Patent Bar v. “Trademark Bar”

I have always found it annoying that no matter how smart you are, how much you might know, or whatever other circumstances might exist, lawyers are not permitted to take the Patent Bar exam unless they meet certain educational requirements that have NOTHING to do with patent law, nor to do with law at all. In fact, you can be admitted to the patent bar even if you don’t have a law degree, are not admitted to practice law anywhere else, or even if you are disbarred. The requirements are available here.

Essentially, it boils down to this: In order to be admitted to the Patent Bar, you need a bachelor’s degree (or about two years of course work) in some science or engineering field.

Why?

The assumption is that because drafting patent claims requires a fundamental understanding of the technology involved, only someone who has science or engineering background can do it. I strongly disagree with that assumption. The Patent Bar exam has no science or engineering questions on it, you can litigate patent cases in any court in the land without a Patent Bar admission, and I don’t know a single patent attorney who will claim that he or she needed that education in order to prosecute patent applications.

So, that’s annoying enough. I joust at enough windmills, so I’m not taking on that cause. For the time being, lets just accept arguendo that the Patent Bar requirements are well-founded.

Here’s the axe I am grinding — the false impression that licensure before the USPTO gives to lawyers and to the public.

I don’t understand why we lump patents and trademarks in with each other. The two fields have virtually nothing to do with each other. Bob Cumbow had this observation, and he’s absolutely right.

Patent and copyright are authorized by a single sentence in the Constitution, yet patent ends up being managed by the same Commerce Dept agency that manages trademarks, a completely different breed of cat; while copyright is off in a dusty corner managed by the Register of Copyrights for the Library of Congress.

Congress’ power to regulate trademarks comes from the Commerce Clause. See U.S. v. Steffens, U.S. v. Wittemann, and U.S. v. Johnson, 100 U.S. 82, 25 L.Ed. 550 (1879) (collectively known as “The Trademark Cases”). Congress’ power to regulate patents comes from the Intellectual Property Clause. See US CONST. Art. I, Sec. 8, Cl. 8 (empowering Congress “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”).

I’d certainly like to know who had the bright idea to lump these two areas of law into one agency.

Here is what is truly annoying and arguably harmful to the public: When an individual holds herself out as “registered to practice before the United States Patent and Trademark Office.” This creates a problem in that patent lawyers and the public both think that this designation automatically means something that it does not – that a so-designated lawyer is necessarily or in some way especially competent in trademark law. Being a member of the Patent Bar, or “registered to practice before the United States Patent and Trademark Office” doesn’t even mean that the person so-described is licensed to practice law. It certainly doesn’t mean that this person knows the first thing about trademark law. This has, in my experience, resulted in harm to the public and serious embarrassment to patent lawyers who think that since they are members of the Patent Bar, that they somehow possess specialized knowledge of trademark law.

Why is this?

First, some ideas that I hold true:

  1. Patent lawyers are generally smarter than the rest of us. What they do is difficult. What they do requires that they use both halves of their brains with equal skill. They are a bright bunch. Brighter than I am, for certain.
  2. When you are really smart, AND the government tells you that you are “registered to practice before the United States Patent and Trademark Office,” why wouldn’t you presume that you know plenty about trademarks?
  3. Trademark law is easy.

All areas of law are easy if you apply yourself and enjoy what you are doing. Nevertheless, I think that trademark law tends to be particularly straightforward – but that doesn’t mean that you can do it without applying some pre-work research. (I recognize that not everyone thinks that trademarks are easy… maybe I think so just because I love this area of law, and in my experience anything is easy if you have a passion for it.).

Patent law is to trademark law as flying a plane is to skydiving. The principles are similar. Anyone can do one or the other. It is harder, more complicated, and requires more training to pilot an airplane. You can learn to skydive in a single day, while flying a plane takes months of study and lessons. Nevertheless, take a 20 year veteran of the Blue Angels, strap a parachute to his back, and throw him out the door of a Cessna, and he’s going to get hurt or killed.

The same principles apply to patent lawyers trying to practice trademark law – and in this analogy, the airplane pilot is the patent lawyer and the skydiver is the trademark lawyer.

I have, for years, shaken my head with disappointment as I see trademark applications and trademark litigation bungled beyond all possible comprehension by otherwise-brilliant patent attorneys. I have seen brilliant patent attorneys make mistakes that my paralegal would never make in working on a trademark application or case. I had a case about a year ago where I politely explained to my opposing counsel that his defenses demonstrated that he was mis-applying his 10 years of experience in patent law to a trademark case. His condescending response was “excuse me, but I am licensed before the United States Patent and Trademark Office, and you aren’t, so I don’t think you can lecture me about this area of law.”

….Which illustrates my point with great precision.

This was a relatively simple cybersquatting case that could have settled for a handover of the domain name and a few hundred dollars. The defendant eventually got slapped with a huge statutory damage penalty as well as a huge attorneys’ fees bill. I did not take any joy in finally educating this patent lawyer and his client about the folly of his ways. The other lawyer was right in his analysis of the issues if it were a patent case. He applied his excellent experience as a patent lawyer, and it cost him (and his client) dearly.

“Fair use” principles in Trademark law simply have no recognizable equivalent in Patent law. Patents give you a monopoly over the invention. Patent lawyers, on the other hand, tend to look at their clients’ trademarks as “word patents” — which they are not. I have been able to explain this to second year law students with much greater success than I have been able to explain it to patent lawyers, who are a little more set in their ways.

Another example is the “fraud” issue that is elaborated in the Medinol case and its progeny. (For a great discussion of this, see John L. Welch and Ann Lamport Hammitte, Fraud for Thought: Can Fraud Be Avoided by Correcting a False Statement Prior to Publication?, Allen’s Trademark Digest, Apr. 2007). I’ve looked at many Trademark applications filed by Patent lawyers, and it becomes obvious that many of them don’t get this until it is too late.

This isn’t to say that all patent lawyers (nor even most patent lawyers) don’t understand trademarks. There are plenty of Patent lawyers who are also great trademark minds. What I am saying is that the designation needs to be changed, and the USPTO should either:

  1. Drop the Patent Bar requirements and let anyone take the exam,
  2. Establish a Trademark Bar exam and designation
  3. Or, at the very least, make the designation “licensed to practice Patent law,” and drop the reference to trademarks.

Option 1 makes the most sense, but swims against such a strong tide of tradition that even I recognize that it will likely never happen.

Option 3 accomplishes the mission, but doesn’t help to ensure that a trademark lawyer is competent to practice trademark law.

Option 2 seems “just right.” Of course, many lawyers might bristle at the thought of yet another bar exam. Nevertheless, with trademark law becoming a global issue, with the TTAB creating its own common law that deviates from the norm, perhaps a relatively non-onerous exam might be worthwhile.

The FAA doesn’t give skydiving licenses to jet fighter pilots. The USPTO shouldn’t be telling lawyers and the public that its Patent Bar exam qualifies anyone to practice trademark law.

15 Responses to Patent Bar v. “Trademark Bar”

  1. Beams says:

    I got sent here from the InventBlog.

    I think you raise some good points. It can be misleading for a registered patent agent (not attorney) to represent himself to a client as “Registered to Practice before the USPTO.” But, then again, he wouldn’t be allowed to prosecute a trademark.

    The idea, though, of requiring a trademark bar, for something you say is “easy,” is pretty strange. If I want to practice corporate law, defense law, if I want to be a DA, or practice labor law before the NLRB I don’t need to pass a separate bar. In fact, besides passing the bar in which ever states you want to practice, and the patent bar, there generally aren’t competency examinations to allow people to practice law.

    Two good reasons for this:
    (1) Most good, or even competent, lawyers won’t take on work they aren’t qualified to handle, or don’t think they can learn enough about to practice it well.
    (2) If they do mess up as badly as you say this one guy did, his client had a damed good malpractice suit against him.

    Technically a doctor, once he completed his boards and his internship can open up a practice and start slicing people open. He usually doesn’t. Rather, they do residencies and become board certified in a specality or subspeciality of some kind. Why? For the exact same reasons, they want to be competent in an area of medicine before they start to practice it on their own. If they screw up, malpractice.

    If you really think that more than this one lawyer thinks that the “Trademark” in USPTO makes him qualified to prosecute them, then maybe there should be a requirement that they only represent themselves as “Registered Patent Attorney,” but I have trouble beliveing that this is as widespread a problem as you make it out be. I’m also not in the field.

  2. Great comments!

    I think you make a good point in criticizing my call for a “Trademark Bar.” Perhaps it is not necessary – but in the same vein, neither is the Patent Bar. I guess that my point is more that if you are going to have one, then have the other.

    To elaborate though, this post wasn’t sparked by a single attorney. I illustrate the point with one anecdote, but I have encountered this “problem” in many patent attorneys, both friend and foe. (It’s funny, it has been harder to drive the point home to friends than foes!).

    Thank you for posting. Thoughtful comments like this one are the kind that help keep the mind working.

  3. Beams says:

    I’ll say I don’t disagree with you that the patent bar may not be necessary. Looks darn good on a resume though.

    There are two justifications that I can think of. The first is to keep the wheels of the PTO moving along by trying to ensure a certain quality to the submissions, but I can’t help but feel that even without the Patent Bar they’d get a bunch of competent attorneys and a bunch of incompetent attorneys prosecuting applications. Alternatively, they could want to allow scientists without legal training to have some sort of certification to prove that they can do it. If the later is the case then they should be able to strike the requirement for lawyers, but perhaps don’t in fear of seeming unfair.

  4. Brett Trout says:

    I guess I do not see the problem. In any area of law you will find incompetents blind to their own failings and others’ acumen. I know patent attorneys who screw up patent law. I have had judges in a copyright case attempt to apply patent law. The successes of many should not be judged by the faults of a few.

    As a patent attorney who also practices trademark law I find many administrative similarities between the two practices. The are indeed different practices and I would support dividing the USPTO into the USPO and the USTO, but requiring a separate exam for an area of law nearly any attorney can currently practice is a windmill worthy of Quixote.

  5. The problem is that when the USPTO tells a lawyer that he or she is licensed to practice before the United States Patent and Trademark Office, that misleads the public and sometimes even the lawyer into believing that this somehow equals some special knowledge of trademark law.

    Maybe I am just attuned to the wreckage this causes because I get to clean up these messes a lot. Hell, the current system makes me more money because it always costs more to clean up a mess than to do it right the first time.

  6. Susan says:

    Thank you for saying that the Patent Bar should be separated from the Trademark Bar. I agree, but for somewhat different reasons.

    Patents usually require consulting with engineering folks and do not require anyone to have a desire to buy the patented item.

    Trademarks usually require consulting with marketing folks and involve marketplace recognition. There are no trademark rights in the name for a product no one buys.

    They are totally different conceptually and the people who are required to give lawyers data for patent purposes are not the same as those required to give data for trademark purposes (unless it is a very small organization).

    Further, I agree that the patent lawyers tend to have a very mechanistic view of trademark law. Trademarks are about shopping, and there is something very wrong about asking engineers and other technical types (a requirement of the Patent Bar) to think about the shopping habits of the average consumer.

  7. Susan,

    I had not thought of that angle before. Great point.

  8. Mark K. McCulloch says:

    Seems to me the designation, as you describe it, is pretty hollow. If anyone can be admited before the USPTO board, it deosn’t present much of anything in terms of required special knowledge or understanding. Certainly in the area of patents, such special knowledge is required.

    I would argue that the proper designation should come from the federal bar much the same way as special board certifications are earned understate bars. To be Board Certified in Patent Law or Board Certified in Trademark Law (or simply Intellectual Property Law to cover the gambit of trademarks, patents and copyrights) might make everyone feel better and not put any false impression in the minds of a client who may or may not be sophisticated enough to understand the differences.

    In every area of the law, you find attorneys who have hyper-inflated views of their own skills and abilities. Some judges, I have found, suffer from the same shortcoming. If attorneys are going to set themselves out as specialists in some area of the law, the governing body ought to be able to require minimum standards to be met. If that means another bar exam, so be it. Wouldn’t hurt, frankly, to require attorneys to pass a bar exam every 10 years just ot be sure they are keeping up on CLE’s and modernization of the law.

  9. jfischer1975 says:

    I don’t find it to be that unreasonable that there are limits on who may take the registration exam in order to prosecute patent applications before the USPTO. It is no different from requiring that someone have a JD from an ABA accredited law school before they can take a state bar exam. To me, when I hear attorneys complain about how they cannot sit for the patent registration exam, it sounds very much like someone with a Master’s in Criminology complaining that they cannot take a state’s bar exam. Should someone with a PhD in Biology or Chemistry be allowed to take a state’s medical board exams? Why can’t a math major sit for the CPA exam?

    The “patent bar,” just like most state bars, has several requirements for admission, as I understand it, beyond just having a technical degree. Just like a state bar, there is a character and fitness analysis. Granted, this amounts to a few check boxes on the application (e.g., have you ever been convicted of a felony? circle one: yes/no), rather than an in-depth background check, but there is an obvious parallel nonetheless. And, of course, there is the obligatory exam, both for admission to practice law in a state and for admission to prosecute patent applications. Surely it makes sense to only allow people who will ultimately be admitted to practice to take the exam. If you’re not getting in because you don’t have the right degree, then you can’t take the test. It’s the same situation in other professions, and I don’t really hear all that much complaining.

    With regard to the subject matter of the exam, patent prosecution is a hyper-technical, deadline-heavy endeavor. The exam establishes whether an applicant has at least a critical mass of knowledge about the simple, seemingly innocent mistakes that an attorney or inventor can make that will result in a total loss of the inventor’s right to a patent grant. There are several. Without a firm understanding of trademark law (one that I hope to possess by the end of this semester in Prof. Randazza’s class), I am guessing that the worst that can happen there is that someone beats you to the office with his or her application.

    Signed: Jason Fischer
    3L, Barry University School of Law

  10. Feldman says:

    Jesus, don’t you have anything better to talk about? Always about making the sheckles with you, isn’t it?

  11. katreena says:

    i completely agree with you…these two things are totally different. patent laws are exclusive rights granted by a state to an inventor but on the other hand side trademarks are official mark of any company or organization. if people still have confusion in both they can check out this link which describes the difference of patent laws and trademark

  12. Phoenix Patent Attorney says:

    I think you make a few rough generalizations that just can’t hold up. For instance, “[p]atent lawyers, on the other hand, tend to look at their clients’ trademarks as ‘word patents’ — which they are not. I have been able to explain this to second year law students with much greater success than I have been able to explain it to patent lawyers, who are a little more set in their ways.” I don’t know any patent lawyers who think this way.

    Your comment “I have, for years, shaken my head with disappointment as I see trademark applications and trademark litigation bungled beyond all possible comprehension by otherwise-brilliant patent attorneys” may be true, but I can say the same for TM applications I’ve stumbled upon filed by non-IP attorneys. I can’t say that the ability to screw up a TM app is limited to patent attorneys.

    I agree, they are two different subsets of a general area of law, and it is misleading if, by omission, a patent attorney represents himself as a trademark attorney as well. However, I don’t believe there is anything particular about a patent attorney that makes this more onerous. I don’t advertise my firm for trusts and estates, or criminal law, or admiralty law. If a client came to me and asked me to work out a maritime case, I’d tell them I knew nothing about it and that I wasn’t qualified. If a client comes to a patent attorney, and the attorney knows zilch about trademark law, it is his ethical duty to tell the client.

    Bottom line: USPTO registration is just that. It isn’t a mark of expertise or anything more than competency. The attorney still carries the duty to inform the client, or not mislead the client, about the nature of his experience and qualifications. The problem doesn’t result from saying “I’m qualified to practice before the USPTO” – it is from saying “I’m qualified to practice trademark law.”

  13. suigeneris says:

    If a jet fighter pilot ejects, what happens during his descent? Is a parachute involved? Perhaps you might explain the significant differences between the case of the pilot’s descent via parachute and that of the “skydiver’s” descent via parachute. What is truly the most important aspect of the descent? Is this aspect present in both cases?

    I once shared some of your views on the science degree. I was an English major. After a number of years working with almost exlusively with scientists and patent attorneys every day, I found I had a passion for science and I earned a science degree myself. I no longer hold such views as you express here.

    Moreover I think your views, while understandable, are ill-considered and not well-informed. There is much you do not know and will likely never know. This is because you are not passionate about science and technical fields and will not be self-motivated to increase your knowledge in these areas.

    Please consider the details you failed to consider in choosing your “jet fighter :: skydiver” analogy, and the fact that you failed to consider them.

  14. Excellent article. I also find it asinine that a science degree is a pre-requisite to even take the Patent Bar. (If I can’t pass it, that’s one thing, but to not even allow someone to take it just because of their undergrad choice umpteen years ago?) I think it’s a throwback to a long time ago, when most inventions were more based in hard science. But many patent matters I’ve referred out have had nothing to do with hard sciences … and in many cases I knew whatever science underlied them as well or better than most licensed patent attorneys.

    You also make a great point about how patents & trademarks are really not all that similar. I wish the powers that be had your common sense and experience.

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