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Patent Bar v. “Trademark Bar”

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

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


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

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

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

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

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

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

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

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

Why is this?

First, some ideas that I hold true:

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

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

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

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

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

….Which illustrates my point with great precision.

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

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

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

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

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

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

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

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

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

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