Remembering TCPaul, 2016-2019

Freaking out over a trademark disaster

Hi All, Any advice appreciated! So I used to be a patent patentlwyr03/26/19
Offer to settle for $1,000. Throw the former client a bone a blawprof03/26/19
Thanks blawprof! I was considering a settlement offer if he patentlwyr03/26/19
Was there any written communication (email) regarding the se isthisit03/26/19
When you refunded his money did you include any kind of rele dingbat03/26/19
True symbols of virtue, the BAR. If the guy doesn’t want t esquirewalletsmatter03/26/19
if you offer a refund on condition of not getting a bar comp dingbat03/26/19
It’s not a refund. It’s a release. I did this service. Y esquirewalletsmatter03/27/19
No email communication of any sort re: the search. Email com patentlwyr03/26/19
Do you have notes indicating he declined the search report? pauperesq03/26/19
Yes, I pulled up my notes indicating No to Full search and a patentlwyr03/26/19
1. I do not have malpractice insurance. 2. I do not have a dingbat03/26/19
1. Thanks for the info about malpractice. This case was a on patentlwyr03/26/19
1. Thanks for the info about malpractice. This case was a on patentlwyr03/26/19
You'd likely be denied if you tried to obtain malpractice co jd4hire03/27/19
OP - not that you don't have enough stress right now but sin bingojackson03/27/19
A lot of big company trademark work is just blowing smoke. I midlaw03/27/19
del 2ski03/27/19
OP, for what it's worth, I think you have to stop admitting justdoingok03/28/19
Relax! Trademarks get opposed all the time. It's perfectly patenttrollnj03/29/19
This 100%. Great advice lolwutjobs03/29/19
I absolutely agree with this. You did nothing wrong and ins nowhereman03/29/19
180. midlaw03/29/19
If client blew his life savings on this idea, where is he go 2ski03/29/19
patenttrollnj knocked it out of the park, but you bring up t thirdtierlaw03/29/19

patentlwyr (Mar 26, 2019 - 4:18 pm)

Hi All,

Any advice appreciated! So I used to be a patent attorney before quitting and embracing the stay at home mom life. Anyway, I was approached by a family friend who wanted to file a trademark application and was aware of my background in IP. I was hesitant but was pushed my my mom to "help out." I charged him a nominal fee of $199 mainly to avoid the devaluation of free work.

I went over the whole process with him in person aka the search report, opinion letter, filings, office actions etc. He vehemently declined a search and opinion letter because this was his 5th business and for the previous 4, he had spent thousands on searches and opinion letters for trademarks and all 4 businesses had failed wasting his money. In my experience, mom n pop outfits are always on a budget and choose to forgo the extras, so it seemed normal.

Despite the refusal to do a search, I did a basic work search on TESS for the specific mark and a few variations. All good. I filed the application and 3 months later got a notice of publication aka even the PTO didn't have any issued. The day before publication, the mark was opposed by a VERY large company who owned a variation of said mark. They emailed me asking me to cease sales of the product. My client now decides to tell me that he sank his entire life savings into this product and it cannot be re-packaged.

Client is also emailing me that I messed up by my not running a full search. Apparently he talked to another lawyer who told him that I should have never filed this application. I am fully aware that I messed up by taking on this client who refused the basic leg work. I am super stressed because of the following:

1. I do not have malpractice insurance.
2. I do not have a PLLC or PC.
3. I did not CYA by making him sign a document verifying that he declined a search report.

How bad is it looking for me? BTW I refunded his money and have not had another legal clients.

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blawprof (Mar 26, 2019 - 4:53 pm)

Offer to settle for $1,000. Throw the former client a bone and make it go away. Forming as a PC doesn't protect you from professional negligence in most states.

Have you analyzed the other likelihood of confusion factors? Similarity of the marks is only one factor albeit an important one. There are lots of marks that have the same name but not confusingly similar if the marks are in different lines of business. Consider looking at the channels of trade, evidence of actual consumer confusion, and the other DuPont factors.

I once did a pro bono immigration case and ended up with an ethics complaint and investigation. It was a nightmare.

Note: Avoid using "said" before a noun.

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patentlwyr (Mar 26, 2019 - 9:25 pm)

Thanks blawprof! I was considering a settlement offer if he signs a release. However, he claims to have invested over $50k of his savings into developing the product. It blows my mind that people who are spending this kind of cash cheap out on legal work. He paid his logo designer $2k!

I did analyze the other factors and think he has a decent chance of fighting it, but the client is sh*$ scared of this big company and does not want to take on a battle.

I finally understand why so many lawyers refuse to take on clients who haggle.

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isthisit (Mar 26, 2019 - 5:16 pm)

Was there any written communication (email) regarding the search?

When you refunded his money did you include any kind of release? I think the answer to that one is No but I figured I'd ask.

What did your retainer say? No guarantee on outcomes, I assume.

I don't do trademark so I'm out of my depth here. However, how standard is this full search? If it's legally required than you're probably SOL. If it's just good practice but not required than your half search sounds good enough to me. Client declined the more formal search. Write and sign an affidavit to that effect and put it in the file. I think you could beat the ethics complaint.

I practice Immigration so it's the wild west over here. Beating ethics/Lozada complaints is half the game.

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dingbat (Mar 26, 2019 - 9:22 pm)

When you refunded his money did you include any kind of release? I think the answer to that one is No but I figured I'd ask.

Depending on circumstances, such a release may be more problematic for the bar than the actual mistake.

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esquirewalletsmatter (Mar 26, 2019 - 9:37 pm)

True symbols of virtue, the BAR. If the guy doesn’t want to pay for full search and limits the scope then he accordingly signs a release. Carve out intent or gross negligence as your heart desires. That’s reasonable and fair. It’s also besides the point. Need to develop some sort of evidence trail here. If you have written communications explaining the scenario then I think some things are defensible. I’d cut and run at least cost, if able.

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dingbat (Mar 26, 2019 - 11:04 pm)

if you offer a refund on condition of not getting a bar complaint or malpractice suit, that's a violation of the rules of professional conduct

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esquirewalletsmatter (Mar 27, 2019 - 10:55 am)

It’s not a refund. It’s a release. I did this service. You excluded X and Y. So on so forth.

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patentlwyr (Mar 26, 2019 - 9:32 pm)

No email communication of any sort re: the search. Email communication was very sparse in general because this guy was an older immigrant who called me or asked to meet in person when I visited my parents (parents and client are neighbors).

No release, but I am considering it if I offer to settle.

Yes, retainer has very clear disclaimer about outcomes and client initialed by it.

The full search is not a legal standard. In fact, my friend is a solo who does "no search" trademarks for $500, but he obviously has a solid waiver.

I will prepare the affidavit, thanks for the tips! I am a child of immigrants, I have witnessed how crazy that field is!

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pauperesq (Mar 26, 2019 - 5:33 pm)

Do you have notes indicating he declined the search report? It's not as good as a CYA email but it's better than nothing.

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patentlwyr (Mar 26, 2019 - 9:33 pm)

Yes, I pulled up my notes indicating No to Full search and also No to opinion letter.

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dingbat (Mar 26, 2019 - 9:21 pm)

1. I do not have malpractice insurance.
2. I do not have a PLLC or PC.
3. I did not CYA by making him sign a document verifying that he declined a search report.

1. see if it's possible to get malpractice insurance now. Plenty of policies are claims-made, so if the client hasn't made a claim yet you may be covered. Be very careful answering any questions about knowledge of existing or pending claims. Depending on circumstances, you may just be able to sneak in

2. won't make a difference for malpractice

3. too late to fix now, but do you have any evidence whatsoever? email trail? contemporaneous notes? ANYTHING?

4. If need be, offer to settle

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patentlwyr (Mar 26, 2019 - 9:35 pm)

1. Thanks for the info about malpractice. This case was a one off favor, I have no desire to practice law or take on clients for the next couple years.

3. I have notes, but no emails. The client is an older immigrant who exclusively called or met in person.

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patentlwyr (Mar 26, 2019 - 9:35 pm)

1. Thanks for the info about malpractice. This case was a one off favor, I have no desire to practice law or take on clients for the next couple years.

3. I have notes, but no emails. The client is an older immigrant who exclusively called or met in person.

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jd4hire (Mar 27, 2019 - 10:30 am)

You'd likely be denied if you tried to obtain malpractice coverage now. All applications ask if you have any knowledge regarding any potential claims. If you answer truthfully, they won't underwrite. If you lie and they find out, they'll deny coverage based on an exclusion.

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bingojackson (Mar 27, 2019 - 10:21 am)

OP - not that you don't have enough stress right now but since no one else has asked, have you kept up your license? Last thing you need is a claim lodged to the bar for unlicensed practice from all of this.

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midlaw (Mar 27, 2019 - 11:22 am)

A lot of big company trademark work is just blowing smoke. If you have a reasonably good argument on the likelihood of confusion factors, you really might be able to negotiate a settlement along the lines of “go ahead and sell what you have, just redesign it after” or “go ahead and use the design, but you can’t use it on any other product.” Companies hate trademark litigation with a passion so almost all the action is either at the level of letters and agreements or TTAB.

Did they file a TTAB opposition?

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2ski (Mar 27, 2019 - 7:32 pm)

del

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justdoingok (Mar 28, 2019 - 11:05 pm)

OP, for what it's worth, I think you have to stop admitting that you did anything wrong, because you didn't. You asked the client if he wanted a search and he declined. He had searches done in the past, and he knew full well the risks of not running a search. Just because you didn't get it in writing doesn't mean that you should be responsible for a decision he made. You didn't tell him to invest money into manufacturing the product and (hopefully) you didn't tell your client that the TM was free of risk. Personally, I think pursuing a malpractice claim here is even more risky for him than defending the TM, and you have the PTO's decision to publish as evidence that even an examining attorney didn't find grounds for refusal.

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patenttrollnj (Mar 29, 2019 - 6:37 am)

Relax! Trademarks get opposed all the time. It's perfectly routine to get an opposition, and it's perfectly routine to respond to them.

Likewise, it's very typical for a client to refuse a search. Again, the client is the one who decides what action should be taken. You did your due diligence by advising them to have a search done.

Normally, if the client refuses a search, I'd file an intent to use Trademark application AND advise the client not to use the mark until after it gets approved. However, in this case, it seems the client was already packaging and/or using the mark, EVEN BEFORE the application was filed. Thus, any loss is 100% on him.

Not sure who this lawyer was your client consulted, or what information the client gave them. Regardless, they are WRONG to say you should have never filed the application. Applications do get rejected, even after searches are conducted. Thus, what precisely is this lawyer's logic? NEVER file an application unless it will get allowed? Umm......

it seems the client is now trying to find some way to get money from you. He took a loss, and now he's trying to recoup it any way possible. Sadly, your client is a POS.

My advice is to simply tell your client to go pound sand! Do not get intimidated by them. Also, you should NOT have refunded the money.

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lolwutjobs (Mar 29, 2019 - 9:57 am)

This 100%. Great advice

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nowhereman (Mar 29, 2019 - 11:04 am)

I absolutely agree with this. You did nothing wrong and instead of caving, stand your ground and defend yourself. It sounds like your client was a bozo who did non-replaceable packaging before he got trademark clearance. And, you also offered the option of a full search and he declined.

Also, as a word of advice, stop representation right now unless and until he agrees to pay you your FULL fees - and a healthy retainer. Or, better yet, stop representation and refer this to other counsel. This is a black hole.

I learned the valuable lesson several years ago about doing legal work for friends at a deep discount. Its a ticket to a disaster, as once you start representation on a matter for a friend, its hard to cut it off once sh*t starts to hit the fan and feeling can get hurt. You can also never do your best - like threaten legal action - knowing you are doing work on the cheap.

So, my advice, explain that this matter is beyond the scope of the initial agreement, and they you recommend referral to qualified counsel. You can also find a suitable attorney to refer this to so you are not leaving them out to dry. At the end of the day, it is the client's decision and hopefully once they work with another attorney, they can see all the hard work you did upfront.

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midlaw (Mar 29, 2019 - 8:55 pm)

180.

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2ski (Mar 29, 2019 - 9:53 am)

If client blew his life savings on this idea, where is he going to get $ to fight you? He has to find a sucker to take it on contingent(doubtful), or pay atty fees. You can fight without the cash bleed.

Also, did I read this right: He has failed 4 businesses before?? He knows the process and for $200 wants to lay this in your lap. nope. Doesn't even sound like he can run a business.

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thirdtierlaw (Mar 29, 2019 - 6:52 pm)

patenttrollnj knocked it out of the park, but you bring up the other important consideration, how is he going to sue you?

Who would take this malpractice claim on contingency? Damages seem fairly low and the claim isn't strong, he told you not to do a search. Further if he does retain someone, where is he going to get money for an expert to come in and say you screwed up?

It's the backup "malpractice insurance" most family law attorneys have, the client won't be able to find an attorney who will take the case and litigating the malpractice will cost more than they'll hope to recover.

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