decisions, there still has been no “final agency

action” over which this Court can exercise judicial review. In this respect, at bottom, plaintiff

seeks judicial review over an ongoing administrative proceeding – a matter generally governed

by the provisions of the Administrative Procedure Act (“APA”). But the APA only authorizes

judicial review over “final agency action.” 5 U.S.C. § 704.

As the Supreme Court has held, the mere filing of an administrative complaint against a

litigant is the antithesis of a “final agency action,” as it is only the beginning of the

administrative process. FTC v. Standard Oil Co., 449 U.S. 232, 241-43 (1980). The rationale

behind this strict limitation is clear: review of a non-final agency decision “interfere[s] with the

proper functioning of the agency and [is] a burden for the courts.” Id. at 242. Allowing district

courts to exercise APA jurisdiction over such action “leads to piecemeal review which at the

least is inefficient and upon completion of the agency process might prove to have been

unnecessary.” Id. Put simply, as delineated above, plaintiff may present his argument that the

RFIs in question were “unlawful,” and that the disciplinary charges based on the same should

thus not be sustained, during his pending disciplinary proceedings – arguments that either the

independent hearing officer or the USPTO Director on administrative appellate review may very

well accept, thus obviating any need whatsoever for this Court’s Article III review.


22

III. THE RFIS SERVED BY OED’S INVESTIGATORS DID NOT RUN AFOUL OF PLAINTIFF’S

CONSTITUTIONAL RIGHTS

Even if this Court possessed the jurisdiction to intervene in plaintiff’s pending

disciplinary proceedings outside of Congress’s scheme for administrative and judicial review,

there was nothing constitutionally-infirm about either the OED investigators’ RFIs, or the

disciplinary charges based on plaintiff’s responses to the same. As stated above, plaintiff will

have a full and fair opportunity to argue – during the disciplinary hearing before an independent

administrative law judge (and on administrative and judicial review) – that those RFIs were

unconstitutional. But those arguments are meritless, as nothing about OED’s RFIs violated

plaintiff’s Fourth and Fifth Amendment rights.

Nor does this Court consider these constitutional questions on a completely blank slate,

as there has been judicial treatment of virtually identical arguments of constitutional deprivation

to those that plaintiff presents here – Judge Motz’s separate decision in Goldstein v. Moatz, 364

F.3d 205 (4th

Cir. 2003). In Goldstein, another USPTO practitioner under investigation by OED

for professional responsibility violations presented similar constitutional arguments concerning

putatively overbroad and burdensome RFIs. See id. at 210. Judge Motz, writing separately,8

concluded that these allegations “utterly fail[ed] to . . . give rise to any constitutional violation.”

See id. at 220 (Motz., J., dissenting). Citing to the Supreme Court’s decisions in Hannah v.

Larche, 363 U.S. 420 (1960) and SEC v. Jerry T. O’Brien, Inc., 467 U.S. 735, 742 (1984), Judge

8To be sure, Judge Motz’s separate opinion was technically a dissent. But it was not a

traditional dissent in that she was not disagreeing with any legal analysis offered by the panel

majority. In Goldstein, the District Court dismissed the action based on its conclusion that the

defendants were entitled to absolute immunity from suit, and the panel majority reversed that

conclusion. See Goldstein, 364 F.3d at 219. The panel majority did not entertain the merits of

Goldstein’s constitutional arguments, electing to remand the matter back to the District Court.

See id. Judge Motz simply believed that the constitutional merits – the very same arguments that

plaintiff presses here – were too weak even to merit remand, especially because to do so would

“serv[e] only to prolong a plainly meritless case.” Id. at 220 n.1 (Motz, J. dissenting).


23

Motz noted that the courts “summarily rejected a number of constitutional challenges to similar

[] investigative procedures,” and had done so with respect “to attorney discipline and public

corruption investigations” as well. Id. at 222 (Motz, J., dissenting). There is no reason for this

Court to depart from Judge Motz’s cogent analysis.

A. THERE IS NO COGNIZABLE PROCEDURAL DUE PROCESS PROTECTION WITH

RESPECT TO INVESTIGATORY FACT-FINDING

Plaintiff first maintains that the OED investigators’ RFIs ran afoul of his Fifth

Amendment rights to procedural due process. The Fifth Amendment to the United States

Constitution generally provides that an individual may not “be deprived of life, liberty, or

property, without due process of law.” U.S. CONST. amend V. The procedural requirements of

the Due Process Clause have not been the subject of precise definition, leaving the minimal

constitutional protections afforded by the provision somewhat difficult to ascertain with any

mechanical certainty. See, e.g., Morrissey v. Brewer, 408 U.S. 471 (1972) (“[D]ue process is

flexible and calls for such procedural protections as the particular situation demands.”).

Notwithstanding the vague decisional authority concerning the contours of the right, the

Supreme Court has held that – from a general perspective – due process protections minimally

require “notice and an opportunity to be heard.” Mallette v. Arlington County Employees’

Supplemental Retirement Sys., 91 F.3d 630, 640 (4th

Cir. 1996).

But as the Supreme Court has repeatedly held, and Judge Motz correctly observed, the

Fifth Amendment’s procedural due process protections do not attach to issues related to agency

fact-finding efforts:

[W]hen governmental agencies adjudicate or make binding determinations which directly

affect the legal rights of individuals, it is imperative that those agencies use the

procedures which have traditionally been associated with the judicial process. On the

other hand, when governmental action does not partake of an adjudication, as for


24

example, when a general fact-finding investigation is being conducted, it is not necessary

that the full panoply of judicial procedures be used.

Hannah v. Larche, 363 U.S. 420, 442 (1960) (emphasis added); see also SEC v. Jerry T. O’Brien,

Inc., 467 U.S. 735, 742 (1984) (holding that Hannah “leaves no doubt that [] the Due Process

Clause of the Fifth Amendment” is not “offended when a federal administrative agency . . . uses

its subpoena power to gather evidence”). The same dichotomy applies here. Although plaintiff

seeks injunctive relief with respect to the OED Director’s prosecution of him on charges of

unethical conduct, his constitutional arguments are focused on RFIs that were issued to him

during by the OED investigators during the investigatory process. “The Due Process Clause is

not implicated under such circumstances because an administrative investigation adjudicates no

legal rights.” O’Brien, 467 U.S. at 742. And now that the OED Director has commenced

disciplinary proceedings – during which plaintiff’s “legal rights” will most certainly be

“adjudicated” – plaintiff will receive far more than constitutionally-minimal due process.

Before leaving the Fifth Amendment, it bears mentioning that what ostensibly serves as

the gravamen of plaintiff’s due process claim – i.e., that there is a “complete absence” of any

mechanism to challenge troublesome RFIs – is wildly inaccurate. As stated above, in the wake

of the Fourth Circuit’s Goldstein criticism in this regard, the USPTO created a specific

administrative and judicial review scheme for any action taken by OED personnel during an

investigation. See 37 C.F.R. § 11.2(e). Not only is a dissatisfied practitioner afforded two levels

of administrative review, but any final agency action issued by the USPTO Director on this score

may be appealed to this Court under the APA. Even were due process strictures to attach to

OED investigations – and they do not – the USPTO’s tailor-made process more than adequately

discharge any constitutional obligation.


25

B. PLAINTIFF DOES NOT ENJOY FOURTH AMENDMENT PROTECTION WITH

RESPECT TO RFIS

1. Plaintiff also maintains that the RFIs “amount[] to an unreasonable search within the

meaning of the Fourth Amendment.” Complaint, ¶70. It is difficult to comprehend the nature of

plaintiff’s claim in this regard, because OED did not attempt to affect anything approaching the

type of “search” that typically animates Fourth Amendment analysis. Based on the briefing in

Goldstein, however, it appears that plaintiff is attempting to equate the Fourth Amendment

jurisprudence applicable to administrative subpoenas to the RFIs at issue here. See, e.g., United

States v. Morton Salt Co., 338 U.S. 632, 642-43 (1950). To the best of undersigned counsel’s

knowledge, there is no decisional authority in this jurisdiction applying this strain of Fourth

Amendment authority to simple requests for information to licensed attorneys during an bar

investigation. This lack of authority is sufficient itself to reject plaintiff’s claim.

Nor should this Court extend Fourth Amendment jurisprudence to encompass RFIs

issued during a fact-finding investigation into putative attorney misconduct. Unlike subpoenas –

which are enforceable through the contempt power of the judiciary – OED RFIs are not

enforceable through any particular mechanism; indeed, failure to comply with a RFI is only

potentially grounds for an independent disciplinary charge, which itself is ultimately adjudicated

through the administrative and judicial review process.9 Cf. In re Bailey, 182 F.3d 860, 862

(Fed. Cir. 1999) (rejecting constitutional arguments against “dilatory and abusive tactics” of a

9Indeed, the Oklahoma Supreme Court has differentiated between requests for

information to an attorney during a disciplinary investigation and a third-party subpoena during

that same investigation. See Oklahoma ex rel. Oklahoma Bar Ass’n v. Gasaway, 863 P.2d 1189,

1198-1200 (Okla. 1993). During a bar investigation, the Oklahoma Bar Association “asked” the

relevant attorney “to provide information and documents,” but the attorney twice “declined to

respond.” Id. at 1198. In response, the Bar Association transmitted a subpoena to a third-party

bank for similar documentation, and – noting that the court was “amply empowered to enforce a

subpoena issued in the course of Bar disciplinary proceeding” – ultimately applied Fourth

Amendment doctrine to the subpoena. Id. at 1199-1200.


26

bar association during attorney investigation “because the court, not the Committee” ultimately

makes “the determination whether [the attorney] will be subject to discipline”).

2. But in any event, even were the Fourth Amendment law applicable to administrative

subpoenas applicable to OED’s RFIs, there can be little doubt that these RFIs would pass

constitutional muster. As the Supreme Court has held, to be consistent with the Fourth

Amendment, an administrative subpoena is sufficient “if the inquiry is within the authority of the

agency, the demand is not too indefinite, and the information sought is reasonably relevant.”

Morton Salt, 338 U.S. at 652-53. Importantly, this standard is extremely fluid, allows an agency

much leeway, and thus “cannot be reduced to formula” because “relevancy and adequacy or

excess in the breadth of the subpoena are matters variable in relation to the nature, purposes and

scope of the inquiry.” Oklahoma Press Publishing Co. v. Walling, 327 U.S. 186, 209 (1946).

In this respect, plaintiff primarily complains about the breadth of OED’s RFIs,

maintaining that because those requests asked him for information about his representational

efforts over a large period of time (and thus concerned a large number of trademark applications

with which he was allegedly involved), they were overly burdensome. But the Fourth Circuit

has rejected this argument under very analogous circumstances in the context of a subpoena that

would have required a physician “to produce more than 15,000 patient files alone, consisting of

between 750,000 and 1.25 million pages of material” that would obviously been sensitive in

nature. In re Subpoena Duces Tecum, 228 F.3d 341, 345 (4th

Cir. 2000). As the panel provided:

[I]f Bailey had treated 15,000 patients over a period of seven years and all of them were

reimbursed on claims he submitted, a suspicion of fraud on these claims would justify a

review of Bailey’s documentation of services to these patients, of the claims submitted on

their behalf, and of the reimbursements collected. Even though these documents might

be numerous, they would reasonably relate to and further the government’s legitimate

inquiry, which might be defined by any of 13 federal statutory offenses, including fraud.


27

Id. at 350.10

Here, at their allegedly most burdensome, the RFIs that OED tendered to plaintiff

did not seek the production of anything approaching this level of documentation; rather, akin to

an interrogatory, they asked plaintiff a question about his practice. Complaint, ex.B. Because

OED was not required “to ascertain . . . the extent of any wrongdoing” on plaintiff’s part “before

issuing” its RFIs, id. at 351, it was certainly not constitutionally-required to limit its RFIs before

learning of the scope of plaintiff’s putative misconduct.

CONCLUSION

For the foregoing reasons, this Court should dismiss plaintiff’s complaint against the

USPTO.

Respectfully submitted,

DANA J. BOENTE

UNITED STATES ATTORNEY

By: _________/s/____________________





Telephone: (703) 299-3891

Fax: (703) 299-3983


DATE: March 22, 2016 ATTORNEYS FOR DEFENDANTS

OF COUNSEL: Tracy Kepler


10For this reason, plaintiff’s reflexive invocation of the attorney-client relationship does

not change the constitutional calculus. Indeed, even § 11.801(b) itself provides that a

practitioner cannot be sanctioned merely for refusing to provide information that the rules

otherwise deem confidential, see 37 C.F.R. § 11.106, as a result of the attorney-client

relationship.


28

CERTIFICATE OF SERVICE

I hereby certify that on this date, I electronically filed the foregoing with the Clerk of

Court using the CM/ECF system, which will transmit a true and correct copy of the same to the

following:

Danny M. Howell

Sands Anderson, P.C.

1497 Chain Bridge Road, Suite 202

McLean, Virginia 22101


Date: March 22, 2016 ______/s/______________________





Telephone: (703) 299-3891

Fax: (703) 299-3983


ATTORNEYS FOR DEFENDANTS




EXHI BI T D


Opposer,

v.


Applicant .


9 1 2 1 1 3 9 2 ( PARENT)

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