Attorneys Signing Trademark Application Papers: Is the Fear of Becoming a Witness and Being Disqualified Overblown?
Trademark applications need to be signed. Other documents in the trademark prosecution process—like statements of use, § 8 declarations of use, § 9 renewals—need to be signed. And the rules are clear that the attorney of record can sign those documents on behalf of the applicant.
Yet, many trademark attorneys have a strict policy against signing any trademark application documents on behalf of their clients. That policy is based on the concern that, by signing such documents, the attorney can be considered a witness and might even be disqualified. But how much of a concern should this really be? Turns out it is probably very unlikely that anything will come of it.
Disqualification in TTAB Proceedings
The rule governing disqualification of an attorney in a Trademark Trial and Appeal Board (“TTAB”) proceeding is 37 CFR § 11.307(a):
(a) A practitioner shall not advocate at a proceeding before a tribunal in which the practitioner is likely to be a necessary witness unless:
(1) The testimony relates to an uncontested issue;
(2) The testimony relates to the nature and value of legal services rendered in the case; or
(3) Disqualification of the practitioner would work substantial hardship on the client.
Thus, the TTAB has stated that the determination of whether or not to disqualify an attorney is a two step process. INTS It Is Not The Same, GmbH v. Disidual Clothing, LLC, 2015 TTAB LEXIS 525, *7 (TTAB 2015). The first consideration is whether the attorney is a necessary witness. Id. And if the attorney is a necessary witness, the second consideration is whether the attorney meets one of the three listed exceptions. Id.
An Attorney Who Signs a Trademark Application Paper Is Rarely a Necessary Witness
Finding an attorney to be a necessary witness is a high bar. An attorney will be considered a necessary witness only where no other person is available to testify in his or her place. Id., at *7-8. In other words, a “necessary witness is one who offers evidence that is not available from another source.” Id. For an attorney to be deemed a necessary witness, his or her testimony must be relevant, material, not merely cumulative, and unobtainable elsewhere. Id.
With this controlling standard, it is not surprising that the TTAB holds that the mere signing of trademark application papers, including declarations, does not automatically make an attorney a necessary witness. In INTS, the applicant moved to disqualify the opposer’s counsel John Egbert on the grounds that he personally signed the opposer’s trademark applications, statements of use, renewals, and declarations of use and incontestability. Id., at *3-6. Despite Mr. Egbert’s free-wheeling signing spree, the TTAB declined to disqualify him:
While Mr. Egbert signed the aforementioned documents on behalf of his client, he has not created a circumstance where he alone would need to testify to the contents of those documents. There has been no showing by Applicant that Mr. Egbert is the sole source of the information for which the documents in question were submitted. Mr. Egbert was merely a permitted signatory. Evidence and information as to the contents of those submissions can be found elsewhere. Thus, Mr. Egbert is not a necessary witness. In passing, a policy of disqualifying an attorney for signing a declaration on behalf of his client, especially where it is permitted by the Trademark Rules of Practice, without anything more, would have an undesired consequence of rendering many attorneys practicing before the Board eligible for disqualification.
Id. Based on the INTS decision, the TTAB is going to require a strong showing—something more than being a mere signatory—in order to find that an attorney is a necessary witness.
Moreover, assuming that the attorney of record is outside counsel, the attorney will have obtained that information from the applicant. So the information being verified by way of the signature should almost always be available from another source (i.e., the applicant).
Disqualification in Federal Court Is Based on the Same Criteria
The disqualification of litigation counsel in a federal trademark infringement lawsuit entails the same analysis. The federal district court looks to the applicable state rule of professional conduct. I’m not going to go through the applicable rule in all 50 states, but they are same or substantially equivalent to 37 CFR § 11.307(a). For example, ABA Model Rule 3.7, which has been adopted by most states, is the same. And California’s Rule of Professional Conduct 5-210 is also substantially similar. Accordingly, the same “necessary witness” test will apply if the issue is raised in a federal trademark infringement lawsuit instead of a TTAB opposition or cancellation proceeding.
Strictly Speaking, Not Signing Is Probably the Better Practice
Sure, if you have to pick whether it’s better for the applicant to sign its own trademark application documents or for the attorney of record to sign the documents, the better practice would be to have the applicant sign the documents. That way you eliminate what teensy-weensy chance there is of becoming a witness and/or disqualified. It’s the responsible lawyerly thing to do.
However, if you’re in a pinch or not one of those ultra-conservative trademark attorneys (nod to millennial trademark attorneys), go ahead and type that forward slash followed by your name followed by another forward slash. Nothing’s gonna happen … probably.