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EXHIBIT​ ​B
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EXHIBIT​ ​C
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EXHIBIT​ ​D
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 18 of 142

PO Box 745 Indooroopilly QLD 4068 AUSTRALIA


Ph 1300 662 173 or +61 7 3378 2668
Email enquiries@pacifictranscription.com.au
Web www.pacifictranscription.com.au

FILE DETAILS

Audio Length: 9 minutes

Audio Quality: High Average Low

Number of Facilitators: One

Number of Interviewees: One

Difficult Interviewee Accents: Yes No

Other Comments:

START OF TRANSCRIPT

Facilitator: Thank you for calling Trademark Engine. This is Aaron. How can I
help you?

Interviewee: Yeah, hi. I just placed a trademark filing request, but I have a
question or two.

Facilitator: Okay. Sure. What can I [clear up]?

Interviewee: So I put this order in and what happens now?

Facilitator: It’s just a trademark registration package?

Interviewee: Yes.

Facilitator: Okay. So did you - you got the basic five-day package?

Interviewee: I don’t know. I guess - I think so, yeah. But - yeah, basic package.

Facilitator: So what will happen is our processors, the first thing they do is they’ll
run your mark that you’re applying for through a direct federal

[Unclear] words are denoted in square brackets and time stamps may be used to indicate their location within the audio.

Distribution of this transcript requires client authority and is subject to the provisions of the Australian Privacy Principles.
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 19 of 142
Trademarkengine2 Page 2 of 6

database and see if there’s any kind of direct conflicts with existing
marks. If there are, we’ll let you know right away and give you the
opportunity to cancel your application for a refund, or just change your
name to something else, or did you do a name or a logo.

Interviewee: Did a name.

Facilitator: A name. Yeah, so if we find a direct hit conflict, that’s what we do


right away is let you know and give you the opportunity to change or
cancel. If we don’t see any kind of direct hit conflicts at that time,
that’s when they’ll collect the government filing fee, that’s $275.

Interviewee: Mm-hm.

Facilitator: Then we go ahead. Did you indicate on your application that you are
currently using the trademark, or that you’re not currently…

Interviewee: Well, I used it in 2002 and I’m going to restart again now, so I put, yes,
I’m using it, but…

Facilitator: Yes, okay. So what that’s going to mean is that you’re going to need
to require a specimen - you’re going to need to provide a specimen,
rather - at the time that we send your application to the government.
So that’s another thing that our processor will ask you for, if you
haven’t already provided it, would be a - what do you sell under that
name?

Interviewee: It’s a real estate brokerage.

Facilitator: Real estate brokerage. Okay. So if you advertise your brokerage


services in some sort of brochure or website, that would be an
acceptable specimen. It’s just to show the government that you are
actually using the name and that’s the business that you say you are.
So we need to see a brochure or a website screen shot containing
that name along with your services - advertising your services. That
would be acceptable.

If you can’t provide that yet because you’re not going to have it yet,
we can change your application to not in use and that would give you
the opportunity to file that in a few months. However, it costs an extra
PO Box 745 Indooroopilly QLD 4068 AUSTRALIA Ph 1300 662 173 or +61 7 3378 2668

Email enquiries@pacifictranscription.com.au Web www.pacifictranscription.com.au


Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 20 of 142
Trademarkengine2 Page 3 of 6

$100 if you want to do it that way, but they don’t charge you that until
you submit your evidence in a few months. So - but you keep it how it
is now and you can provide evidence now, if you have it, or we can
switch it to not yet in use and you can do that later.

Interviewee: Okay. Will you help me take a class or will you pay the government
fees or do I pay the government fees? How does that work?

Facilitator: Yeah, so we collect the - if we run that search and we see no direct hit
conflicts, we go ahead and collect that $275 at that time. Then once
you sign off on the final application summary we send you, that’s
when we pay that to the government on your behalf along with your
application.

Interviewee: Okay. So you send me a final application summary on your website


or something, or do I go to the government website? Where - how…

[Over speaking]

Facilitator: We email it to you.

Interviewee: Okay. So you email it to me and then I sign your form, or is it like - or
do I have to…

Facilitator: You’ll sign our form and then we submit everything on your behalf to
the government, because you’re basically giving us - part of the thing
that you’re signing is you’re giving us permission to file on your behalf.
We file with the government and then about five business days after
we file they give you a serial number. They’ll email you a registration
serial number and receipt to let you know that they’ve received the
application. That’s when your protection actually begins for the name
that you’ve applied for. However, you don’t receive final approval for
another few months. It takes them a while to process it.

Interviewee: Okay. Then are you - so basically with my description and stuff, is
that going to be something you’re going to help fix, or is that - because
I wrote a description.

Facilitator: Yes. Yeah, that’s correct. That’s one of the things that we offer as
part of our service. Our processor, once they ran that search, the next
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Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 21 of 142
Trademarkengine2 Page 4 of 6

thing they’re going to do is make sure that the class that you’ve
selected lines up with the description as you’ve written it. They’ll also
make some suggestions about improving the wording of the
description to make it a little better for the application, make it more
likely to be approved.

Interviewee: Okay. Then, so, are you guys my lawyers then? Or is that going to
be like, you’re going to be a lawyer? Are you going to be my lawyers,
or how does that work?

Facilitator: We’re not a law firm. We’re just a trademark filing company. I mean,
we were founded by lawyers, but we don’t offer legal advice or - we
are not attorneys, but we file the application on your behalf. So we’ve
done thousands of these and so we know what the government’s
looking for and is going to expect to see. So we make it - we save
you a lot of time and struggle trying to do it yourself.

Interviewee: Okay. Cool. Then if the search report comes back and suppose
someone has a mark that’s - what does that mean? I don’t - can you
explain that a little more? I don’t get it.

Facilitator: Yeah, so if someone else already has that name and they already
trademarked that name exactly, then we’re going to tell you you
probably should not file that name, because you’re just - you’re going
to get rejected. The government will reject your application. So we
give you a chance to change your name and we’ll run a search on
something else if you want, or you can just request a refund and sign
up at a later time.

Interviewee: Okay. So then I’ll get a full refund then? Or how does that work if…

Facilitator: Yeah, yeah. Everything is refundable until we submit it to the


government. So once you sign off on the final application summary
and we submit it to the government, at that point it’s non-refundable.
Even if you get rejected by the government, they just don’t - they don’t
give the money back. But before that, any time before that, we can
refund you the full amount. We have a satisfaction guarantee and you
can cancel at any time.
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Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 22 of 142
Trademarkengine2 Page 5 of 6

Interviewee: Okay. Then - so, let’s see what else questions I have. If I want to file
in other countries, can you help with that?

Facilitator: No, sir. We can run a global search for you if you want us to get other
- if the trademark that you’re filing for exists in other countries already.
But the - we only apply for the US Patent and Trademark Office.

Interviewee: Okay. What if there’s a mark that’s not exactly the same as mine, but
it’s kind of similar? Is that a problem, or how does that work?

Facilitator: So it is a little subjective. If it’s confusingly similar, then they will reject
it. So if they’re spelt differently, but pronounced the same, that’s
grounds for rejection. If they’re just a letter or two different, that’s also
considered close. Sometimes it’s hard to tell. You just have - we -
you just have to make a judgment call, because at the end of the day
a lot of it depends on how picky the processor you get at the
government is. Because they assign it to an individual attorney and
they’re the ones who make the final call. So some of them are pickier
than others.

But we try to be pretty conservative when we do our search and, if


they’re close at all, we’ll let you know and say, you should probably
change. We send you the marks in question so you can see for
yourself and make a decision and maybe consult with whoever you’re
- if it’s a more than one-person operation.

Interviewee: Thank you. Okay. That makes sense. I just wanted to make sure. I
placed the order, but I just want to make sure I record everything and
make sure I have this written down so I can follow up with you. How
do I go forward now? Just wait? What do I do?

Facilitator: Yeah, just keep an eye out on your email. We’ll send you the - if
necessary, we’ll send you search results. If there are no search
results that come back, then we’ll just proceed with the application
and we’ll send you an email requesting the specimens and you can - it
will - you can upload those to your account, or you can email them to
support@trademarkengine.com. But we’ll include instructions in that
email we send you, so just keep an eye out for that.
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Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 23 of 142
Trademarkengine2 Page 6 of 6

Interviewee: Okay. Thank you so much.

Facilitator: Yeah, you’re welcome.

Interviewee: What’s your name?

Facilitator: Anything else that I can clear up for you, sir?

Interviewee: Oh, it’s…

Facilitator: My name’s Aaron.

Interviewee: Aaron. Okay. Thanks, Aaron.

Facilitator: Yeah, you’re welcome. You have a great evening.

Interviewee: Okay. Bye-bye.

END OF TRANSCRIPT

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Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 24 of 142

PO Box 745 Indooroopilly QLD 4068 AUSTRALIA


Ph 1300 662 173 or +61 7 3378 2668
Email enquiries@pacifictranscription.com.au
Web www.pacifictranscription.com.au

FILE DETAILS

Audio Length: 4 minutes

Audio Quality: High Average Low

Number of Facilitators: One

Number of Interviewees: One

Difficult Interviewee Accents: Yes No

Other Comments:

START OF TRANSCRIPT

Facilitator: …and my last name is Abhyankar, A-B-H-Y-A-N-K-A-R. I just want to


know…

Interviewee: Okay, I have your account.

Facilitator: Yeah.

Interviewee: I have your account pulled up, I'm just looking over everything. Your
[your first name] [pause] [and your sector] [pause] [unclear] [pause].
Okay, I'm definitely going to have to, let's see, reach out to the
processing team. Let me just go over your notes. [Unclear] filed my
trademark on the 6th. Okay, I'm going to reach out to the processing
team to just see exactly where we are with the application, because
we did receive your response to file it after we gave you the [unclear]
assess report results.

Facilitator: Ah-ha.

[Unclear] words are denoted in square brackets and time stamps may be used to indicate their location within the audio.

Distribution of this transcript requires client authority and is subject to the provisions of the Australian Privacy Principles.
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 25 of 142
TrademarkEngine-statuscheck (1) Page 2 of 3

Interviewee: Let's see here, they probably just haven't gotten to the application yet,
but still it needs to definitely move forward. Okay, all right, so where
are we now with the - okay, so I'm going to let the processing team
know that we've moved forward and start on the next step, which will
be the application summary that is to be reviewed and signed and
we'll email that to you. That will be the last step to do once we file out
the trademark application.

Facilitator: Okay, can you check with them right now, or how?

Interviewee: Let me see here, I can only message them. I don't know how long it
will it take for them to message me back on it. I'll just definitely update
them and let them know that the order needs to be processed further.

Facilitator: Okay, are you guys are in different offices or can you just go over and
speak with them?

Interviewee: Right, it's like different offices. We have our processing team and then
we have our CSR team, those then they can say that they'll definitely
move forward and they'll just send over the application process
whenever they can, which could take up to one business day.

Facilitator: Okay and are you, so are guys in Texas or where are you guys at, are
you located…

Interviewee: Yeah, we're in Texas, in Houston, Texas.

Facilitator: Okay, cool. So if you could like move this forward, that would be good,
you know?

Interviewee: Yeah, absolutely. We should send that out to you by tomorrow. It'll be
an application summary sent to your email, so say, application
summary needs to be - no, requires your attention and it'll let you click
on the link and review the application and sign it electronically and
that will be the last step and then we'll file it out.

Facilitator: Okay, so after I sign your application, like do I file on your website? Do
I sign on your website or do I sign it on the government website or
how does that work?

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Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 26 of 142
TrademarkEngine-statuscheck (1) Page 3 of 3

Interviewee: It's on our website. We actually send you a link to it and it will pull up
your application and the summary, so that way you'll be able to sign it
electronically.

Facilitator: Okay and so once I sign it, then you guys will pay the government
fees or how does it work? Like do I do it?

Interviewee: Right, yes. The 275 government filing fee will be processed and then
we'll file it out with the USPTO.

Facilitator: Okay, so you'll process that and you'll file it out. Okay, cool.

Interviewee: Right.

Facilitator: Thank you.

Interviewee: You're certainly welcome.

Facilitator: Bye-bye.

Interviewee: Have a great night.

Facilitator: Bye-bye.

END OF TRANSCRIPT

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Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 27 of 142

PO Box 745 Indooroopilly QLD 4068 AUSTRALIA


Ph 1300 662 173 or +61 7 3378 2668
Email enquiries@pacifictranscription.com.au
Web www.pacifictranscription.com.au

FILE DETAILS

Audio Length: 3 minutes

Audio Quality: High Average Low

Number of Facilitators: One

Number of Interviewees: One

Difficult Interviewee Accents: Yes No

Other Comments:

START OF TRANSCRIPT

Facilitator: …mark, through Trademark Engine and I'm just about to sign. But I
have some questions.

Interviewee: [Okay].

Facilitator: Your name is what, again? Michelle?

Interviewee: Michelle.

Facilitator: Okay, yeah hi Michelle. So I'm confused about one thing, maybe you
can help me. Like, is that description - I put a description on your
website, but then it changed the description and I'm just wondering
what the - why it was changed.

Interviewee: Um, okay, our processors changed the description to make it more
acceptable to the USPTO. So the government is primarily interested in
the services that you're providing. If you're interested - I mean if you
would rather use your description, then we can use your description,

[Unclear] words are denoted in square brackets and time stamps may be used to indicate their location within the audio.

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Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 28 of 142
trademarkengine-AudioBeforeSignature-Dec14 (1) Page 2 of 3

but they revised your application so that your description specifically


matches the services that you're offering.

Facilitator: Okay and then like a - I don't know, it's a weird symbol, like a tilde
mark on it, like can we maybe get rid of that? Why is there a tilde mark
on it? Like, it says: financial investment in the field of tilde mark real
estate. What does that mean?

Interviewee: That is probably - they copy and paste the description from the
government website, so that's probably just a result of HTML. Oh, the
parentheses things, is that what you're talking about?

Facilitator: Yeah.

Interviewee: The brackets?

Facilitator: Yeah.

Interviewee: I mean we can remove the brackets if you want, but that's, once
again, that's for USPTO purposes, so they were - that's - they're like
lingual - legal language, like jargon for them. So but if you don't want
that there, then we can remove it.

Facilitator: Okay, does it make any difference?

Interviewee: No, it doesn't.

Facilitator: Okay. All right, so you guys changed the description for me, okay,
good, all right and thanks. The class, what does that mean exactly?
Did you guys - what does that mean?

Interviewee: So depending on your goods and services, there's different categories


for those goods and services. So that's what that means, the services
that you provide that enter that category, 36. So since trademarking is
specific to branding, it's very important that you pick the correct class,
otherwise the government will reject your application, so that's what
that is.

Facilitator: Okay, all right and so you guys picked that. Okay, cool, thank you so
much, I think I'll just proceed with it, thank you.

Interviewee: Okay, thanks for calling, have a good day.


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Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 29 of 142
trademarkengine-AudioBeforeSignature-Dec14 (1) Page 3 of 3

Facilitator: Thanks, bye.

END OF TRANSCRIPT

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Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 30 of 142

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EXHIBIT​ ​G
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EXHIBIT​ ​H
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 40 of 142

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 )
~~~~~~~~~~~-l

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


Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 41 of 142

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
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 42 of 142

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
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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
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 44 of 142

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
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 45 of 142

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
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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
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 47 of 142

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
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 48 of 142

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
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 49 of 142

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
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 50 of 142

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
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 51 of 142

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
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 52 of 142

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
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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
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 54 of 142

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
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 55 of 142

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
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 56 of 142

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
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 57 of 142

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
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 58 of 142

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
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 59 of 142

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
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 60 of 142

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
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 61 of 142

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
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 62 of 142

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
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 63 of 142

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

reinstatement.

~
David Shewchuk
Deputy General Counsel for General Law
'2~ 1~11
Date
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
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 64 of 142

EXHIBIT​ ​I
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 65 of 142

UNITED STATES PATENT AND TRADEMARK OFFICE


BEFORE THE DIRECTOR
OF THE UNITED STATES PATENT AND TRADEMARK OFFICE

In the Matter of )
)
Tracy W. Druce, )
) Proceeding No. D2014-13
Respondent )
)

FINAL ORDER

The Director of the Office of Enrollment and Discipline ("OED Director") for the United
States Patent and Trademark Office ("USPTO" or "Office") and Tracy W. Druce ("Respondent")
have submitted a Proposed Settlement Agreement ("Agreement") to the Under Secretary of
Commerce for Intellectual Property and Director of the United States Patent and Trademark
Office ("USPTO Director") for approval.

The Agreement, which resolves all disciplinary action by the USPTO arising from the
stipulated facts set forth below, is hereby approved. This Final Order sets forth the parties'
stipulated facts, legal conclusion, and agreed upon sanction.

Jurisdiction

1. At all times relevant hereto, Respondent of Houston, Texas, was a registered


patent attorney (Registration No. 35,493) and was subject to the USPTO Code of Professional
Responsibility, which is setforth at 37 C.F.R. § 10.20 et seq]

2. The USPTO Director has jurisdiction over this matter pursuant to 35 U.S.C.
§§ 2(b)(2)(D) and 32 and37 C.F.R. §§ 11.19 and 11.26.

Stipulated Facts

3. The USPTO registered Respondent as a patent attorney on March 24, 1992.

4. Respondent's registration number is 35,493.

5. In 2004, Respondent established a law firm, Novak Druce LLP.

6. In 2005, Noval, Druce LLP became Novak, Druce & Quigg LLP.

1 The USPTO Code of Professional Responsibility applies to Respondent's alleged misconduct


that OCCUlTed prior to May 3, 2013. The USPTO Rules of Professional Conduct, 37 C.F.R.
§ 11.101 et seq., apply to it practitioner's misconduct occufl'ing after May 2,2013.
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 66 of 142

7, At all times relevant to this Agreement, anon-lawyer assistant,


worked for Respondent at Novak Druce LLP and Novak, Druce & Quigg LLP from 2004
through late 2006, hereinafter referred to as "the non-lawyer assistant,")

8, At all relevant times, Respondent was responsible for the supervision of the
non-lawyer assistant.

9, From at least 2004 through 2006, the non-lawyer assistant submitted, with intent
to deceive, knowingly false statements to the Office in many patent applications that Respondent
was responsible for prosecuting on behalf of clients,

10, The non-lawyer assistant submitted the following types offalse statements to the
Office in patent applications that Respondent was responsible for prosecuting:

a, fabricating email COnfilnlation messages and submitting the fabricated emails


to the Office as evidence that papers had been sent to the Office via facsimile
transmission when, in fact, the papers were never sent to the Office;

b, affixing USPTO receipt stamps to postcards and submitting the doctored


postcard receipts to the Office as evidence that the Office had received papers
when, in fact, the papers were never sent to the Office;

c, fabricating a United States Postal Service Express Mail label that falsely
represented a patent application had been mailed to the Office on a certain
date when, in fact, the application had never been sent to the Office; and

d, backdating certificates of mailing that falsely represented that papers had been
mailed to the Office weeks and/or months earlier than they actually had been
sent.

11. Additionally, the non-lawyer assistant signed Respondent's signature to papers


filed with the Office in many patent applications that Respondent was responsible for
prosecuting on behalf of clients, .

12, Additionally, the non-lawyer assistant electronically "cut and pasted" a digital
version of Respondent's signature and affixed it to papers filed with the Office in many patent
applications that Respondent was responsible for prosecuting on behalf of clients,

13, Additionally, the non-lawyer assistant prepared petitions; signed Respondent's


name to the petitions and/or affixed a digital version of Respondent's signature to the petitions;
and filed the petitions in the Office,

2
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 67 of 142

14. Respondent knew that the non-lawyer assistant had signed Respondent's name to
application papers submitted to the Office in many patent applications that Respondent was
responsible for prosecuting on behalf of clients.

15. The non-lawyer assistant represented in a declaration that he engaged in the'


misconduct described in paragraphs 9-12, above, without Respondent's lmowledge.

16. Respondent represents that he did not know of the non-lawyer assistant's
misconduct described in paragraphs 9-12, above, and the non-lawyer assistant represents that he
acted alone and kept his misconduct secret from Respondent.

17. Respondent acJmowledges he did not adequately supervise the non-lawyer


assistant's activities.

18. Previously, Respondent completed and returned to the OED Director the USPTO
Mandatory Survey (Form PTO 107S) issued under 37 C.F.R. § 11.1 1(a)(2). Respondent
indicated on the survey that he did not wish to remain on the register of registered practitioners
(37 C.F.R. § 11.5), and the OED Director removed Respondent from the register. Accordingly,
ptlrsuant to 37 C.F.R. § 11.10(a), Respondent is not permitted to prosecute patent applications of
others before the Office or represent others in any proceedings before the Office unless and until
he is reinstated to the register.

Joint Legal Conclusion

19. Respondent aclmowledgeS' that, based on the above stipulated facts, he violated
37 C.F.R. § 1O.77(c) (a practitioner shall not neglect a legal matter entrusted to the practitioner)
by not adequately supervising his non-lawyer assistant.

Agreed Upon Sanction

20. Respondent agrees, and it is hereby ORDERED that:

a. If Respondent seeks reinstatement to the Office's register of practitioners under


37 C.F.R. § 11.7, Respondent shall be suspended from practice before the Office
in patent, trademark, and other non-patent matters for twenty-four (24) months
commencing on the date that a request for Respondent's reinstatement to the
re gister is granted;

b. The 24-month suspension, which is contingent upon Respondent seeking and


being granted reinstatement, shall be stayed;

c. Respondent shall serve a twenty-four (24) month period of probation commencing


on the date that a request for Respondent's reinstatement to the register is granted;

3
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 68 of 142

d. Respondent shall be permitted to practice before the USPTO in patent, trademark,


and other non-patent matters during his probationary period unless his probation
is revoked and he is suspended by order of the USPTO Director or otherwise no
longer has the authority to practice;

e. When and if Respondent seeks reinstatement pursuant to 37 C.F.R. § 11.7, the


present disciplinary proceeding will not be a basis for barring his reinstatement
provided that Respondent complies with the terms of the Final Order;

f. Respondent shall provide certain information to certain present and former


client(s) as set forth in subparagraphs i. through aa., below;

g. Respondent shall use his best efforts to identifY each patent application that
Respondent prosecuted before the Office at any time between January 1,2004,
and December 31, 2006, that meet all of the following three conditions:

(1) The Office received between January 1,2004, and December31,


2006, any of the following: (i) a petition to revive an abandoned application, (ii) a
petition to withdraw the holding of abandomnent; and/or (iii) a petition for
extension of time where the petition for extension of time was transmitted to the
Office by the non-lawyer assistant and where the petition for extension of time's
transmittal date preceded the Office's receipt date by more than thirty (30) days;

(2) The non-lawyer assistant transmitted any paper in the application


to the Office at any time between January 1,2004, and December 31, 2006; and

(3) The Office issued a patent on the application at any time;

h. For each patent application identified by Respondent pursuant to the preceding


subparagraph, Respondent shall identify the present client(s) and former client(s)
for whom patent legal services on the application were performed;

i. For each present and former client(s) identified by Respondent pursuant to the
preceding subparagraph, Respondent shall provide each such present and former
client(s) with the following documents:

(1) A copy of the Apri110, 2014 declaration executed by the


non-lawyer assistant with the patent application serial numbers redacted; and

(2) A copy of the redacted Final Order;

j. Respondent shall also provide unambiguous written notification to the present and
former client(s) that Respondent represented in connection with U.S. Patent

4
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 69 of 142

Application No _ _ of the specific false statements described in


~ 14 of the April 10, 2014 declaration;2

k. Respondent shall also provide unambiguous written notification to the present and
former client(s) that Respondent repres'ented in connection with
U.S. Patent Application No. _ o f the specific potentially false
statements described in ~ 15 of the April 10, 2014 declaration;

Application N 0._
1. Respondent shall also provide unambiguous written notification to the present and
former client(s) that Respondent represented in connection with U.S. Patent
of the specific potentially false statements described
in ~ 15 of the April! 0,2014 declaration;

m. Respondent shall also provide unambiguous written notification to the present and
former client(s) that Respondent represented in connection with U.S. Patent
Application No._ofthe specific potentially false statements described
in ~ 15 of the April 10, 2014 declaration;

n. Respondent shall also provide unambiguous written notification to the present and
former client(s) ~dent represented in connection with U.S. Patent
Application N o . _ of the specific potentially false statements described
in ~ 15 of the April 10, 2014 declaration;

o. Respondent shall also provide unambiguous written notification to the present and
former client(s) that Respondent represented in connection with U.S. Patent
Application No. _ o f the specific potentially false statements described
in ~ 15 of the April 10, 2014 declaration;

p. Respondent shall also provide unambiguous written notification to the present and
former client(s) that Respondent represented in connection with U.S. Patent
Application No._ofthe specific potentially false statements described
in ~ 16 of the April 10, 2014 declaration and the potential backdating of
certificates of mailing described in ~ 17 of the Apri110, 2014 declaration;

q. Respondent shall also provide unambiguous written notification to the present and
former client(s) that Respondent represented in connection with U.S. Patent
Application No. _ o f the potential backdating of certificates of mailing
described in ~ 17 of the April 10, 2014 declaration; ,

r. Respondent shall also provide unambiguous written notification to the present and
former client(s) that Respondent represented in connection with U.S. Patent

2~application serial number identified in ~ 14~ 10,2014 declaration as


" _ " is incorrect. The correct serial number i s _

5
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 70 of 142

Application No, _ o f the potential backdating of certificates of mailing


described in 'If 17 of the April 10, 2014 declaration;

s, Respondent shall also provide unambiguous written notification to the present and
former client(s) that Respondent represented in connection with U,S, Patent
Application N o , _ o f t h e potential backdating of certificates of mailing
described in 'If 17 of the April 10, 2014 declaration;

t, Respondent shall also provide unambiguous written notification to the present and
former client(s) that Respondent represented in counection with U, S, Patent
Application N o , _ o f t h e potential backdating of certificates of mailing
described in 'If 17 of the Apri110, 2014 declaration;

u, Respondent shall also provide unambiguous written notification to the present and
fornier client(s) ~dent represented in connection with ofU,S, Patent
Application N o , _ o f t h e potential backdating of certificates of mailing
described in 'If 17 ofthe April 10, 2014 declaration;

v, Respondent shall also provide unambiguous written notification to the present and
former client(s) that Respondent represented in connection with U,S, Patent
Application No, _ o f the potential backdating of certificates of mailing
described in 'If 17 of the April 10, 2014 declaration;

w, Respondent shall also provide unambiguous written notification to the present and
former client(s) ~dent represented in counection with U,S, Patent
Application N o , _ of the potential backdating of certificates of mailing
described in 'If 17 ofthe April 10, 2014 declaration;

x, Respondent shall also provide unambiguous written notification to the present and
former client(s) that Respondent represented in connection with ofU,S, Patent
Application No, _ o f the potential backdating of certificates of mailing
described in 'If 17 of the April 10, 2014 declaration; ,

y. Respondent shall also provide unambiguous written notification to the present and
former client(s) that Respondent represented in connection with U.S. Patent
Application No. _ o f the potential backdating of certificates of mailing
described in 'If 17 of the Apri110, 2014 declaration;

z. Respondent shall also provide unambiguous written notification to the present and
former client(s) that Respondent represented in connection with U.S. Patent
Application N o . _ o f t h e potential backdating of certificates of mailing
described in 'If 17 of the Apri110, 2014 declaration;3 ,

3 The patent application serial number identified in ~ 14 of the Apri110, 2014 declaration as
' _ ' is incorrect. The correct serial number i s _

6
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 71 of 142

aa. Respondent shall also provide unambiguous written notification to the present and
former client(s) ~dent represented in connection with U.S. Patent
Application N o . _ o f t h e potential backdating of certificates of mailing
described in ~ 17 of the April 10, 2014 declaration;

bb. Within 120 days of the day that the Final Order is signed, Respondent shall
submit the following to the OED Director: (1) an affidavit or declaration attesting
to his compliance with the terms of this Agreement and the Final Order for
notifying present and former client(s) as set forth in subparagraphs i. through aa.,
above, and (2) a copy of the correspondence to clients, including the written
notifications transmitted to the current and former client(s), evidencing his
compliance with the terms of this Agreement and the Final Order for notifying
present and former client(s); the client correspondence provided to the OED in
accordance with this subparagraph shall be marked "CONFIDENTIAL" by the
Respondent, and the OED shall keep the correspondence confidential;

cc. (1) lfthe OED Director is of the good faith opinion that Respondent, during
Respondent's probationary period, failed to comply with any provision of the
Agreement, this Final Order, or any provision of the USPTO Rules of
Professional Conduct, the OED Director shall:

.(A) Issue to Respondent an Order to Show Cause why the USPTO


Director should not enter an order immediately suspending Respondent for up
to twenty-four (24) months for the violation set forth in paragraph 19, above;

(B) Send the Order to Show Cause to Respondent at the last


address of record Respondent furnished to the OED Director pursuant to
. 37 C.F.R. § 11.11; and

(C) Grant Respondent thirty (30) days to respond to the Order to


Show Cause; and

(2) In the event that after the 3 O-day period for response and consideration of the
response, if any, received from Respondent, the OED Director continues to be of
the opinion·that Respondent, during Respondent's probationary period, failed to
comply with any provision of the Agreement, this Final Order, or any provision of
the USPTO Rilles of Professional Conduct, the OED Director shall:

(A) Deliver to the USPTO Director: (i) the Order to Show Cause;
(ii) Respondent's response to the Order to Show Cause, if any; and
(iii) argument and evidence causing the OED Director to be of the opinion that
Respondent, during Respondent's probationary period, failed to comply with
any provision of the Agreement, Final Order, or any provision of the USPTO
Rules of Professional Conduct; and

7
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 72 of 142

(B) Request that the USPTO Director enter an order immediately


suspending Respondent for up to twenty-four (24) months for the violation set .
forth in paragraph 19, above;

dd. Nothing herein shall prevent the OED Director from seeking discipline for the
misconduct leading to Respondent's suspension pursuant to the preceding
subparagraph;

ee. In the event the USPTO Director suspends Respondent pursuant to subparagraph
cc., above, and Respondent seeks a review of the suspension, any such review of
the suspension shall not operate to postpone or otherwise hold in abeyance the
suspension;

ff. The OED Director shall comply with 37 C.F.R. § 11.59 exceptthat.
and all patent application serial numbers shall be redacted
from the Final Order.

gg. The OED Director shall electronically publish the Final Order at the Office of
Enrollment and Discipline's electronic ForA Reading Room, which is publicly
accessible at http://e-foia.uspto. govlFoialOEDReadingRoom.jsp;

hh. The OED Director shall publish a notice in the Official Gazette that is materially
consistent with the following:

Notice of Discipline

This notice concerns Tracy W. Druce of Houston, Texas (Registration No.


35,493), who previously left the United States Patent and Trademark Office
("USPTO" or "Office") register of practitioners. The USPTO Director has
ordered that, if Mr. Druce is reinstated to the register of practitioners, then he
shall be suspended from practice before the Office in patent, trademark, and
other non-patent matters for twenty-four (24) months, with the entirety of the
suspension stayed, for violating 37 C.F.R. § 10.77(c) (a practitioner shall not
neglect a legal matter entrusted to the practitioner), Mr . .Druce wi11 also be
required to serve a twenty-four (24) month period of probation upon being
reinstated to the register ..

Mr. Druce was responsible for the supervision of a non-lawyer


assistant who, from at least 2004 through 2006, submitted, with intent
to deceive, knowingly false statements to the Office in many patent
applications that Mr, Druce was responsible for prosecuting on behalf
of clients. The non-lawyer assistant did the following: (1) fabricated
email confirmation messages and submitted the fabricated emails to
the Office as evidence that papers had been sent to the Office via
facsimile transmission when, in fact, the papers were never sent to the

8
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 73 of 142

Office; (2) affixed USPTO receipt stamps to postcards and submitted


the doctored postcard receipts to the Office as evidence that the Office
had received papers when, in fact, the papers were never sent to the
Office; (3) fabricated a United States Postal Service Express Mail label
that falsely represented that a patent application had been mailed to the
Office on a certain date when, in fact, the application had never been
sent to the Office; and (4) backdated certificates of mailing that falsely
represented that papers had beep mailed to the Office weeks and/or
months earlier than they actually had been sent.

The violation of37 C.F.R. § 10.77(c) is predicated upon Mr. Druce


not adequately supervising a non-lawyer assistant.

Mr. Druce represents that he did not have actual knowledge of the
non-lawyer assistant's false submissions to the Office, and the non-
lawyer assistant represents that he acted alone and kept his misconduct
secret from Mr. Druce.

In reaching a settlement with Mr. Druce, OED Director took into


consideration the following: (a) the non-lawyer assistarit's misconduct
occurred many years ago in 2004, 2005, and 2006; (b) Mr. Druce
cooperated with the investigation of the facts and circumstances
involved in this disciplinary proceeding; and (c) Mr. Druce will take
prompt action to notify present and former clients about the
misconduct committed in patent applications where patents were
granted.

This action is the result of a settlement agreement between Respondent


and the OED Director pursuant to the provisions of 35 U.S.C.
§§ 2(b)(2)(D) and 32 and 37 C.F.R. §§ 11.26 and 11.59. Disciplinary
decisions involving practitioners are posted for public reading at the
Office of Enrollment and Discipline Reading Room, available at:
http://e-foia.uspto.gov/Foia/OEDReadingRoom.jsp.

ii. Nothing in this Agreement or the Final Order approving this Agreement shall
prevent the Office from considering the record of this disciplinary proceeding (1)
when addressing any further complaint or evidence of the same or similar
misconduct concerning Respondent brought to the attention of the Office; andlor
(2) in any future disciplinary proceeding against Respondent (a) as an aggravating
factor to be taken into consideration in determining any discipline to be imposed
andlor (b) to rebut any statement or representation by or on Respondent's behalf;

jj. The OED Director shall file a motion with the administrative law judge requesting
the dismissal of the pending disciplinary proceeding within fourteen (14) days of
the date ofthe Final Order; and

9
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 74 of 142

Ide The OED Director and Respondent shall each bear their own costs incurred to date
and in carrying out the terms of this Agreement and the Final Order.

The foregoing is understood and agreed to by:

SEP - 5 20H
Wi JAMES O. PAYNE Date
Deputy General Counsel for General Law
United States Patent and Trademark Office

on behalf of

Michelle K.. Lee


Deputy Under Secretary of Commerce for Intellectual Property
and Deputy Director of the United States Patent and Trademark Office

cc: Director ofthe Office of Enrollment and Discipline


United States Patent and Trademark Office

Abbe David Lowell


Chadbourne & Parke LLP
30 Rockefeller Plaza, New York, NY 10112
Respondent's Counsel

Christopher Man
Chadbourne & Parke LLP
1200 New Hampshire Ave N.W., Washington, DC 20036
Respondent's Counsel

10
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 75 of 142

EXHIBIT​ ​J
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 76 of 142

UNITED STATES PATENT AND TRADEMARK OFFICE


BEFORE THE DIRECTOR OF THE
UNITED STATES PATENT AND TRADEMARK OFFICE

In the Matter of: )


)
Leonard Tachner, ) Proceeding No. D20l4-22
)
Respondent )
)

FINAL ORDER

Pursuant to 37 C.F.R. § l1.27(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 of Resignation Pursuant to

37 C.F.R. § 11.27 executed by Leonard Tachner ("Respondent") on June 2, 2014. Respondent

submitted the affidavit 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 of Resignation shall be approved

and Respondent shall be excluded on consent from practice before the Office in patent,

trademark, and other non-patent matters commencing on the date of this Final Order.

Jurisdiction

Respondent of San Jose, California, is a registered patent attorney (Reg. No. 26,344) and

is subject to the USPTO Rules of Professional Conduct, 37 C.F.R. § 11.101, et seq.

See 37 C.F.R. § 11.19(a).!

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 of Resignation and to exclude Respondent

1 The USPTO Code of Professional Responsibility applies to practitioner misconduct


that occurred prior to May 3, 2013, while the USPTO Rules of Professional Conduct,
37 C.F.R. § 11.101 et seq., apply to a practitioner misconduct that occurred after May 2, 2013.
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 77 of 142

on consent from practice before the Office in patent, trademark, and other non-patent matters

before the Office.

Respondent's Affidavit of Resignation

Respondent acknowledges in his June 2, 2014 Affidavit of Resignation that:

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

coercion or duress.

2. He is aware that the OED Director opened an investigation of allegations that

that he violated the USPTO Rules of Professional Conduct, namely: OED File No. G2239. The

investigation concerned allegations, inter alia, that:

a. By Final Order dated April 12, 2013, Respondent was suspended for five years
from the practice of patent, trademark and other non-patent matters before the
USPTO for neglecting patent matters by allowing patents to expire for not timely
paying maintenance fees, fora failing to inform clients of important USPTO
correspondence and giving misleading information to clients about the status of
their patents. He also failed to conduct an inquiry reasonable under the
circumstances prior to signing and filing certain submissions with the USPTO;

b. By Final Order dated April 12,2013, Respondent was granted limited recognition
to practice before the USPTO commencing on the date the Final Order and
expiring thirty (30) days after the date the Final Order is signed, with such limited
recognition being granted for the sole purpose of facilitating Respondent's
compliance with the provisions of37 C.F.R. § 11.58(b).

c. Respondent engaged in the unauthorized practice oflaw in the prosecution of U.S.


Trademark application nos. 85/906,074 and 85/906,085 by representing clients
before the USPTO while he was not authorized to do so; and

d. Respondent did not inform his clients or the trademark examiner in U.S.
Trademark application nos. 85/906,074 and 85/906,085 that he was not authorized
to represent the clients before the USPTO.

3. He is aware that the disciplinary complaint pending against him alleges that he

violated the following provisions of the USPTO Rules of Professional Conduct:

a. 37 C.F.R. § l1.804(a) (proscribing engaging in conduct that is a violation ofthe


USPTO Rules of Professional Conduct);

2
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 78 of 142

b. 37 C.F.R. § 11.804(c) (proscribing engaging in conduct involving dishonesty,


fraud, deceit, or misrepresentation);

c. 37 C.F.R. § 11.804(d) (proscribing engaging in conduct that is prejudicial to the


administration of justice); and

d. 37 C.F.R. § 11.505 (proscribing the unauthorized practice oflaw).

4. Without admitting to any of the allegations at issue in the pending

disciplinary investigation or to violating any of the USPTO Rules of Professional Conduct,

Respondent acknowledges that, if and when he applies for reinstatement under 37 C.F.R. §

11.60, the OED Director will conclusively presume, for the purpose of determining the

application for reinstatement, that (a) the allegations set forth in OED File No. G2239 and

USPTO disciplinary proceeding D2014-22 are true and (b) he could not have successfully

defended himself against such allegations.

5. Respondent has fully read and understands 37 C.F.R. §§ I 1.5 (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 patent, trademark, and other

non-patent matters.

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

patent, trademark, and other non-patent matters.

Exclusion on Consent

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

Affidavit of Resignation complies with the requirements of37 C.F.R. § 11.27(a). Hence, it

is ORDERED that:

a. Respondent's Affidavit of Resignation shall be, and hereby is, approved;

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

3
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 79 of 142

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

Final Order;

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

of Emollment and Discipline's electronic ForA Reading Room, which is publicly accessible

at http://e-foia.uspto.govlFoialOEDReadingRoom.jsp;

d. The OED Director shall publish the following notice in the Official

Gazette:

Notice of Exclusion on Consent

This notice concerns Leonard Tachner of San Jose California, a registered


patent attorney (Reg. No. 26,344). The Director of the United States Patent
and Trademark Office ("USPTO" or "Office") has accepted Mr. Tachner's
affidavit of resignation and ordered his exclusion on consent from practice
before the Office in patent, trademark, and other non-patent matters.

Mr. Tachner voluntarily submitted his affidavit at a time when a disciplinary


investigation was pending against him. The investigation concerned
allegations, inter alia, that;
a) By Final Order dated April 12,2013, Respondent was suspended for five
years from the practice of patent, trademark and other non-patent matters
before the USPTO for neglecting patent matters by allowing patents to expire
for not timely paying maintenance fees, for failing to inform clients of
important USPTO correspondence and giving misleading information to
clients about the status of their patents. He also failed to conduct an inquiry
reasonable under the circumstances prior to signing and filing certain
submissions with the USPTO;
b) By Final Order dated April 12, 2013, Respondent was granted limited
recognition to practice before the USPTO commencing on the date the Final
Order and expiring thirty (30) days after the date the Final Order is signed,
with such limited recognition being granted for the sole purpose offacilitating
Respondent's compliance with the provisions of37 C.F.R. § 11.58(b).
c) Respondent engaged in the unauthorized practice of law in the prosecution
of U.S. Trademark application nos. 85/906,074 and 85/906,085 by
representing clients before the USPTO while he was not authorized to do so;
and
d) Respondent did not inform his clients or the trademark examiner in U.S.
Trademark application nos. 85/906,074 and 85/906,085 that he was not
authorized to represent the clients before the USPTO.

4
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 80 of 142

The disciplinary investigation concerned allegations that Respondent violated


the following provisions of the USPTO Rules of Professional Conduct:
a. 37 C.F.R. § 11.804(a) (proscribing engaging in conduct that is a violation of
the USPTO Rules of Professional Conduct);
b. 37 C.F.R. § 11.804(c) (proscribing engaging in conduct involving
dishonesty, fraud, deceit, or misrepresentation);
c. 37 C.F.R. § 1l.804(d) (proscribing engaging in conduct that is prejudicial
to the administration of justice); and
d. 37 C.F.R. § 11.505 (proscribing the unauthorized practice oflaw).

While Mr. Tachner did not admit to any ofthe allegations at issue in the
pending disciplinary investigation or to violating any of the Disciplinary Rules
of the USPTO Code of Professional Conduct, he acknowledged that, if and
when he applies for reinstatement, the OED Director will conclusively
presume, for the purpose of determining the application for reinstatement, that
(i) the allegations set forth in OED File No. G2239 and USPTO disciplinary
proceeding D2014-22 are true, and (ii) he could not have successfully
defended himself against such allegations.

This action is taken pursuant to the provisions of35 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://e-foia. uspto.gov/FoialOEDReadingRoom. j sp.

e. Respondent shall comply with 37 C.F.R. § 11.58;

f. The OED Director shall comply with 37 C.F.R. § 11.59;

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

reinstatement;

h. The OED Director and Respondent shall bear their own costs incurred to date;

and

in carrying out the terms of this agreement

i. USPTO Disciplinary Proceeding No. D2014-22 is hereby dismissed.

(only signature page follows)

5
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 81 of 142

JUN 3 0 2014
Date SO. PAYNE
epu y General Counsel for General Law
it States Patent and Trademark Office
'oJ

on behalf of

Michelle K. Lee
Deputy Under Secretary of Commerce for Intellectual
Property and Deputy Director of the United States Patent and
Trademark Office

cc:

Director of the Office of Enrollment and Discipline


U.S. Patent and Trademark Office

Cameron Weiffenbach
Miles & Stockbridge, P.C.
1751 Pinnacle Drive, Suite 500
McLean, Virginia 22102
Respondent's counsel

6
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 82 of 142

EXHIBIT​ ​K
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 83 of 142
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EXHIBIT​ ​L
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Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 87 of 142

EXHIBIT​ ​M
12/24/2017 Case 5:17-cv-07303Gray Reed Elects New
Document 1-1Shareholders - Gray Reed Mobile
Filed 12/26/17 Page 88 of 142

 (../../../Search)
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Gray Reed Elects New Shareholders


March 1, 2016
Gray Reed & McGraw is proud to announce the election of three new shareholders. Attorneys elected include
Travis Crabtree, Preston Kamin and Gabe Vick.
Travis Crabtree (http://www.grayreed.com/Our-People/Travis-S-Crabtree) focuses his practice on technology,
media and marketing from the Houston o ce, with an emphasis on media communications, online
defamation, privacy, domain name disputes, policy and governmental compliance, software licensing and
audits, copyrights and trademarks, and related transactional documents for start-ups and technology
companies, along with commercial litigation. Prior to earning his J.D. from the University of Houston Law
Center, Travis spent several years in television news. He completed his undergraduate education at the
University of Missouri.

Preston Kamin (http://www.grayreed.com/Our-People/Preston-T-Kamin) practices commercial litigation out of


the rm’s Houston o ce, focusing on oil & gas, real estate, employment disputes and product liability claims.
Preston earned his J.D. from South Texas College of Law. He attended the University of Texas for his
undergraduate education.
Gabe Vick (http://www.grayreed.com/Our-People/Gabe-T-Vick), a civil litigator in the rm’s Houston o ce,
focuses his practice on complex commercial cases. His experience includes breach of contract, product
liability, personal injury, toxic tort, class action, employment, premises liability and maritime claims. Gabe
earned his J.D. from the South Texas College of Law, and attended Texas A&M University for his
undergraduate education.
About Gray Reed & McGraw
Founded in 1985, Gray Reed & McGraw is a full-service, Texas based law rm with more than 120 lawyers
practicing in Dallas and Houston. Gray Reed & McGraw o ers a wide range of legal services including business
litigation, corporate transactions, oil & gas, tax planning and litigation, real estate, healthcare, trusts and
estates, employment law, family law, intellectual property, and bankruptcy. For more information,
visit www.grayreed.com (http://www.grayreed.com/).

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Case 5:17-cv-07303 Document 1-1- Gray Reed 12/26/17
Filed & McGraw LLP Page 89 of 142

OUR PEOPLE PRACTICES INDUSTRIES OUR FIRM NEWS/RESOURCES CAREERS

OUR PEOPLE

OVERVIEW NEWS & RESOURCES BLOGS

Travis Crabtree
Travis Crabtree brings a unique perspective to his litigation, techn
Travis graduated from the University of Missouri School of Journa
television news before embarking on a law career. More recently,
COUNSEL Reed & McGraw, he has opened and helps operate a number of e
background and experience gives him a more personal understan
D: 713.986.7149 desire for efficient and practical legal advice.
T: 713.986.7000 F: 713.730.5811
1300 Post Oak Blvd., Suite 2000, Houston, TX 77056 His technology practice focuses on media communications, online
promotion compliance, domain name disputes, policy and govern
tcrabtree@grayreed.com and audits, copyrights and trademarks, and related transactional
companies. You can explore the legal issues involved in his pract
Assistant
eMediaLaw.com. In addition, Travis represents plaintiffs and defe
Rae Lynn Cuddihy
with a particular emphasis on technology, marketing and media d
D: 713.730.5105
along with fiduciary litigation, partnership and shareholder dispute
rcuddihy@grayreed.com
His commercial litigation experience allows him to counsel clients
disputes, resolving them, trials and appeals. Most importantly, Tra
Education keep his clients out of the courtroom if he can, but aggressively re

Bar Admission Travis earned his undergraduate degree from University of Misso
University of Houston Law Center.
Court Admissions
Representative Experience - Conflicts
Practices
Defense of software audits initiated by the BSA and the SIIA
Prosecute and defend DMCA takedown notices
Reputation management for clients dealing with online defam
protection and counseling with consultants specializing in on
with the Communications Decency Act
Successfully settled DTPA and false advertising claims broug
educational provider after defeating bulk of requested injunct
Successfully defend corporate officer in case brought by ban
Travis S. liabilities for marketing and advertising misrepresentations by
Crabtree Defend minor in cyber-bullying lawsuit and a defendant in a
SELECTED IN 2014 discreet settlement
Counsel and advise clients on copyright and trademark
http://www.grayreed.com/Our-People/Travis-S-Crabtree 1/3
12/24/2017 Travis Crabtree
Case 5:17-cv-07303 Document 1-1- Gray Reed 12/26/17
Filed & McGraw LLP Page 90 of 142

THOMSON REUTERS Assist clients in obtaining domain names that rightfully belon
purchase or arbitration claims
Successfully prevented competitor from using client's tradem
AdWords marketing program through negotiation and litigatio
Counsel clients on data breach issues including required not
Litigation regarding termination and enforceability of various
Create and help execute crisis management and media com
associated with communications internally and externally for
Successfully assisted and defended client in middle of conte
report
Defended defamation claim and obtained judgment for all att
against plaintiff prior to availability of Texas Citizens Participa
Successfully obtained several Freedom of Information ruling
help clients obtain records from various school districts and o
First-chaired a jury trial obtaining a finding that the other side
dollar claim
First-chaired a successful six-day jury trial for a minority part
development partnership. The jury awarded the client 35 tim
partnership for the minority partner's proportionate interest o
Brought a shareholder derivative and shareholder oppressio
seven-figure purchase of the minority shareholder's stock in
company on grounds including misuse of corporate assets, u
the personal benefit of the majority shareholder and misman
Serves as counsel on the national Insurance Brokerage Anti
collected large settlements for claimants nationwide.
Second-chaired a five-day jury trial for an electronic supply c
owed, plus interest and all attorney's fees while defeating the
$750,000
As lead counsel, obtained a summary judgment for a family-
by a former investor in a related transaction dismissing all of
the case was filed
First-chaired the successful defense of a chemical trading co
deficiencies in the shipment of benzene in an international a
Successfully obtained tax rebates on behalf of owners of bus
because the taxing districts failed to provide sufficient interst
Tax Code and the United States Constitution. These matters
various Appraisal Review Board proceedings, bench trials at
to the courts of appeal throughout the State of Texas.
As lead counsel for a civic club, obtained a final summary jud
injunction against various salvage yard operators prohibiting
too close to churches, schools and homes in violation of the
advocating the client 's interest at the courthouse, Travis also
with local state representatives to strengthen legislative enfo
Successfully obtained temporary restraining orders and temp
enforce non-competition agreements against former employe
Obtained a summary judgment as lead counsel in a sexual h
infliction of emotional distress claim against corporate officer
Settled a shareholder derivative lawsuit against officers of fra
confidential amount
Prosecution of several False Claims Act claims with Jim Ree
treasury of millions of dollars by presenting false claims for p

Representative Experience - Transac


Create and monitor social media, online endorsement policie
Federal Trade Commission and NLRB guidelines and other
Draft and negotiate Web and App Development Agreements
Disclosure Agreements and other technology transactional, e
agreements

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Filed & McGraw LLP Page 91 of 142
Assist and draft necessary agreements to transfer or obtain
applications and other technologies
Assist with basic corporate formation and initial documentati
facing technology companies
Negotiated asset purchase agreement of software company
oilfield services company in excess of $20 million
Pro bono counsel for open data citizen journalist program
Draft and negotiate international content licensing agreemen
use in East Asia.
Asses internet security, web-based business plans and proce
software and ERP implementation, outsourcing and technolo
Review and advise clients on legal and regulatory complianc
promotional programs both on and off-line
Review and analyze interactive online promotional programs
state laws and follow-up efforts to comply with Do Not Call la
Review and analyze affiliate marketing programs to avoid py
Advise clients on competitive intelligence efforts to mitigate r
Review and analyze online coupon programs to ensure lega
Draft and monitor customized online privacy policies and term
other businesses under FTC and COPPA guidelines includin
take “anonymous information” to merge with “personally iden
more traditional sales efforts
Review and analyze email marketing efforts to ensure comp

Professional Activities, Memberships


Adjunct Professor at the University of Houston - Clear Lake (
U.S. District Court, Southern District of Texas, Eastern Distri
The United States Supreme Court.
State Bar of Texas - Litigation Section; Computer and Techn
Houston Bar Association - Litigation Section, Sports and Ent
Pro Bono Attorney for the Online Media Legal Network
Parks and Recreation Advisory Board Member – City of Bell
Staff Parish Relations Committee – Bellaire United Methodis
Radio Television Digital News Association, Society of Profes
Information Foundation of Texas, Houston Interactive Market
Houston, Social Media Breakfast Houston
Past - President of the University of Missouri Bayou City Tige
youth sports coach

Past Experience
Sports Videographer and Producer, KCRG-TV9 (ABC), Ceda
Sports Anchor, Reporter, Producer, KOMU-TV8 (NBC), Colu

Honors
Named Top Attorney in Houston by H Texas Magazine (2013
Profiled in 2011 Rising Stars by Super Lawyers (a Thomson
Texas Monthly and Law & Politics magazine "Travis Crabtree
Named a Texas Super Lawyers - Rising Star by Super Lawy
published in Texas Monthly and Law & Politics magazine (20

© 2017 Gray Reed & McGraw LLP All rights reserved worldwide.
Home Our People Practices Industries Our Firm News/Resources Careers Contact Us Site Map Disclaimer Privacy Policy Upload Files Em

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Filed & McGraw LLP Page 92 of 142

Travis Crabtree brings a unique perspective to his litigation, technology, media and marketing
practice. Travis graduated from the University of Missouri School of Journalism and spent
several years in television news before embarking on a law career. More recently, in addition to
serving his clients at Gray Reed & McGraw, he has opened and helps operate a number of e-
commerce businesses. His background and experience gives him a more personal
understanding of his clients’ needs and their desire for efficient and practical legal advice.

His technology practice focuses on media communications, online defamation, privacy,


marketing and promotion compliance, domain name disputes, policy and governmental
compliance, software licensing and audits, copyrights and trademarks, and related transactional
documents for start-ups and technology companies. You can explore the legal issues involved in
his practice by reading his blog, eMediaLaw.com. In addition, Travis represents plaintiffs and
defendants in complex business matters with a particular emphasis on technology, marketing
and media disputes, copyrights and trademarks, along with fiduciary litigation, partnership and
shareholder disputes and other “business divorce” cases. His commercial litigation experience
allows him to counsel clients at all stages of conflict from avoiding disputes, resolving them,
trials and appeals. Most importantly, Travis’s courtroom experience helps him keep his clients
out of the courtroom if he can, but aggressively represented if that is what it takes.

Travis earned his undergraduate degree from University of Missouri and his J.D., cum
laude, from University of Houston Law Center.

Representative Experience - Conflicts and Disputes


Defense of software audits initiated by the BSA and the SIIA
Prosecute and defend DMCA takedown notices
Reputation management for clients dealing with online defamation claims, brand
awareness and protection and counseling with consultants specializing in online reputation
management dealing with the Communications Decency Act
Successfully settled DTPA and false advertising claims brought by attorney general against
online educational provider after defeating bulk of requested injunctive relief
Successfully defend corporate officer in case brought by bankruptcy trustee claiming
individual liabilities for marketing and advertising misrepresentations by others
Defend minor in cyber-bullying lawsuit and a defendant in a revenge-porn case to
successful and discreet settlement
Counsel and advise clients on copyright and trademark
Assist clients in obtaining domain names that rightfully belong to them through negotiations,
purchase or arbitration claims
Successfully prevented competitor from using client's trademarked name as part of a
Google AdWords marketing program through negotiation and litigation
Counsel clients on data breach issues including required notifications and best practices

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Filed & McGraw LLP Page 93 of 142

Litigation regarding termination and enforceability of various software licenses


Create and help execute crisis management and media communications plans to manage
the risk associated with communications internally and externally for various clients
Successfully assisted and defended client in middle of contentious investigative television
news report
Defended defamation claim and obtained judgment for all attorneys' fees in defense of
slander claim against plaintiff prior to availability of Texas Citizens Participation Act (anti-
SLAPP)
Successfully obtained several Freedom of Information rulings from the Texas Attorney's
General to help clients obtain records from various school districts and other public entities
First-chaired a jury trial obtaining a finding that the other side released the client from a
multi-million dollar claim
First-chaired a successful six-day jury trial for a minority partner expelled from a real estate
development partnership. The jury awarded the client 35 times the amount originally
offered by the partnership for the minority partner's proportionate interest of the
partnership's assets.
Brought a shareholder derivative and shareholder oppression action that ultimately forced
the seven-figure purchase of the minority shareholder's stock in a prominent software
development company on grounds including misuse of corporate assets, usurpation of
corporate opportunities for the personal benefit of the majority shareholder and
mismanagement of the company
Serves as counsel on the national Insurance Brokerage Anti-Trust MDL that has netted and
collected large settlements for claimants nationwide.
Second-chaired a five-day jury trial for an electronic supply company collecting the entire
amount owed, plus interest and all attorney's fees while defeating the defendant's DTPA
counterclaim for $750,000
As lead counsel, obtained a summary judgment for a family-owned company and its
owners sued by a former investor in a related transaction dismissing all of the plaintiff's
claims four months after the case was filed
First-chaired the successful defense of a chemical trading company sued for the alleged
deficiencies in the shipment of benzene in an international arbitration proceeding
Successfully obtained tax rebates on behalf of owners of business and commercial aircrafts
because the taxing districts failed to provide sufficient interstate allocation as required by
the Texas Tax Code and the United States Constitution. These matters required first-chair
representation at various Appraisal Review Board proceedings, bench trials at the district
court level and arguments to the courts of appeal throughout the State of Texas.
As lead counsel for a civic club, obtained a final summary judgment resulting in the
permanent injunction against various salvage yard operators prohibiting them from
operating their businesses too close to churches, schools and homes in violation of the
Texas Transportation Code. While advocating the client 's interest at the courthouse, Travis
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also assisted the client in its effort to work with local state representatives to strengthen
legislative enforcement procedures.
Successfully obtained temporary restraining orders and temporary injunctions as lead
counsel to enforce non-competition agreements against former employees and agents
Obtained a summary judgment as lead counsel in a sexual harassment, assault and
intentional infliction of emotional distress claim against corporate officer
Settled a shareholder derivative lawsuit against officers of fracing company for substantial
confidential amount
Prosecution of several False Claims Act claims with Jim Reed against companies bilking
the federal treasury of millions of dollars by presenting false claims for payment to the
Federal Government.

Representative Experience - Transactional & Start-ups


Create and monitor social media, online endorsement policies for various clients to comply
with the Federal Trade Commission and NLRB guidelines and other regulations
Draft and negotiate Web and App Development Agreements, Software Licenses and Non-
Disclosure Agreements and other technology transactional, e-commerce, consumer and
privacy law agreements
Assist and draft necessary agreements to transfer or obtain intellectual property for mobile
applications and other technologies
Assist with basic corporate formation and initial documentation for start-ups to help mitigate
risks facing technology companies
Negotiated asset purchase agreement of software company involving open public licenses
to major oilfield services company in excess of $20 million
Pro bono counsel for open data citizen journalist program
Draft and negotiate international content licensing agreement for educational animated
series for use in East Asia.
Asses internet security, web-based business plans and procedures, cloud-computing
agreements, software and ERP implementation, outsourcing and technology independent
contractor agreements
Review and advise clients on legal and regulatory compliance for proposed marketing and
promotional programs both on and off-line
Review and analyze interactive online promotional programs to ensure compliance with
numerous state laws and follow-up efforts to comply with Do Not Call laws
Review and analyze affiliate marketing programs to avoid pyramid scheme concerns
Advise clients on competitive intelligence efforts to mitigate risks and ensure legal
compliance
Review and analyze online coupon programs to ensure legal compliance and mitigate risks

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Filed & McGraw LLP Page 95 of 142

Draft and monitor customized online privacy policies and terms of use for internet
marketing and other businesses under FTC and COPPA guidelines including complex
marketing programs that take “anonymous information” to merge with “personally
identifiable information” to follow-up with more traditional sales efforts
Review and analyze email marketing efforts to ensure compliance with CAN-SPAM

Professional Activities, Memberships & Affiliations


Adjunct Professor at the University of Houston - Clear Lake (2014-2015)
U.S. District Court, Southern District of Texas, Eastern District of Texas; The Fifth Circuit of
Appeals; The United States Supreme Court.
State Bar of Texas - Litigation Section; Computer and Technology Section
Houston Bar Association - Litigation Section, Sports and Entertainment Law Section
Pro Bono Attorney for the Online Media Legal Network
Parks and Recreation Advisory Board Member – City of Bellaire
Staff Parish Relations Committee – Bellaire United Methodist Church
Radio Television Digital News Association, Society of Professional Journalists; Freedom of
Information Foundation of Texas, Houston Interactive Marketing Association, SEMPO,
GroundUp Houston, Social Media Breakfast Houston
Past - President of the University of Missouri Bayou City Tigers Alumni Association, Dads'
Clubs, youth sports coach

Past Experience
Sports Videographer and Producer, KCRG-TV9 (ABC), Cedar Rapids, Iowa
Sports Anchor, Reporter, Producer, KOMU-TV8 (NBC), Columbia, Missouri

Honors
Named Top Attorney in Houston by H Texas Magazine (2013-2014)
Profiled in 2011 Rising Stars by Super Lawyers (a Thomson Reuters company) as
published in Texas Monthly and Law & Politics magazine "Travis Crabtree's Second Dream
Job"
Named a Texas Super Lawyers - Rising Star by Super Lawyers (a Thomson Reuters
company) as published in Texas Monthly and Law & Politics magazine (2009 - 2014)

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EXHIBIT​ ​N
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12/24/2017 BBB Business1-1
Case 5:17-cv-07303 Document Profile |Filed
Trademark Engine, LLCPage 98 of 142
12/26/17

(/)  What are you looking for?


MENU

This Business Is Not BBB Accredited


Trademark Engine, LLC
Business Information
1 year in business
12605 East Freeway Suite 540
Houston, TX 77015

Additional Phone Numbers


(877) 721-4579

Additional Email Addresses


info@trademarkengine.com

Additional Website Addresses


http://trademarkengine.trustab.org (http://trademarkengine.trustab.org)

BBB File Opened: 08/29/2016


Business Started: 06/17/2016

Type of Entity
Limited Liability Company (LLC)

Business Management
Mr. Travis Crabtree, Owner

Business Category
Trademark Consultant

Overview
This company specializes in trademark screening, processing and research. 

BBB Reason for Ratings


BBB rating is based on 13 factors: Get the details about the factors considered.
(https://www.bbb.org/council/overview-of-bbb-grade)
Based on BBB files, this business has a BBB Rating of No Rating. The reason is as follows:
BBB does not have sufficient information to issue a rating on this business.

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12/24/2017 BBB Business1-1
Case 5:17-cv-07303 Document Profile |Filed
Trademark Engine, LLCPage 99 of 142
12/26/17

BBB Reports On
Licensing
Licensing information is provided in the BBB Business Profiles to inform the public about industries that
may require professional licensing, bonding, or registration. Better Business Bureau encourages you to
check with the appropriate agency to be certain any requirements are currently being met.

Advertising Review
BBB promotes truth in advertising by contacting advertisers whose claims conflict with the BBB Code of
Advertising. These claims come to our attention from our internal review of advertising, consumer
complaints and competitor challenges. BBB asks advertisers to substantiate their claims, change ads to
make offers more clear to consumers, and remove misleading or deceptive statements.

Government Actions
BBB reports on known significant government actions involving the business's marketplace conduct.

Out of Business
BBB reports on a company that is out of business for one year from the date the company closes its doors
or ceases to do business.

Misuse of Better Business Bureau Name/Logo


BBB reports on unauthorized use of the Better Business Bureau's name and/or logo for as long as the
business continues to use it in any advertising, or for one year after the business ceases any repeated
unauthorized uses.

Bankruptcy
BBB reports on a business’s bankruptcy as long as the business remains in bankruptcy.

Mail Returned
BBB reports when mail sent to the business was returned by the Postal Service.

BBB Rating Scorecard

This Business Is Not BBB Accredited


Trademark Engine, LLC

NR
BBB Rating System Overview (https://www.bbb.org/council/overview-of-bbb-grade)

Customer Review Rating:

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12/24/2017 BBB Business1-1
Case 5:17-cv-07303 Document ProfileFiled
| Trademark Engine, LLC
12/26/17 Page 100 of 142

The BBB Customer Review Rating represents the customer's opinion of the business. The Customer Review Rating
percentages are based on the total number of positive, neutral, and negative reviews posted.

There are NO reviews for this business.


Be the first to leave a review!

[2] Total Customer Complaints (https://www.bbb.org/houston/business-reviews/trademark-agents-and-


consultants/trademark-engine-llc-in-houston-tx-90044544/reviews-and-complaints?
section=complaints)

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BBB Business Profiles are provided solely to assist you in exercising your own best judgment. Information in this
BBB Business Profile is believed reliable, but not guaranteed as to accuracy.
When considering complaint information, please take into account the company's size and volume of transactions,
and understand that the nature of complaints and a firm's responses to them are often more important than the
number of complaints.
BBB Business Profiles generally cover a three-year reporting period. BBB Business Profiles are subject to change
at any time. If you choose to do business with this business, please let the business know that you contacted BBB
for a BBB Business Profile.

For Consumers
File a Complaint (/consumer-complaints/file-a-complaint/get-started)
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About BBB
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Mission & Vision (https://www.bbb.org/en/us/mission-and-vision)

© 2017, Council of Better Business Bureaus, Inc., separately incorporated Better Business
Bureau organizations in the US, Canada and Mexico, and BBB Institute for Marketplace
Trust. All Rights Reserved.

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Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 101 of 142

EXHIBIT​ ​O
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 102 of 142

DESCRIPTION
Everest Clay is a real estate
brokerage in California that will
also do property management
and create a website to help
them find their real house as well
as find their own real estate
investments. We will also self
manage my properties.
Chat on December 5, 2017 at 12:39pm
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 103 of 142
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 104 of 142

EXHIBIT​ ​P
12/24/2017 Please
Case CONFIRM Your Application Document
5:17-cv-07303 Details - Trademark
1-1Engine - raj@legalforcelaw.com
Filed 12/26/17 Page - LegalForce
105 ofRAPC
142Worldwide Mail

P l e a s e C O N F I R M Yo u r
Application Details
We are ready to file your application. Please confirm the information below and approve

your application.

Three Important Notes:

1. When appropriate, we amend your description of your goods or services to

match the USPTO ID Manual which are pre-approved descriptions.

2. We have collected your $275 USPTO filing fee, which is the government fee for

your trademark paperwork. By approving, these fees will become non-

refundable due to the USPTO's No-Refund policy.

Approve by “signing” here by using a forward slash, then your name, and a forward

slash. Example /John Doe/. By signing and approving, you are verifying subject to

perjury that:

1. You are the owner of the mark, it is used in commerce or you intend to use it in

commerce and believe you have the right to do so and the specimen (if

applicable) shows the mark as used in commerce.

2. To the best of your knowledge and belief, no other persons, except, if

applicable, concurrent users, have the right to use the mark in commerce,

either in the identical form or in such near resemblance as to be likely, when

used on or in connection with the goods/services of such other persons, to

cause confusion or mistake, or to deceive.

3. To the best of the signatory's knowledge, information, and belief, formed after

an inquiry reasonable under the circumstances, the allegations and other

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Case CONFIRM Your Application Document
5:17-cv-07303 Details - Trademark
1-1Engine - raj@legalforcelaw.com
Filed 12/26/17 Page - LegalForce
106 ofRAPC
142Worldwide Mail
factual contentions made above have evidentiary support.

4. You understand that willful false statements and the like are punishable by fine

or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false

statements and the like may jeopardize the validity of the application or

submission or any registration resulting therefrom, and thus you declare that all

statements made of your own knowledge are true and that all statements made

on information and belief are believed to be true.

YOUR APPLICATION SUMMARY

Mark: Everest Clay Realtors

Type: Name

Owner of Mark: Raj Abhyanker

Address: 1580 W. El Camino Real Suite 14, Mountain View, Mountain View, CA, 94040

Email: raj@legalforcelaw.com

Phone: 4083983126

First Date of Use: 12/05/2002

First Use in Commerce: 12/05/2002

Class Type: Services

Class: 035 - Advertising and Business Management and Office Functions

Description: Everest Clay is a real estate brokerage in California that will also do

property management and create a website to help them find their real house as well as

find their own real estate investments. We will also self manage my properties.

SUGGESTED Class: 036 - Insurance and Financial and Real Estate Affairs

SUGGESTED Description: Real estate brokerage; Real estate service, namely, rental

property management; Providing an internet website portal offering information in the

field of real estate concerning the purchase and sale of new and resale homes and

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Case CONFIRM Your Application Document
5:17-cv-07303 Details - Trademark
1-1Engine - raj@legalforcelaw.com
Filed 12/26/17 Page - LegalForce
107 ofRAPC
142Worldwide Mail
condos; Real estate investment services; Real estate investment services in the nature

of purchasing and selling of real estate for others; Financial investment in the field of

{real estate}; Real estate management services

Additional Comments: If you would like to file with the suggested class or class

description please sign application as is. Thank you!

YOUR NEXT STEPS

If you believe there is a need for any changes, or you are ready to provide your

signature, please click on the "Submit Signature OR Request Change" button below. You

will be taken to your account where you can take further action. As always reach out to

your Trademark Engine team anytime via chat, email at support@trademarkengine.com,

or phone 1-877-721-4579.

Submit Signature OR Request Change

1 (877) 721-4579 support@trademarkengine.com Contact us

© 2017 Trademark Engine, LLC. All Rights Reserved.

1 In some circumstances, we may be able to use the less-available TEAS PLUS system which means we will pay $225 to
the USPTO which streamlines the process. If we are able to use it without changing the substance of your application, we
will use it and retain the difference between the TEAS RF filing fee and the TEAS Plus filing fee as a result of the additional
processing by the Trademark Engine. By signing here, you authorize the Trademark Engine to sign your name on the
application in the exact same format.

Trademark Engine provides information and software only. Trademark Engine is not a "lawyer referral service" and does
not provide legal advice or participate in any legal representation. Use of Trademark Engine is subject to our Terms of
Service and Privacy Policy.

https://mail.google.com/mail/u/0/#search/%22Trademark+Engine%22/160531f671b575a7 3/3
12/24/2017 Your5:17-cv-07303
Case Trademark Engine LLC Document
receipt [#1608-9720]
1-1 - raj@legalforcelaw.com
Filed 12/26/17 - LegalForce RAPC
Page 108 ofWorldwide
142 Mail

---------- Forwarded message ----------


From: Trademark Engine LLC <receipts+vHHVAYU87IGmN2y9bFeQ@stripe.com>
Date: Tue, Dec 5, 2017 at 12:51 PM
Subject: Your Trademark Engine LLC receipt [#1608-9720]
To: raj@legalforcelaw.com

Thanks for your $198 payment to Trademark Engine LLC.

$198 at Trademark Engine LLC

Raj Abhyanker — 1849         


 

December 5, 2017 #1608-9720

Description Amount

Basic Trademark Registration Package $198.00

Total $198.00

Have a question or need help? Send us an email or give us a call at


+1 877-721-4579.

Something wrong with the email? View it in your browser.


You are receiving this email because you made a purchase at Trademark
Engine LLC.

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Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 109 of 142

EXHIBIT​ ​Q
12/24/2017 Comprehensive Search Report Completed
Case 5:17-cv-07303 Document- Trademark
1-1Engine - raj@legalforcelaw.com
Filed 12/26/17 Page - LegalForce
110 ofRAPC
142Worldwide Mail

Trademark Engine <support@trademarkengine.com> Dec 6


to me

Comprehensive SearchReport
Because the application processing fees are non-refundable, we have not processed your application

before giving you a chance to review your search results. Your searchresults have been included in this

email for your review. Now that your results are available, let us know what you would like us to do before

we process your application. PLEASE NOTE THAT IF YOU DO NOT PICK ONE OF THESE OPTIONS

WITHIN 7 DAYS, WE WILL PROCESS YOUR ORDER AND YOUR APPLICATION PROCESSING FEE

WILL BECOME NON-REFUNDABLE. We are not a law firm and cannot provide legal advice regarding

your search results. You may want to review them with counsel to consider your options. After you have

reviewed your search results listed below, you can tell us what to do through your online account and notify

us there.

Your results are below. The first section is the federal trademark search results. You can click on the

hyperlinked serial number to learn more about these other filings. Next is the state trademark results.

Unfortunately, many of the state results do not offer online viewing. Next comes the common law entity

results which include business filings and several business directories. Following that is the common law

web results that show where your mark may be in use online by others. Finally, if applicable, you will find

the international results which includes hits from the World Intellectual Property Organization ("WIPO") and

the European Union.

Federal Trademarks Search Results:

DATE
TRADEMARK STATUS SERIAL
FILED

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12/24/2017 Comprehensive Search Report Completed
Case 5:17-cv-07303 Document- Trademark
1-1Engine - raj@legalforcelaw.com
Filed 12/26/17 Page - LegalForce
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EVEREST CLAY 02/23/2002 ABANDONED- 78110674
REALTORS FAILURE TO
RESPOND
OR LATE
RESPONSE

State Trademarks Search Results:

No pertinent results found.

Common Law ENTITY Search Results:

No pertinent results found.

Common Law WEB Search Results:

PAGE TITLE WEB LINK


CENTURY 21 Everest
Realty Group specializes https://c21everest.com/
in Midvale UT Homes ...
Kenney & Everest Real
Estate, Inc. | Professional http://www.everestmwamba.com/
Property ...
Clay Anderson | Colliers
http://www.colliers.com/clay.anderson
International
J. Peter Everest |
Roseville MN | Keller http://www.kw.com/kw/agent/petereverest
Williams Realty
https://www.realtyonegroup.
Realty ONE Group | Clay
com/realestateagent/clay-bridgewater-
Bridgewater
6429092
Realty ONE Group | https://www.realtyonegroup.
Aaron Clay com/realestateagent/aaron-clay-6091666
Doug Cary, CENTURY 21
https://www.century21.com/real-estate-
Real Estate Agent in
agent/profile/doug-cary-P25380762
Centerville, UT
Local Real Estate: Homes https://www.coldwellbanker.com/homes-
for Sale — Rothschild, WI for-sale/list/wausau-wi/by-city/Rothschild,
— Coldwell Banker WI-18665/detailed
https://mail.google.com/mail/u/0/#search/search+report+trademark+engine/1602c5a0f1c25c6f 2/5
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Case 5:17-cv-07303 Document- Trademark
1-1Engine - raj@legalforcelaw.com
Filed 12/26/17 Page - LegalForce
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148 Mt Everest Ct,
https://www.coldwellbankerhomes.com/ca/
Clayton, CA 94517 - MLS
clayton/148-mt-everest-ct/pid_11554051/
40735858 - Coldwell ...
http://www.
5436 China Clay Dr,
berkshirehathawayhs.com/homes-for-
Kearns, UT 84118 | MLS
sale/5436-China-Clay-Dr-Kearns-UT-
1490756 | Listing ...
84118-221949432
Alamo Modern
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Global Trademarks Search Results:

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Not included with your search order level

These Are Your Options:

File My Application: Even if the matches are similar to your name, your application may still get approved.

If the two marks are used in completely different industries, there is less chance of confusion and your mark

has a greater chance of approval. For example, “Sonic” is used by the hamburger drive-in, an oil and gas

driller, a wireless router access point and a car among others. There is little chance a consumer is going to

believe they are all associated with the same company. Please note, a rejection from the USPTO will not

make the basis of a refund request.

Run a more comprehensive search: You may consider conducting a more comprehensive search to

better assess the availability of your mark before we process your application. We have a variety

of search options for you that can be purchased independently or as part of an economical package. Your

application has been saved, so with a few clicks we can add more comprehensive searches to your order.

Try another mark: You may want to make a slight variation to your mark that may give you a better chance

at approval. Your information has been saved in your account, so you would simply choose this option and

provide a new mark with a few clicks. We will run the same search and continue the process with the new

mark.

To submit your response, simply click on the "Give My Response" button below. If you have any questions

whatsoever regarding your options, please do not hesitate to contact us, we are more than happy to assist.

Give My Response

We use commercially reasonable methods to identify marks that may be matches to the ones you seek to
use. We, however, cannot guarantee that your mark will make it through and be approved even if you use
our search services. There may be a number of reasons the USPTO rejects your mark and there are
circumstances where an automated search may not identify a mark the USPTO identifies as a reason to
reject your mark. We cannot guarantee that your mark will be free of or prevail to all claims or challenges
made by holders of common law rights to all marks. There are circumstances where an
automated search may not identify a common law mark that may be similar to your mark.

The purpose of the search report is to provide you with marks to satisfy the parameters identified for the
type of search you use. It is not meant to be legal advice as to whether your proposed mark will be

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rejected or whether it would be considered similar to another mark. You may want to consult with an
attorney regarding the results of the search report we furnish you.

1 (877) 721-4579 support@trademarkengine.com Contact us

© 2017 Trademark Engine, LLC. All Rights Reserved.

Trademark Engine provides information and software only. Trademark Engine is not a "lawyer referral service" and does not
provide legal advice or participate in any legal representation. Use of Trademark Engine is subject to our Terms of
Service and Privacy Policy.

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By signing and approving, you are verifying subject to perjury that:

1. You are the owner of the mark, it is used in commerce or you intend to use it in commerce and believe you have the right to do so and the specimen (if applicable) shows the mark as used in commerce.
2. To the best of your knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be
likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive.
3. To the best of the signatory's knowledge, information, and belief, formed after an inquiry reasonable under the circumstances, the allegations and other factual contentions made above have evidentiary
support.
4. You understand that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of
the application or submission or any registration resulting therefrom, and thus you declare that all statements made of your own knowledge are true and that all statements made on information and belief are
believed to be true.
5. By signing, you are authorizing us to collect from you $275 per class as the USPTO filing fee.
Case 5:17-cv-07303 Document 1-1 Filed 12/26/17 Page 117 of 142

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12/24/2017 Application Filed - Trademark
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Filed 12/26/17 - LegalForce
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of 142 Mail

---------- Forwarded message ----------


From: Trademark Engine <support@trademarkengine.com>
Date: Mon, Dec 18, 2017 at 12:02 PM
Subject: Application Filed - Trademark Engine
To: Raj Abhyanker <raj@legalforcelaw.com>

Application Filed
Great news! Your trademark application has been filed with the USPTO. You should have

received or will receive an email from an USPTO.GOV email account that contains a

copy of your application.

If you do not receive the email within 24 hours from now, please let us know.

Because USPTO applications are publicly-available on the internet, you are likely going

to receive solicitations from private companies other than Trademark Engine. Some of

these companies try to use names similar to or formal looking documentation to make it

appear their solicitations come from the USPTO. All official USPTO correspondence will

be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA;

or sent by e-mail from the domain “@uspto.gov.” The official Trademark Engine

correspondence will be clearly labeled as such.

At this time, the USPTO is taking about three to five months to process

applications and respond.

Check into your account at any time to check the status, see pertinent documents and

check your deadlines.

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12/24/2017 Application Filed - Trademark
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Document raj@legalforcelaw.com
Filed 12/26/17 - LegalForce
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of 142 Mail

Thank you for using the Trademark Engine.

View Order Status

1 (877) 721-4579 support@trademarkengine.com Contact us

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not provide legal advice or participate in any legal representation. Use of Trademark Engine is subject to our Terms of
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TEAS can be accessed at http://www.uspto.gov/trademarks/teas/index.jsp. You


must decide which application ling option to use, namely, TEAS Plus, TEAS
Reduced Fee (TEAS RF), or TEAS Regular. The TEAS Plus ling option has a ling
fee of $225 per class of goods or services, but has the strictest
requirements. Dec 15, 2011

Filing Your Application Online - United States Patent and Trademark ...
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Apply online | USPTO - United States Patent and Trademark O ce


https://www.uspto.gov/trademarks-application-process/ ling-online
Apr 24, 2012 - To apply for a trademark or servicemark, select your form from the table heading below.
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Filing Your Application Online - United States Patent and Trademark ...
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Dec 15, 2011 - TEAS can be accessed at http://www.uspto.gov/trademarks/teas/index.jsp. You must
decide which application ling option to use, namely, TEAS Plus, TEAS Reduced Fee (TEAS RF), or TEAS
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https://www.google.com/search?q=trademark+filing&oq=trademark+filing&aqs=chrome..69i57j0j69i60j69i61j69i60j0.1700j0j4&sourceid=chrome&ie=UT… 1/3
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Sep 29, 2014 - Use an initial application form to le an application electronically to register a trademark
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Trademark process | USPTO


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Nov 10, 2014 - An overview of a trademark application and maintenance process.

Trademark Status & Document Retrieval


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Trademark/Service Mark Application, Principal Register - TEAS


https://teas.uspto.gov/forms/bas/
To le the application electronically, please complete the following steps: Answer the rst question
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any point, click on any underlined word on any page. After answering the rst wizard question, click on
the CONTINUE button ...

Trademarks | USPTO - United States Patent and Trademark O ce


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Mar 27, 2014 - ... the best ways to keep current with developments in the Trademark Operation is to
subscribe to receive Trademarks Alerts emails. At the USPTO… Trademark updates & announcements.
The USPTO has begun sending courtesy e-mail reminders of upcoming post-registration maintenance
ling deadlines ...

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EXHIBIT​ ​U
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The trademark registration process is a legal proceeding that requires you to act
within strict deadlines (based on Eastern Time). See the trademark application and
post-registration timelines. Jul 4, 2009

Trademark basics | USPTO


https://www.uspto.gov/trademarks-getting-started/trademark-basics

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Mar 27, 2014 - Apply for a trademark, respond to a letter from the USPTO, maintain your registration,
and more through the Trademark Electronic Application System (TEAS). Check Status & View
Documents. Check your application status and ling due dates and view records in Trademark Status
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Trademark basics | USPTO


https://www.uspto.gov/trademarks-getting-started/trademark-basics
Jul 4, 2009 - The trademark registration process is a legal proceeding that requires you to act within
strict deadlines (based on Eastern Time). See the trademark application and post-registration timelines.

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Mar 22, 2010 - Applying to register your trademark with the USPTO begins a legal process. ... The
timelines below provide an overview of the process steps and time frames for ling a trademark
application with a particular ling basis and for maintaining a trademark registration.

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Case 5:17-cv-07303 Document registration
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Jul 4, 2009 - Although not required prior to ling an application, you are encouraged to search the
USPTO's trademark database to see if any mark has already been registered or applied for that is
similar to your mark and used on related products or for related services. If your search yields a mark
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Document 1-1 Mark Filed
Application, Principal Register
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United States Patent and Trademark Office
Trademark Electronic Application System - TEAS Application

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1478 (Rev 09/2006)
OMB No. 0651-0009 (Exp. 02/28/2018)

Trademark/Service Mark Application, Principal Register


Version 5.10 - Validation Page

On Tue Dec 12 15:31:07 EST 2017 You completed all mandatory fields and successfully validated the form. It has NOT been filed to the USPTO at this
point. Please complete all steps below to submit the application.

NOTE:For an instructional video on the Validation Page, click here.


STEP 1: Review the application data in various formats, by clicking on the phrases under Application Data. Use the print function within your browser to print
these pages for your own records. If the Mark and Specimens appear huge, click here.

Note: It is important that you review this information for accuracy and completeness now. Corrections after submission may not be permissible, thereby possibly
affecting your legal rights.
Note: If you are using the e-signature approach or the handwritten pen-and-ink signature approach, you must click on the final link to access the specific "text form"
for that purpose.

Application Data

Input Mark XML File Text Form for E-Signature

STEP 2: If there are no errors and you are ready to file this application electronically, confirm the e-mail address for acknowledgment. Once you submit the form
electronically, we will send an electronic acknowledgment of receipt to the e-mail address entered below. If no e-mail address appears, you must enter one. If we
should send the acknowledgment to a different e-mail address, or to an additional address(es), please enter the proper address or additional address(es). For multiple
addresses/receipts, please separate e-mail addresses by either a semicolon or a comma.
NOTE: This e-mail address is only for the purpose of receiving the acknowledgment that the transmission reached the USPTO, and is not related to the e-mail that will be used for correspondence purposes
(although it could be the same address. The official e-mail address that the USPTO will use for any future communication is whatever appears in the specific correspondence section of the form.)

* E-mail for acknowledgment


To ensure we can deliver your e-mail confirmation successfully, please re-enter your e-mail address(es) here:
* E-mail for acknowledgment

STEP 3: Read and check the following:

Important Notice:

(1) Once you submit this application, we will not cancel the filing or refund your fee. The fee is a processing fee, which we do not refund even if we cannot
issue a registration after our substantive review. This is true regardless of how soon after submission you might attempt to request cancellation of the filing.
Therefore, please review ALL information carefully prior to transmission.

(2) All information you submit to the USPTO at any point in the application and/or registration process will become public record, including your name, phone
number, e-mail address, and street address. By filing this application, you acknowledge that YOU HAVE NO RIGHT TO CONFIDENTIALITY in the
information disclosed. The public will be able to view this information in the USPTO's on-line databases and through internet search engines and other on-line
databases. This information will remain public even if the application is later abandoned or any resulting registration is surrendered, cancelled, or expired. To
maintain confidentiality of banking or credit card information, only enter payment information in the secure portion of the site after validating your form. For any
information that may be subject to copyright protection, by submitting it to the USPTO, the filer is representing that he or she has the authority to grant, and is
granting, the USPTO permission to make the information available in its on-line database and in copies of the application or registration record.

(3) Be aware that private companies not associated with the USPTO often use trademark application and registration information from the USPTO's
databases to mail or e-mail trademark-related solicitations (samples of non-USPTO solicitations included).

If you have read and understand the above notice, please check the box before you click on the Pay/Submit button.

STEP 4: If you are ready to file electronically:


Click on the Pay/Submit button below, to access the site where you will select one of three possible payment methods. After successful entry of payment
information, you can complete the submission to the USPTO. A valid transaction will result in a screen that says SUCCESS! Also, we will send an e-mail
acknowledgment within 24 hours.
WARNING: Click on the Pay/Submit button ONLY if you are now entirely prepared to complete the Pay/Submit process. After clicking the button, you can NOT
return to the form, since you will have left the TEAS site entirely. Once in the separate payment site, you must complete the Pay/Submit process within 30 minutes.
WARNING: Fee payments by credit card may not be made from 2 a.m. to 6 a.m. Sunday, Eastern Standard Time. If you are attempting to file during that specific
period, you must use either the deposit account or electronic funds transfer payment method.

Pay/Submit

Burden/Privacy Statement | TEAS Form Burden Statement

Help Desk | Bug Report | Feedback | TEAS Home | Trademark Home | USPTO

https://teas.uspto.gov/forms/teas.service?form.action=SIGNRES&formId=bas&id=USPTO/BAS-24.5.91.150-20171209150659049380-New/Application-… 1/2
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Applicants and registrants represented by excluded


parties
If the USPTO suspects that a party, whether an individual or a firm, is engaging in unauthorized practice of trademark law or otherwise improper activities
before the USPTO, the Commissioner for Trademarks may issue a show-cause order. A show-cause order requires the party to establish the legitimacy of
their activities and to explain why they should not be excluded from acting on behalf of others before the USPTO. Depending on the party’s response, a
show-cause order may be followed by an exclusion order, which formally excludes the party from serving as an attorney, correspondent, domestic
representative, and/or signatory in trademark matters before the USPTO.

Review copies of show-cause orders and exclusion orders issued by the Commissioner for Trademarks

Get information on unauthorized practice of trademark law and who may practice before the USPTO in trademark matters

Once a party has been excluded, the USPTO will change the correspondence address for each affected application or registration file record to that of the
applicant, registrant, or domestic representative, as appropriate, and will notify the affected applicant or registrant that:

The excluded party is not entitled to practice before the USPTO in trademark matters and, therefore, may not represent the applicant or
registrant.
 
Any power of attorney granted to the excluded party is void ab initio, meaning it was invalid from the start of any action taken by the excluded
party.
 
The excluded party may not sign responses to Office actions, authorize examiner’s amendments or priority actions, conduct interviews with
USPTO employees, or otherwise represent an applicant, registrant, or party to a proceeding before the Office.

All correspondence concerning the application or registration will be sent to the domestic representative if one has been appointed, or,
alternatively, and in most circumstances, to the applicant or registrant at its address of record. 

What to do if the USPTO excluded the party representing you


 
(1)  Review your application/registration record

Go to the Trademark Status & Document Retrieval (TSDR) system and enter your serial number or registration number to retrieve the record for
your application or registration.

(2)  Review your contact information 

Once you have retrieved your application/registration record in TSDR, select the “Status” tab and review the Attorney/Correspondence Information
to confirm that the correspondence information is correct.

If the correspondence information is incorrect, correct it by filing a Change of Correspondence Address form. If necessary, you may also change the
owner’s address information, using the Change of Owner’s Address form. Both forms are available at Correspondence and Attorney/Domestic
Representative Forms. 

(3)  Determine if you are required to file anything 

Select the “Documents” tab in TSDR and view the outgoing correspondence from the USPTO in the record to determine if you are required to file
anything in connection with your application or registration, such as a response to an Office action, a statement of use, or a registration maintenance
document. 

If your application is still pending and you fail to file a required document before the deadline, your application will be abandoned. If your mark is
already registered, and you fail to submit the required registration maintenance documents on time, your registration will expire or be cancelled.  All
required documents may be filed electronically by using the appropriate electronic form in the Trademark Electronic Application System (TEAS).

After your initial review of your application or registration record, continue to monitor the status of your application or registration, using the
“Status” tab in TSDR.

For applications, you should check the status every six months between the filing date of the application and issuance of a registration. 
 
If your mark is already registered and you have filed an affidavit of use or excusable nonuse under §8 or §71 of the Trademark Act, or a
renewal application under §9 of the Act, you should check the status of the registration every six months until you receive notice that the
affidavit or renewal application has been accepted. 

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Questions? 

For pending applications, contact the assigned examining attorney, whose contact information is provided in Office actions sent in
connection with your application. In TSDR, Office actions are identified as “Offc Action Outgoing” in the “Documents” tab. For registrations,
contact the assigned Post Registration specialist, whose contact information will be provided in any Office action sent in connection with
registration maintenance filings, or the Office of Petitions at 571-272-8950.

For general questions about the trademark process, guidance on the type of information required in a particular electronic form, or
information about which USPTO offices or employees to contact for particular issues, contact the Trademark Assistance Center at            
571-272-9250, or toll-free at 1-800-786-9199. You can also email TrademarkAssistanceCenter@uspto.gov.

(4)  Review all documents previously submitted on your behalf

If your application is still pending, and a registration has not yet issued, you should review any documents submitted on your behalf to confirm that
it was signed by the appropriate party and that all the information in the document is correct. If you believe that any submitted document was
improperly signed or contains incorrect information, you should contact the assigned examining attorney, who can answer questions about the
process for resubmitting documents. 

If your mark is already registered and registration maintenance documents have been submitted on your behalf, you should review the documents to
confirm that they contain accurate information and are properly signed.  If you have any questions about a registration maintenance document
submitted on your behalf, you may contact the assigned Post Registration specialist whose contact information will be provided in any Office action
sent in connection with registration maintenance filings, or the Office of Petitions at 571-272-8950.

For additional information on who may sign documents submitted to the USPTO in connection with trademark applications and registrations, see
Proper Representation in Trademark Matters and TMEP §§611.03–611.04.

(5)  Consider hiring a qualified attorney to represent you

Consider hiring a qualified attorney with expertise in trademark matters to represent you in the application process. While a USPTO trademark
examining attorney will try to help you through the examination process even if you do not hire an attorney, USPTO attorneys are not permitted to
give you legal advice.

A private trademark attorney who is licensed in the United States and is authorized to practice before the USPTO may:

Help you avoid future costly legal problems by conducting a comprehensive search of federal registrations, state registrations, and
"common law" unregistered trademarks before you file your application. Comprehensive searches are important because other trademark
owners may have protected legal rights in trademarks similar to yours that are not federally registered. Therefore, those trademarks will not
appear in our Trademark Electronic Search System database, but they could still ultimately prevent your use of your mark.
 
Help you during the application process with several things that could seriously impact your trademark rights, such as determining the best
way to describe your goods and services and preparing responses to refusals to register your mark that we may issue.
 
Assist you after your mark is registered by filing registration maintenance documents and by taking actions to help you police and enforce
your trademark rights. While the USPTO registers trademarks, you, as the trademark owner, are fully responsible for any enforcement of
your private trademark rights.

If you decide to hire an attorney, you should be aware that, under U.S. federal regulations, the only individuals who may represent an applicant or
registrant in trademark matters before the USPTO, other than certain previously authorized trademark agents, are (1) attorneys who are licensed to
practice in the United States and (2) Canadian agents or attorneys who are authorized by the USPTO to represent applicants located in Canada. 
Employing a foreign attorney or other individual who is not authorized to practice before the USPTO to represent you in connection with your
trademark application may delay and prolong the trademark application examination process and could jeopardize the validity of any resulting
registration.

The USPTO has established a Law School Clinic program in which participating law schools provide free legal services to trademark applicants in
connection with trademark applications before the USPTO.  Each school in the program has its own criteria for accepting clients. If you are interested,
you should contact a participating school to inquire about becoming a client.  For a list of schools participating in this program and additional
information about the program, visit Law School Clinic Certification Program.

For more information on finding a qualified private attorney to assist you, visit Using Private Legal Services.

For more information on the unauthorized practice of trademark law and who may practice before the USPTO in trademark matters, visit Proper
Representation in Trademark Matters.

 
What to do when your application is abandoned
 

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When an application is abandoned, it means that the application is no longer pending and, thus, a registration will not be issued. The USPTO may deem
your application abandoned if you fail to submit a response to an Office action or fail to respond completely to an Office action; if you fail to respond to a
suspension inquiry; or if you fail to file a statement of use.  In addition, an application may be “expressly abandoned,” meaning that the applicant has
requested that application be abandoned and that no further prosecution of the application will occur.

In some cases, you may file a petition to revive an abandoned application or request that an abandoned application be reinstated. More information about
abandonment and the process of reviving or reinstating an abandoned application may be found at Abandoned Applications.
 

What to do if your registration expires or is cancelled


 
Once your mark is registered, you, as the registration owner, must file specific documents and pay the required fees at regular intervals to keep the
registration "alive" or valid. Failure to file these documents or pay the required fees will result in the cancellation or expiration of your registration.

If you failed to timely respond to an Office action refusing to accept a §8 affidavit, §71 affidavit, or §9 renewal application due to an extraordinary
situation, you may file a formal petition under 37 C.F.R. §§2.146(a)(5) and 2.148 to accept a late response.  You may file the petition electronically using the
Petition to the Director under Trademark Rule 2.146 form, available at Petition Forms. You must file the petition within two months of the issue date of the
cancellation notice.  If you did not receive the cancellation notice, or no cancellation notice was issued, you must file the petition must within two months
of the date the Trademark database was updated to indicate that the registration expired or was cancelled.  

If your registration expires or is cancelled, but you have proof that a USPTO error led to the cancellation or expiration, you may file a request to
reinstate a cancelled or expired registration.  You may file the request electronically using the Petition to the Director under Trademark Rule 2.146 form,
available at Petition Forms. Although a petition fee is required in order to file the form, it will be refunded if USPTO error is found.  For a list of examples of
situations where the USPTO may reinstate a cancelled or expired registration, please see TMEP §1712.02(a).

For additional information about maintaining your trademark registration, visit Keeping Your Registration Alive.

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