Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.

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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 Defendant
Hallmark Industries, Inc.
Correspondence ERIK M PELTON
Address ERIK M PELTON & ASSOCIATES PLLC
111 PARK PLACE
FALLS CHURCH, VA 22046
UNITED STATES
uspto@tm4smallbiz.com
Submission Other Motions/Papers
Filer's Name Erik M. Pelton
Filer's e-mail uspto@tm4smallbiz.com
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 )
I N TH E UN I TED STATES PATEN T AN D TRAD EM ARK OFFI CE
BEFORE TH E TRAD EM ARK TRI AL AN D APPEAL BOARD

Hallm ark Licensing, LLC Consolidat ed Opposit ion No.

Opposer, 9 1 2 1 1 3 9 2 ( PAREN T)

v.

91215884
Hallm ark I ndust r ies, I nc.,

Applicant .

REQUEST FOR RECON SI D ERATI ON
& M OTI ON FOR RELI EF FROM JUD GM EN T

COMES NOW, Applicant , by counsel, and subm it s t his Request for

Reconsiderat ion & Mot ion for Relief From Judgm ent . The j udgm ent at issue is t he

Board’s May 3, 2017, grant ing of Pet it ioner’s Mot ion for Sum m ary Judgm ent . 50

TTABVUE. The Request for Reconsiderat ion is m ade pursuant t o 37 CFR § 2.129( c)

and TBMP § 543. The Mot ion for Relief from Judgm ent is m ade pursuant t o Fed. R.

Civ. Pr . 60( b) , 37 CFR § 2.116( a) and TBMP § 544 . 1

To begin, Applicant acknowledges t hat grant ing such m ot ions are rare, and

t hat t hey are grant ed only when t he circum st ances at hand are except ional.

Applicant files t his m ot ion because t he circum st ances here are indeed except ional,

and t he int erest s of j ust ice j ust ify a re- br iefing of t he Mot ion for Sum m ary

1 “ Fed. R. Civ. P. 60( b) , as m ade applicable by 37 CFR § 2.116( a) , applies t o all
final j udgm ent s issued by t he Board, including default and consent j udgm ent s,
grant s of sum m ary j udgm ent s, and j udgm ent s ent ered aft er t rial on t he m erit s. As
a pract ical m at t er, m ot ions t o vacat e or set aside a final Board j udgm ent are
usually based upon t he reasons set fort h in subsect ions ( 1) , ( 2) and/ or ( 6) of Fed.
R. Civ. P. 60( b) .” TBMP § 544.
Judgm ent filed by Opposer on Oct ober 16, 2016, and grant ed by t he Board on May

3, 2017. 42 TTABVUE and 50 TTABVUE.

The except ional circum st ances here relat e prim ar ily t o t he pr ior counsel of

Applicant , Mat t hew Swyers, who represent ed Applicant at t he t im e of t he filing of a

response t o t he Mot ion for Sum m ary Judgm ent and since March of 2015. See

Not ice of Appearance of Counsel. 21 TTABVUE.

The circum st ances are except ional because ( A) Applicant ’s pr ior counsel

Mat t hew Swyers was under invest igat ion by t he USPTO’s Office of Enrollm ent and

Discipline ( “ OED” ) and, j ust days aft er filing t he Response t o t he Mot ion for

Sum m ary Judgm ent , signed an Affidavit for Consent Exclusion pursuant t o 37

C.F.R. §11.27 barr ing him from pract icing before t he USPTO for at least five ( 5)

years; and ( B) Mr. Swyers om it t ed a great deal of relevant infor m at ion in

responding t o t he Mot ion for Sum m ar y Judgm ent . See Final Order issued by t he

Direct or of t he U.S. Pat ent and Tradem ark Office, Proceeding No. D2016 - 20,

at t ached heret o as Exhibit A. 2 The Not ice of Exclusion on Consent was also

published in t he March 28, 2017 Official Gazet t e. See Exhibit B.

Applicant ’s pr ior counsel, j ust t wo weeks aft er filing t he response t o t he

Mot ion for Sum m ary Judgm ent in t his m at t er on Novem ber 30, 2016, signed an

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

oversight s, rule violat ions and et hical violat ions in represent ing client s while

pract icing before t he USPTO. The det ails of t hese allegat ions are cont ained in

Exhibit A and discussed m or e t horoughly below .

2
The Board could also t ake j udicial not ice of t he docum ent s from t he proceedings
against Mr. Swyers pursuant t o TBMP § 704.12 since t hey are ( a) USPTO or court
records, ( b) public, and ( c) were not available t o Applicant at t he t im e of it s last
filing w it h t he Board.

91211392: Request for Reconsiderat ion & Mot ion for Relief from Judgm ent p. 2
I n Decem ber 2016, at t he t im e of t he filing of Mr. Swyers’ response t o t he

MSJ and his m ot ion t o wit hdraw in t his proceeding, it appears t hat Mr. Swyers was

counsel in dozens of TTAB proceedings. 3

I n Mr. Swyers’ filing of t he m ot ion for Wit hdrawal of Counsel, 46 TTABUVE,

on Decem ber 16, 2016, he m ade no reference t o t he disciplinary act ion, t he

consent exclusion or any ot her difficult ies. Rat her, counsel st at ed:

Counsel is no longer receiving direct ives from Applicant as t o lit igat ion
decisions, st rat egy, and t he like required t o cont inue it s represent at ion in t his
m at t er. Despit e num erous at t em pt s t o com m unicat e w it h t he Applicant ,
counsel cert ifies t hat Applicant has denied counsel for t he Applicant t he
cont inued aut hor it y t o proceed in his represent at ive capacit y in t his m at t er.
As such, Counsel for Applicant ’s abilit y t o r epresent Applicant has been
com prom ised t o t he ext ent t hat he can no longer effect ively repr esent
Applicant .

As a result of t he foregoing circum st ances which are ext rem ely except ion al

and which prej udiced Applicant ’s abilit y t o r eceive a fair hear ing on t he m erit s in

t his m at t er, Applicant hereby request s t hat t he Board grant t he r equest for

reconsiderat ion or relief from j udgm ent and allow Applicant t o re- brief t he m ot ion

for sum m ary j udgm ent .

LEGAL STAN D ARD

Mot ion for Relief from Judgm ent

Federal Rule of Civil Procedure 60( b) st at es t hat :

3
Mr. Sw yers m ay have been counsel for dozens upon dozens of applicant s in int er part es or
ex part e m at t ers before t he TTAB in Nov em ber and Decem ber of 2016 when t he k ey event s,
nam ely t he m ot ion for sum m ary j udgm ent and t he conclusion of t he OED invest igat ion,
were t aking place. How ev er, searching such cases in TTABVUE is not possible because if Mr.
Swyers filed t o wit hdraw he w ould no longer be list ed as counsel and t here is no m echanism
t o search for cases where he used t o be counsel.

91211392: Request for Reconsiderat ion & Mot ion for Relief from Judgm ent p. 3
On m ot ion a n d j u st t e r m s, t h e cour t m ay r e lie ve a pa r t y or it s le ga l
r e pr ese nt a t ive fr om a fin a l j u dgm e n t , or de r , or pr oce e din g for t h e
follow in g r e a son s:
( 1) m ist ake, inadvert ence, surprise, or excusable neglect ;
( 2) newly discovered evidence t hat , w it h reasonable diligence, could not have
been discovered in t im e t o m ove for a new t r ial under Rule 59( b) ;
( 3) fraud ( whet her previously called int r insic or ext rinsic) , m isrepresent at ion,
or m isconduct by an opposing part y;
( 4) t he j udgm ent is void;
( 5) t he j udgm ent has been sat isfied, released, or discharged; it is based on
an earlier j udgm ent t hat has been reversed or vacat ed; or applying it
prospect ively is no longer equit able; or
( 6 ) a n y ot h er r e a son t h a t j u st ifie s r e lief .

Fed. R. Civ. Proc. 60( b) ( em phasis added) .

Mot ion for Reconsiderat ion of Final Decision
The st andard for grant ed a m ot ion for reconsiderat ion is quit e open.

“ Generally, t he prem ise underlying a request for rehearing, reconsiderat ion, or

m odificat ion under 37 CFR § 2.129( c) is t hat , based on t he evidence of record and

t he prevailing aut hor it ies, t he Board erred in reaching t he decision it issued. The

request m ay not be used t o int roduce addit ional evidence, nor should it be devot ed

sim ply t o a reargum ent of t he point s present ed in t he request ing part y’s br ief on

t he case. Rat her, t he request norm ally should be lim it ed t o a dem onst rat ion t hat ,

based on t he evidence properly of record and t he applicable law, t he Board’s ruling

is in error and requires appropriat e change. ” TBMP § 543.

Not hing in t he TBMP precludes t he Board from considering ot her evidence or

from grant ing a m ot ion for reconsiderat ion in ext raordinary circum st ances when t he

int erest s of j ust ice require it .

PROCEDURAL H I STORY

This Mot ion com es before t he Board aft er t he grant ing of Opposer’s Mot ion

for Sum m ary Judgm ent for t he consolidat ed proceedings Nos. 91211392 ( parent )

91211392: Request for Reconsiderat ion & Mot ion for Relief from Judgm ent p. 4
and 91215884 on May 3, 2017. 50 TTABVUE. The procedural hist ory of t his m at t er

prior t o t he j udgm ent is r at her lengt hy and com plicat ed.

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

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

TTABVUE. On February 18, 2014, t he Part ies st ipulat ed t o suspend t he proceedings

pending disposit ion of a civil act ion in t he U.S. Dist r ict Court for t he West ern

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

March 5, 2014, t he Board grant ed Applicant ’s counsel’s Mot ion t o Wit hdraw, 12

TTABVUE. Applicant subsequent ly appoint ed Mat t hew H. Swyers of The Tradem ark

Com pany, PLLC as counsel on May 23, 2015. 13 TTABVUE.

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

No. 91215884, 1 TTABVUE, and t he proceedings were init iat ed by t he Board t he

sam e day. No. 91215884, 3 TTABVUE. Applicant served t he Answer t o No.

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

TTABVUE.

On Sept em ber 24, 2014, Opposer not ified t he Board t hat t he civil act ion had

been dism issed, and m oved t o consolidat e t his proceeding w it h 91215884. 17

TTABVUE. Follow ing a var iet y of ot her procedural filings including re- appoint m ent of

Mr. Swyers as counsel and t he grant ing of Opposer’s m ot ion t o com pel, Opposer

m oved for sum m ary j udgm ent on Oct ober 26, 2016. 42 TTABVUE. Applicant served

a response opposing t he m ot ion on Novem ber 30, 2016. 44 TTABVUE. Opposer

served it s Reply on Decem ber 15, 2016. 45 TTABVUE. The next day, Decem ber 16,

2016, Mr. Swyers m oved t o wit hdraw fr om t he proceedings. 46 TTABVUE.

91211392: Request for Reconsiderat ion & Mot ion for Relief from Judgm ent p. 5
On Decem ber 20, 2016, Mr. Swyers subm it t ed an Affidavit For Consent

Exclusion t o t he USPTO for t he purpose of being excluded on consent pursuant t o

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

t han five years by t he Direct or on January 26, 2017. I n re Mat t hew H. Swyers, No.

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

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

m ot ion for sum m ar y j udgm ent was grant ed on May 3, 2017.

D e t a ils of M r . Sw ye r s’ Ex clu sion on Con sen t

I n t he Decem ber 20, 2016, t welve- page Affidavit For Consent Exclusion 4 , Mr.

Swyers acknowledged t he violat ion of m any sect ions of t he code of conduct . See

Exhibit A. These violat ions include direct ing or allow ing Mr. Swyers em ployees t o

sign or forge his elect ronic signat ure; failing t o review docum ent s before t hey were

filed w it h t he Office; violat ing t he USPTO Code of Professional Responsibilit y; and

engaging in conduct involving dishonest y, fraud, deceit , or m isrepresent at ion.

As st at ed in t he Direct or’s Final Order:

Mr. Swyers’ affidavit acknowledged t hat t he disciplinar y com plaint filed
against him alleged t hat his conduct violat ed t he follow ing provisions
of t he USPTO Code of Professional Responsibilit y, for conduct pr ior t o
May 3, 2013: 37 C.F.R. §§ 10.23( a) ( engaging in disreput able or gross
m isconduct ) ; 10.23( b) ( 4) ( engaging in conduct involving dishonest y,
fraud, deceit , or m isr epresent at ion) ; 10.23( b) ( 5) ( engaging in conduct
prej udicial t o t he adm inist rat ion of j ust ice) ; 10.23( a) and ( b) via
10.23( c) ( 2) ( ii) ( know ingly giving false or m isleading inform at ion or
knowingly part icipat ing in a m at er ial way in giving false or m isleading
inform at ion t o t he USPTO or any em ployee of t he USPTO) ; 10.23( a)
and ( b) via 10.23( c) ( 15) ( violat ing t he cert ificat ions m ade t o t he
USPTO under 37 C.F.R. § 11.18) ; 10.31( a) ( deceiv ing or m isleading
prospect ive applicant s or ot her persons having im m ediat e or
prospect ive business before t he Office by advert ising w it h respect t o
prospect ive business before t he Office) ; 10.47( a) and ( c) ( aiding a
4
The Affidavit executed by Mr. Swyers is not included in the Director s Final Order, but the details of it are
contained in the Order.

91211392: Request for Reconsiderat ion & Mot ion for Relief from Judgm ent p. 6
non- pract it ioner in t he unaut horized pract ice of law before t he Office) ;
10.48 ( sharing legal fees wit h a non- pract it ioner) ; 10.77( b) ( handling
a legal m at t er w it hout preparat ion adequat e under t he circum st ances) ;
10.77( c) ( neglect ing client m at t ers) ; 10.84( a) ( 1) ( int ent ionally failing
t o seek t he lawful obj ect ives of a client ) ; 10.84( a) ( 3) ( int ent ionally
prej udicing or dam aging t he client dur ing t he course of a professional
relat ionship) ; 10.89( c) ( 6) ( int ent ionally or habit ually violat ing any
provision of t he USPTO Code of Professional Responsibilit y while
appearing in a professional capacit y before a t r ibunal) ; 10.112( a)
( failing t o deposit legal fees paid in advance int o a separat e client t rust
account ) ; and 10.23( b) ( 6) ( engaging in ot her conduct t hat adversely
reflect s on t he pract it ioner’s fit ness t o pract ice before t he Office) .”

Furt herm ore, in a filing m ade last year by t he Assist ant U.S. At t orney on
behalf of t he USPTO in a case st em m ing fr om t he OED invest igat ion int o Mr.
Swyers’ pract ice before t he USPTO, t he governm ent not ed t hat :
Aft er an invest igat ion int o his conduct as a t radem ark pract it ioner , and
a finding of probable cause t o believe he had engaged in subst ant ial
m isconduct by an independent com m it t ee of USPTO officials, t he OED
Direct or has filed a lengt hy com plaint against plaint iff t hat present s
eight separat e count s of violat ions of USPTO’s professional
responsibilit y r ules.

See Mem orandum of Law in Support of Unit ed St at es Pat ent & Tradem ark Office’s

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

at t ached at Exhibit C wit h exhibit s t heret o om it t ed.

Ove r sigh t s by M r . Sw ye r s in t h is Pr ocee din g

As not ed above, t he ext raordinary circum st ances relat ed t o Applicant ’s prior

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

did not afford Applicant t he opport unit y t o provide a full, com plet e, and fair

response t o Opposer’s Mot ion for Sum m ary Judgm ent . Wit hout subm it t ing

addit ional evidence here given t he nat ure of t his m ot ion and t he relief request ed 5 ,

5
Alt hough, upon request from t he Board, Applicant would be glad t o subm it such
evidence as part of a supplem ent al br ief.

91211392: Request for Reconsiderat ion & Mot ion for Relief from Judgm ent p. 7
Applicant not es t hat t he response t o t he m ot ion was lacking in t he follow ing

m anners:

• Mr. Swyers’ response t o t he MSJ did not reference evidence t hat could

cont radict t he ownership assert ions by Opposer.

• Mr. Swyers’ response t o t he MSJ did not reference Opposer’s prior - t o

opposit ion, filed in 2005, t o t he t hen pending applicat ions of Applicant ’s

predecessor - in- int erest , Diast ar , I nc., for HALLMARK RI NGS and HALLMARK

DI AMONDS. ht t p: / / t t abvue.uspt o.gov/ t t abvue/ v?pno= 91167232&pt y= OPP

o The prior opposit ion was dism issed against Hallm ark w it h prej udice on

Novem ber 24, 2010. See 91167232 33 TTABVUE. Hallm ar k now

assert s ownership of t hese very sam e records which it previously lost

–wit h prej udice - t he opport unit y t o challenge.

o Applicant ’s init ial counsel in t his proceeding raised t his issue in t he

Affir m at ive Defenses filed in t he or iginal Answer of August 7, 2013. 4

TTABVUE.

• Mr. Swyers’ response t o t he MSJ did not challenge Opposer’s priorit y.

• Mr. Swyers’ response t o t he MSJ did not challenge Opposer’s st anding.

• Mr. Swyers’ response t o t he MSJ did not reference t he possible abandonm ent

of any r ight s assert ed by Opposer in t he HALLMARK RI NGS and HALLMARK

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

use of said m ar ks t hr oughout t he period during which Opposer has allegedly

owned t he right s t o t hose m arks and t he corresponding regist rat ions t hereof.

• Mr. Swyers failed t o disclose t o Applicant t hat he was being invest igat ed by

OED. See Exhibit s A, B, and C.

91211392: Request for Reconsiderat ion & Mot ion for Relief from Judgm ent p. 8
• Mr. Swyers failed t o disclose t o Applicant t hat he was being barred from

pract icing before t he USPTO. Mr. Swyers t old Applicant via em ail on Oct ober

128, 2017: “ Please accept t his correspondence as not ice t hat aft er a

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

effect ive lat er t his m ont h. I t has been m y dist inct honor and pr ivilege t o have

represent ed t ens of t housands of wonderful client s over t he year s and

especially you.” 6

• Mr. Swyers failed t o deliver copies of all proceeding docum ent s t o Applicant ,

despit e t he st at em ent m ade by counsel in t he m ot ion t o w it hdraw.

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

Pelt on & Associat es, PLLC, Mr. Pelt on had t o cont act Mr. Swyers num erous

t im es over several weeks t o finally receive copies of t he files in t his

proceeding. See March 7, 2017 let t er from Pelt on t o Swyers, At t ached as

Exhibit D. Mr. Pelt on cannot be sure t hat he received all of t he files, including

discovery docum ent s produced by t he part ies, as t he docum ent s event ually

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

m anner.

Ar gu m en t
Ext rem e rem edies are appropr iat e only w it h t he circum st ances ar e indeed

ext rem e. The Board rules and Federal Rules of Civil Procedure feat ure m echanism s

for such rem edies when t he circum st ances – and t he int erest s of j ust ice – m er it

t hem . I n handling of dozens of m at t ers before t he Board over m ore t han fift een

6
Applicant will make this email available to the Board under seal if requested to guard against any waiver of
privilege or other issues.

91211392: Request for Reconsiderat ion & Mot ion for Relief from Judgm ent p. 9
( 15) years, t he undersigned firm has cert ainly never seen circum st ances m ore

except ional t han t he present case. Here, Applicant request s t he Board t o grant it

relief from t he sum m ary j udgm ent ordered a few weeks ago so t hat Applicant m ay

properly br ief t he m ot ion. The circum st ances are aberrant because Applicant ’s pr ior

counsel acknowledged, w it hin weeks of his last ‘subst ant ive’ fling in t his m at t er t o a

lit any of professional and et hical short com ings. These short com ings direct ly

im pact ed Applicant ’s abilit y t o seek a fair and j ust result in t his m at t er on t he act ual

m erit s aft er review of t he appropr iat e argum ent s.

As a result of t he t ruly except ional circum st ances det ailed above,

ext raordinar y relief is appropriat e. The relief request ed, nam ely vacat ing t he ent ry

of sum m ary j udgm ent and allow ing t he par t ies t o re- br ief t he Mot ion for Sum m ary

Jj udgm ent , would be in t he int erest s of j ust ice. Following t he event s and

circum st ances surrounding Applicant ’s pr ior counsel in Decem ber 2016 , t he current

decision of t he Board ent ering sum m ar y j udgm ent on May 3, 2017 , does not serve

t he int erest s of j ust ice.

The relief request ed by Applicant here would not significant ly prej udice

Opposer as Opposer would st ill be perm it t ed t o m ak e it s case for sum m ary

j udgm ent , and even if sum m ary j udgm ent was event ually denied Opposer would

st ill be perm it t ed t o pursue t he com plet ion of t he opposit ion process seeking t o

block regist rat ion of Applicant ’s m arks.

Rule 60( b) ( 6) grant s federal court s aut hor it y t o relieve a part y fr om a final

j udgm ent “ upon such t erm s as are j ust .” Lilj eberg v. Healt h Servs. Acquisit ion

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

m ay relieve a part y fr om a final j udgm ent for ( 6) any ot her reason t hat j ust ifies

91211392: Request for Reconsiderat ion & Mot ion for Relief from Judgm ent p. 10
relief.” ) . A m ovant is ent it led t o relief under Rule 60( b) ( 6) —t he “ cat ch- all”

provision—if “ such act ion is appropr iat e t o accom plish j ust ice” and only in

“ ext raordinar y circum st ances.” I d. at 863–64 ( quot ing Klapprot t v. Unit ed St at es,

335 U.S. 601, 614–15 ( 1949) ( int ernal quot at ion m ar ks om it t ed) ) .

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

m at t ers where a default j udgm ent was ent ered, or wher e a decision was eligible for

an appeal but none w as filed. Since t his case does not involve a m ovant who

deliberat ely st opped pursuing it s rem edies, t here is scant precedent available.

“ To j ust ify relief under subsect ion ( 6) , a part y m ust show ‘ext raordinary

circum st ances’ suggest ing t hat t he part y is fault less in t he delay.” ) ; Lilj eberg v.

Healt h Servs. Acquisit ion Corp. at 863- 64 ( “ [ W] e have previously not ed t hat [ Rule

60( b) ( 6) ] provides court s wit h aut hor it y adequat e t o enable t hem t o vacat e

j udgm ent s whenever such act ion is appropr iat e t o accom plish j ust ice, while also

caut ioning t hat it should only be applied in ‘ext raordinary circum st ances.’” ( cit at ion

om it t ed) .

The Nint h Circuit has found t hat gross negligence by a part y’s counsel m ay

const it ut e ext raordinary circum st ances under Rule 60( b) ( 6) . Com m unit y Dent al

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

grossly negligent , as counsel was here, t he j udicial syst em loses credibilit y as well

as t he appearance of fairness, if t he result is t hat an innocent par t y is forced t o

suffer drast ic consequences.” ) Several ot her court s have reached sim ilar

conclusions; see, e.g. L.P. St euart , I nc. v. Mat t hews, 329 F.2d 234, 235 ( D.C. Cir.

1964) ( st at ing t hat R. 60( b) ( 6) " is broad enough t o perm it relief when as in t his

91211392: Request for Reconsiderat ion & Mot ion for Relief from Judgm ent p. 11
case personal problem s of counsel cause him grossly t o neglect a diligent client ’s

case and m islead t he client " ) .

The lit any of professional and et hical short com ings of Applicant ’s prior

counsel explain t he ot herwise inexplicable inadequacy of subst ance cont ained in t he

response filed t o Opposer’s Mot ion for Sum m ary Judgm ent . Despit e Applicant ’s

previous cont ent ions regarding ownership of t he HALLMARK t radem ark and t he

validit y of t he purport ed assignm ent from a credit or t o Opposer, Mr. Swyers failed

t o provide any evidence or t o disput e any of t he fact s alleged in t he Mot ion for

Sum m ary Judgm ent . I nst ead, he offered m inim al, cut - and- past e argum ent s about

t he sim ilar it y of t he m arks, t he channels of t rade, and t he classes of consum ers.

44 TTABVUE. By failing t o even address perhaps t he m ost salient issue in t his

m at t er, t he proper ownership of t he HALLMARK t radem arks, Mr. Swyers effect ively

abandoned his client . The response t o m ot ion for sum m ary j udgm ent did not

provide Applicant a full or fair opport unit y t o defend it s t radem ar k. As recognized

by t he Nint h Circuit , m onet ary dam ages recovered in a m alpract ice lawsuit do not

provide adequat e rem edy t o a lit igant who loses it s t radem ark r ight s. Com m unit y

Dent al Servs., 282 F.3d at 1171. “ Thus, relief under Rule 60( b) ( 6) m ay oft en

const it ut e t he only m echanism for affording a client act ual and full relief from his

counsel’s gross negligence — t hat is, t he opport unit y t o present his case on t he

m erit s.” I d. at 1172.

I f t he Sum m ary Judgm ent order by t he Board st ands, Applicant m ay be

affect ed well beyond it s right s t o achieve t he benefit s of regist rat ion of t he m arks at

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

91211392: Request for Reconsiderat ion & Mot ion for Relief from Judgm ent p. 12
( 2015) ( holding t hat a finding by t he Boar d m ay be given preclusive effect where

issue preclusion would ot herwise apply) .

The adm issions by Applicant ’s pr ior counsel in t he Affidavit for Consent

Exclusion signed a m ere t hree weeks aft er t he response t o t he m ot ion for sum m ar y

j udgm ent det ail Mr. Swyers’ m alfeasance, poor j udgm ent , poor counsel, lack of

oversight , and et hical wrongdoings. To m ake m at t ers worse, prior counsel failed t o

properly and fully inform Applicant why he was “ ret ir ing” when he t old Applicant via

em ail, j ust days befor e t he Mot ion for Sum m ary Judgm ent was filed, t hat he could

no longer represent Applicant .

While a request for reconsiderat ion norm ally should be lim it ed t o a

dem onst rat ion t hat , based on t he evidence properly of record and t he applicable

law , t he Board’s ruling is in error and requires appropriat e change, t here is not hing

in t he st at ut e or t he r ules precluding t he gr ant ing of reconsiderat ion for ot her

reasons. See, e.g., St eiger Tract or I nc. v. St einer Corp. , 221 USPQ 165 ( TTAB

1984) , reh’g grant ed, 3 USPQ2d 1708 ( TTAB 1984) . Again, t he circum st ances here

are not norm al; t hey are ext rem ely except ional. Applicant is not seeking t o ent er

new evidence as a part of t he current m ot ion, or t o argue t he Board m isint erpret ed

t he law or erred in it s opinion, rat her Applicant asks t he Board t o t ake j udicial

not ice of t he Direct or’s order of January 26, 2017, and t he Affidavit on Consent

Exclusion – bot h of w hich were ent ered during t he pendency of t he m ot ion for

sum m ary j udgm ent – and in t he int erest s of j ust ice and equit y vacat e t he j udgm ent

and allow Applicant t he opport unit y t o file a new response t o t he Mot ion for

Sum m ary Judgm ent .

91211392: Request for Reconsiderat ion & Mot ion for Relief from Judgm ent p. 13
Applicant has not delayed in br inging t his m ot ion. Grant ing Applicant ’s

m ot ion and allow ing r e- briefing of t he Mot ion for Sum m ary Judgm ent will not

prej udice Opposer as it s m ot ion, and if applicable t he ent ire case, would st ill be

det erm ined on t he m erit s. Applicant should not be penalized for t he ext rem e

circum st ances regarding it s pr ior counsel, Mr. Swyers, given t hat Applicant was not

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

t im e. 7

WHEREFORE, Applicant m oves t he Board t o grant t his m ot ion and t o allow

Applicant 60 days t o file a response t o t he m ot ion for sum m ar y filed on Oct ober 26,

2016.

Dat ed t his 5t h day of June, 2017.

Erik M. Pelt on
Erik M. Pelt on & Associat es, PLLC
At t orney for Applicant

Ex h ibit s

Exhibit A: Final Order issued by t he Direct or of t he U.S. Pat ent and Tradem ark
Office, Proceeding No. D2016- 20
Exhibit B: Not ice of Exclusion on Consent published in t he March 28, 2017 Official
Gazet t e
Exhibit C: Mem orandum of Law in Support of Unit ed St at es Pat ent & Tradem ark
Office’s Mot ion t o Dism iss at p. 1, Civ. Act ion 1: 16cv15, ED. VA ( Filed March
22, 2016) w it h exhibit s om it t ed
Exhibit D: March 7, 2017 let t er from Pelt on t o Swyers

7
Not e t he even if Applicant was t o m ake a claim of m alpr act ice and t o succeed, it
would not rem edy or affect t he t radem ark r ight s at issue in t his proceeding.

91211392: Request for Reconsiderat ion & Mot ion for Relief from Judgm ent p. 14
CERTI FI CATE OF SERVI CE

I hereby cert ify t hat a t rue and accurat e copy of t he Request for
Reconsiderat ion & Mot ion for Relief from Judgm ent has been served on t he
follow ing by deliver ing said copy on June 5, 2017, via em ail, t o counsel for Opposer
at t he follow ing address:

Tim ot hy J Feat hers
St inson Leonard St reet LLP
t im ot hy.feat hers@st insonleonard.com , t radem ark@st insonleonard.com

By:
Erik M. Pelton, Esq.

91211392: Request for Reconsiderat ion & Mot ion for Relief from Judgm ent p. 15
I N TH E UN I TED STATES PATEN T AN D TRAD EM ARK OFFI CE
BEFORE TH E TRAD EM ARK TRI AL AN D APPEAL BOARD

Hallm ark Licensing, LLC Consolidat ed Opposit ion No.
Opposer, 9 1 2 1 1 3 9 2 ( PAREN T)

v.

Hallm ark I ndust r ies, I nc., 91215884
Applicant .

EXH I BI T A
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE DIRECTOR OF THE
UNITED STATES PATENT AND TRADEMARK OFFICE

In the Matter of )
)
Matthew H. Swyers, ) Proceeding No. D2016-20
)
Respondent )
セMャ@

FINAL ORDER

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
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 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
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 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
applications and other trademark documents were not
prepared or reviewed by an attorney prior to being filed with
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
allowing his employees to sign or forge his electronic
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
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 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
before the Office, by engaging in the conduct referenced in
Count II 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
before the Office, by engaging in the conduct referenced in
Count III of the Complaint to the extent that his conduct does
not otherwise violate a provision of the USPTO Code of
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
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);

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,
inter alia: directing or allowing his employees to sign or forge
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,
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, 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
before the Office, by engaging in the conduct referenced in
Count V of the Complaint to the extent that his conduct does
not otherwise violate a provision of the USPTO Code of
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
invalid and/ or take timely and effective remedial action on
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;
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:
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 immediately before the date of this statement;";
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)
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 the
USPTO of the potentially invalid applications and/ or
registrations that resulted from the filing of false or
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
applications, responses to Office Actions, and other
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
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; 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
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);

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
invalid and/ or take timely and effective remedial action on
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
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);

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
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);

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
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);

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
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);

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
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
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(£) 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 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
adequately review their work, thus permitting them to create
false or fraudulent specimens and/ or digitally altered images

16
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 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
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, 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
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

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
allowing his employees to sign or forge his electronic
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,
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 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 that is prejudicial to the administration of justice 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 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
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
before the Office, by engaging in the conduct referenced in
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
before the Office, by engaging in the conduct referenced in
Count II 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
before the Office, by engaging in the conduct referenced in
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
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; engaging in any other conduct
that adversely refiects on the practitioner's fitness to practice
before the Office, by engaging in the conduct referenced in
Count V of the Complaint, to the extent that the conduct does
not otherwise violate another provision of the USPTO Rules
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
GRセ@
Date
Qセ@ 20\ l

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
I N TH E UN I TED STATES PATEN T AN D TRAD EM ARK OFFI CE
BEFORE TH E TRAD EM ARK TRI AL AN D APPEAL BOARD

Hallm ark Licensing, LLC Consolidat ed Opposit ion No.
Opposer, 9 1 2 1 1 3 9 2 ( PAREN T)

v.

Hallm ark I ndust r ies, I nc., 91215884
Applicant .

EXH I BI T B
I N TH E UN I TED STATES PATEN T AN D TRAD EM ARK OFFI CE
BEFORE TH E TRAD EM ARK TRI AL AN D APPEAL BOARD

Hallm ark Licensing, LLC Consolidat ed Opposit ion No.
Opposer, 9 1 2 1 1 3 9 2 ( PAREN T)

v.

Hallm ark I ndust r ies, I nc., 91215884
Applicant .

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

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: dennis.barghaan@usdoj.gov

DATE: March 22, 2016 ATTORNEYS FOR DEFENDANTS

OF COUNSEL: Tracy Kepler
United States Patent and Trademark Office
Case 1:16-cv-00015-LO-IDD Document 15 Filed 03/22/16 Page 2 of 29 PageID# 384

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.

1
Case 1:16-cv-00015-LO-IDD Document 15 Filed 03/22/16 Page 3 of 29 PageID# 385

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.

2
Case 1:16-cv-00015-LO-IDD Document 15 Filed 03/22/16 Page 4 of 29 PageID# 386

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

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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
1
Such 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).

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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)
2
Of 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.

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“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

3
Pursuant 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.

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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

4
In 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).

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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.

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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).

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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:

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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.

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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

6
OED 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.

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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

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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.

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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).

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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

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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

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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

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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

19
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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

7
Importantly, 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”)

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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.

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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

8
To 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).

22
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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

23
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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.

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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

9
Indeed, 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.

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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.

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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/____________________
DENNIS C. BARGHAAN, JR.
Assistant U.S. Attorney
2100 Jamieson Avenue
Alexandria, Virginia 22314
Telephone: (703) 299-3891
Fax: (703) 299-3983
Email: dennis.barghaan@usdoj.gov

DATE: March 22, 2016 ATTORNEYS FOR DEFENDANTS

OF COUNSEL: Tracy Kepler
United States Patent and Trademark Office

10
For 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.

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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
Email: dhowell@sandsanderson.com

Date: March 22, 2016 ______/s/______________________
DENNIS C. BARGHAAN, JR.
Assistant U.S. Attorney
2100 Jamieson Avenue
Alexandria, Virginia 22314
Telephone: (703) 299-3891
Fax: (703) 299-3983
Email: dennis.barghaan@usdoj.gov

ATTORNEYS FOR DEFENDANTS

28
I N TH E UN I TED STATES PATEN T AN D TRAD EM ARK OFFI CE
BEFORE TH E TRAD EM ARK TRI AL AN D APPEAL BOARD

Hallm ark Licensing, LLC Consolidat ed Opposit ion No.
Opposer, 9 1 2 1 1 3 9 2 ( PAREN T)

v.

Hallm ark I ndust r ies, I nc., 91215884
Applicant .

EXH I BI T D