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EXHIBIT AE
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 2 of 120 PageID# 270
Exhibit AE
Evidence ofUSPTO TEAS' unauthorized removing the street name from the
applicant's correspondence address, resulting in a Trademark certificate
returned by the U.S. Post Office to USPTO for "insufficient address", as well
as Dr. Shia's charge ofamisconduct by the USPTO for fixing the incomplete
address.
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 3 of 120 PageID# 271
STATE Texas
(Required for U.S. applicants)
COUNTRY United States
ZIP/POSTALCODE 77901-3695
FEE INFORMATION
NUMBER OF CLASSES 1
J
FEE PER CLASS 275
SIGNATURE /TimWu/
SIGNATORY'SNAME TimWu
respondents
tJ
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 4 of 120 PageID# 272
requests registration ofthe trademark/service mark identified above in the United States Patent and
Trademark Office onthe Principal Register established by the Act ofJuly 5, 1946 (15 U.S.C. Section 1051
et seq.), asamended, forthe followmg:
Forspecific filing basis information for each item, you must view thedisplay within the Input Table.
Intemational Class 009: Carantennas; Cellphone battery chargers for use in vehicles; Electric
accumulators forvehicles; Electric flasher switches; Electric locks for vehicles; Electric wires; Electrical
plugs; Electrical sockets; GPS navigation device; Ignition batteries; LED vehicle traffic signals; Lighting
control apparatus; Power wires; Safety traffic cones; Satellite navigational system, namely, a global
positioning system (GPS); Sirens for vehicles; Speedometers for vehicles; Tire pressure gauges;
Transformers; Vehicle breakdown wammg triangles; Vehicle traffic signals; Vehicles breakdown warning
lamps
Intent to Use: Theapplicant has a bona fide intention to use or use through the applicant's related company
or licensee the mark in conmierce on or in connection with the identified goods and/or services. (15
U.S.C. Section 1051(b)).
</id-manual-entr/>
<fjHng-basis-lb>Y</filing-basls-lb>
</fillng-basis-entry>
</flllng-basls>
</finng-base5>
</goods-servlce> ^
- <dlsplay-goods-service action-code="croato" version= new >
<class-code>009</class-code> , ,
<descrlptlon-text>Car antennas; Cell phone battery chargers for use invehicles;
Electric accumulators for vehicles; Electric flasher switches; Electriclocks for
vehicles: Electric wires; Electrical plugs; Electrical sockets; GPS navigationdevice;
Ignition batteries; LED vehicle traffic signals; Lighting control apparatus; Power
wires; Safetytrafficcones; Satellite navigational system, namely, a global
positioning system (GPS); Sirensfor vehicles; Speedometers for vehicles; Tire
pressure gauges; Transformers; Vehicle breakdown warning triangles; Vehicle
traffic signols; Vehicles breakdown worning lamps</description-text>
- <fillng-bases>
- <flllng-basis>
<type />
- <filing-basis-entry>
<entry-nunaber>0</entrY -num ber>
<ld-manual-entry class-code="009" />
<filing-basis-lb>Y</filing-basis-lb>
</filing-basis-entry>
</filing-basis>
</filing-bases>
</dlsplay-goods-service>
</goods-service5>
- <case'-file-statements>
- <case-nie-statementaction-code="create" version="new">
<type-code> DM</type-code>
<text>The mark consists of a flying figure above the English Transliteration, "MIN
HSIANG**, of the company's Chinese name.</text>
</case-file-stetement>
</case-file-statements>
- <case-flle-owners>
- <case-flle-owner action-code="creBto" version="new">
<legal-entity-type-code>16</legal-entlty-type-code>
<name>MIN HSIANG CORPORATXON</name>
<dba-aka-text />
<street>No.99, Zhongshan 1st St., Guiren Dist.</street>
<internal-address />
<city>Talnan Clty</city>
<state />
<postal-cods>71 l</postal-code>
<country-name>Taiwan (TWX)</country-name>
<email authorl2ed=V>*Yu204yahoo.com</email>
<phone />
<fax />
<state-organized>Taiwan (TWX)</state-organized>
<general-p0itner-name />
<website-address />
</case-file-owner>
</case-file-own ers >
</base-application-fornfi>
- <correspondence-form>
<source-form>ftk</sourcB-form>
- <correspondences>
- <coiTespondence actlon-code="create" version="ncw">
<type-code>c</type-code>
- < new-address >
<name>MIN HSZANG CORPORATION</name>
<firm-name>LAN LOOP Office</flrm-name> ^
<street>c/o 204 CANYON CREEK</street> ^
<intemal-address />
<city>VICTOiaA</city>
fflei/Z/CAFsers/nruss/AppData/Local/TeinprriR/S5756529_Page-3-RAW.XML 8/4/2014
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 6 of 120 PageID# 274
From: TMOffidaINotices@USPTO.GOV
Sent: Tuesday. July 30.2013 00:07 AM
To: iyu204@yahoo.com
Subject: Trademark Serial Number 85756529: Offfclal USPTO Notice of Allowance
No opposition was filed forthis published application. Theissue date ofthis NOA establishes the due dateforthe
filing of a Statement of Use (SOU) or a Request for Extension of Time to filea Statement of Use (Extension Request).
WARNING: An SOU that meets all legal requirements must be filed before a registration certificate can Issue. Please
read belowfor Important Information regarding the applicant's pending six (6)month deadline.
SIX (6)-M0NTH DEADLINE: Applicanthas sbc(6)MONTHS from the NOA Issue date to file either:
An SOU, ifthe applicant is usingthe markin commerce (required even Ifthe applicant was usingthe mark at the timeof
filing theapplication, ifuse basiswas notspecified originally); OR
An Extension Request, ifthe applicant is not yet using the mark in commerce. Ifan Extension Request Is filed, a new
request must be filed every six (6) months until the SOU is filed. Theapplicant mayfile a total offive (5)extension
requests. WARNING: AnSOU may not be filed morethan thirty-six (36) months fromwhen the NOA issued. The
deadline forfiling is alwayscalculatedfromthe issue date ofthe NOA.
Forinformation on howto (1) divide an application; (2)delete goods/services (or entireclass) with a Section 1(b)basis;or (3)
change filing basis, see htto:/Avww.uspto.Qov/trademari(s/basics/Morelnfo SOU E)(T.isD.
FAILURE TO FILE A REQUIRED DOCUMENT OUTLINED ABOVE DURING THE APPROPRIATE TIME PERIOD WILL
RESULT IN THE ABANDONMENT OF THIS APPUCATION.
Ifyou believethis NOA should not have issued or correction of the infomiation shown below is needed, you must submita
request to the Intent-to-Use Unit. Please use the "Post-Publication Amendment" form under the "POST-PUBLICATION/POST
NOTICE OFALLOWANCE (NOA) FORMS" category, available at http://www.uspto.aov/teas/index.html. DoNOT reply tothis
ennail, as e-mailed filingswill NOT be processed.
70 CCMDIS
,,lt.hllltliHilllitllW'^|j5illfi^^
ir'ta'i"'
sS^iSM
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 9 of 120 PageID# 277
US RegistrationNumber: 4429884
Dear Sir,
Forthe ^ve-referenced application, the mark registration certificate issued was unable to deliver
due to an mcomplete address. Please correct the address and mail the returned certificate to the following
conected address.
Signature
Name: TImWu
TItIa: President
U.ntM(TMVtfTKMMR:pia *2:
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 10 of 120 PageID# 278
COIINTRY Taiwan
*ZIP/POSTALCODE 711
(Required for U.S. applicants only)
EMAIL ADDRESS ryu204@yahoo.com
TRANSLITERATION
0fapplicable)
i
CONSENT (NAME/LIKENESS)
Ofapplicable)
CORRESPONDENCE INFORMATION
exhibit
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 11 of 120 PageID# 279
For specific filing basis Informationfor eachItem,youmust view the displaywithin the Input Table.
Intemational Class 011: Headlights for vehicles; LED light assemblies for street lights, signs,
commercial lighting, automobiles, buildings, and other architectural uses; Light bulbs; Lighting apparatus
forvehicles; Lighting apparatus, namely, lighting installations; Lights for vehicles; Vehicle reflectors;
Vehicle tum-signal light bulbs
Intent to Use: The applicant has a bona fide intention touse oruse through theapplicant's related company
or licensee themark incommerce onor inconnection with the identified goods and/or services. (15
U.S.C. Section 1051(b)).
<clty>Toinon City</city>
<state />
<postal-code>711 </postal-cods>
<country-name>Taiwan (TWX)</country-name>
<email autiiorlzed=s"y">ryu204@yohoo.com</email>
<phone />
<fax />
<state-organized>Toivwan (TWX)</state-organized>
<general-paitner-name />
<web6ite-address />
</case-file-owner>
</case-file-owners>
</i3ase-application-form>
- <correspondence-form>
<source-form>ftk</source-form>
- <correspondences>
- <corTespondence action-code="ereBto" version=:"now''>
<type-code> c</tvpe-code>
- <new-address>
<name>MIN HSZANG CORPORATION</name>
<Rrm-nams>LAN LOOP Office</firni-name>
<street>C/0 102 LINDENCREST cr</street> ^
<intemal-8ddre5S />
<city>SUGAR LAND</city>
<state>Texa8 (TX)</state>
<postal-code>77479-5201</postal-code>
<country-rame>United States (USX)</country-name>
<phone />
<fax />
<email authorized="v"yu204yahoo.com</email>
<attorney-docket-number>LL12-1727; LL-205</attomey-docket-number>
</new-address>
</correspondeiice>
</correspondence5 >
</correspondence-form>
</trademark-case-file>
- <signatures>
- <slgnature action-code="cre4te" versfon="now">
<esignature-type>DIRECT</esignature-type>
<signature-type> D</signa^re -ty pe >
<slgnature-entry-number> 1 </signature-entry-number>
<signature-name>/Tim Wu/</signature-name>
<signatDry-date>20121008</signatory-date>
<signatory-name>Tim Wu </signatory-name>
<signatory-position>Pre8ident</signatory-po5ition>
<phone />
</signature>
</signatures>
- <fee-types>
- <fee-type action-code="create'' versionB"new''>
<fee-code>7007</fee-code>
<number-of-classes> l</number-of-classes>
<number-of-clas5es-paid > l</number-f-classes-paid>
<subtotal-amount>275</subtotal-amount>
</fee-type>
<total-amount>275</total-amount>
</fee-types>
- <payment action-code="create" version="new">
<ranr)-sale-number>21352</rann-sale-number>
<ram-accounting-date>20X21009</ram-accountin9-date>
<payment-method>CC</payment-nnethod>
</payment>
</trademark-case-files>
- <boilerpIates>
> <boilerplate>
MARIOMmHSlANG *85748531*
CORRESPONDENT ADDRESS:
-y MIN HSIANG CORPORATION y CLICK HERE TO RESPOND TO THIS LETTER
LOOP OFFICE http://www.u5pto.gov/trademarks/teas/resD0Pse forms.t8p
SUGAR LAND, TX 77479
LL12-1727;L
CORRESPONDENT E-MAIL ADDRESS:
ryu204@yahoo.com
OFFICE ACTION
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant
must respond timely and completely to the issue(s) below. 15 U.S.C. 1062(b); 37 C.F.R. 2.62,2.65(a);
TMEP 711,718.03.
COUNTRY Taiwan
*ZIP/POSTALCODE
711
(Required for U.S. appUcants only)
EMAIL ADDRESS ryu204@yahoo.com
TRANSLATION
Ofapplicable)
TRANSLITERATION
Ofapplicable)
CONSENT (NAME/LIKENESS)
Of applicable)
CORRESPONDENCE INFORMATION
requests registration of the trademark/service markidentified above in the United StatesPatent and
Trademark Office on the PrincipalRegisterestablished by the Act ofJuly 5,1946 (15 U.S.C. Section 1051
et seq.), as amended, for the following:
For specific filing basis information for each item, you must view the display within the Input Table.
International Class 012: Back-up warning alarms for vehicles; Brakes for vehicles; Bumpers for
automobiles; Clutches for land vehicles; Connecting rodsfor landvehicles otherthan partsof motors and
engines; Direction signals for vehicles; Engmes for land vehicles; Gears for vehicles; Headlight wipers;
Rearview mirrors; Shockabsorbers for automobiles; Tum signals for vehicles; Vehicle parts, namely,
windshieldwipers; Vehicle wheel hub assemblies; Windscreen wipers
Intentto Use: The applicant has a bona fide intention to use or use through the applicant's related company
or licensee the mark in commerce on or in connectionwith the identified goods and/or services. (15
U.S.C. Section 1051(b)).
</base-applicatlon-form >
- <coiTespondence-form>
<source-form>ftk</source-form>
- <correspondences> ^
_ <coiTesponden:e action-code="create version- neMr>
<type-code> c</type-code>
- < new-address >
<name>MIN HSZANG C0RP0RAT10N</name>
<firm-name>lAN LOOP Offlco</firm-name> .
>"tTrrt-r/^ 102 LINDENCREST CT</street> ^
<intemal-address />
<clty>SUGARLAND</cjty>
<state>Texa8 (TX)</state>
<postal-code>77479</postal-code >
<country-rame>Unltod States (USX)</country-name>
<phone />
<fax />
<email authorized=V><yu204yohoo.com</emall>
<attorney-docket-number> LL12-1728; LL-206</attorney-docket-number>
</new-address>
</correspondence>
</correspondences>
</correspondence-form>
</trademark-case-fHe>
> <signatures>
- <slgnature action-code="creBte" version="new">
<esfgnature-type>DIRECT</esignature-type>
<signature-type> D</signature-type >
<slgnature-entry-number>1 </slgnature-entry-number>
<signature-name>/Tlm Wu/</signature-name>
<sjgnatDry-date>20121007</signatory-date>
<slgnatry-name>Tlm Wu</signatory-name>
<slgnatory-position>PresIdcnt</signatory-positlon>
<phone />
</signature>
</slgnatures>
- <fee-types>
- <fee-type action-code="create" version="new">
<fee-code>7007</fee-coce>
<number-of-classes>l</number-of-classes>
<number-of-cIasses-pald>l</number-of-dasses-pald>
<subtotal-amount>275</subtotal-amount>
</fee-type>
< total-amou nt>275</totaI-a mount>
</fee-types>
- <paym6nt action-code="creato" verslon="new">
<ram-sale-nunnber>l4986</ram-sale-nunnber>
<ram-accountlng-date>20121009</ram-accourting-date>
<payment-method>CC</payment-method >
</paymnt>
</tradenna rk-case-files >
- <boilerplates>
- <boilerplate>
<bolIerplate-type>EMAIL.l</bollerplate-type>
<boilerplate-description>EmailAuthorization Statement</boilerplate-description>
<boilerplate-text>Appllcant authorizes the USPTO to communicate with the applicant or its
representathre via e-mail.</boilerplate-text>
<boilerplate-text>NOTE: While the application may list an e-mail address for the applicant;
applicant's attorney, and/or applicant's domestic representative, only one e-mail address
may be used for correspondence, in accordance with Office policy. The applicant must keep
this address current in the Office's records.</boilerplate-text>
</boilerplate>
- <boilerplate>
<bollerplate-type>GOODSSRVlCES.FTK.lB</boilerplate-type>
<boilerplate-descrlption>Sectlon lb Statement</boilerplate-description>
file:///C:AJseis/nniss/AppData/Local/Temp/TIR/85747741_Page-2-RAW.XML 8/4/2014
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 17 of 120 PageID# 285
requests registration ofthe trademarWservice mark identified above inthe United States Patent and
Trademark Office onthePrincipal Register established bytheAct of July 5, 1946 (15 U.S.C. Section 1051
et seq.), as amended, for the following:
For specific filing basis information for each item, you mustview the display within the InputTable.
International Class 003: Baby powder; Body powder; Cosmetic preparations; Facial cleansers; Hair
conditioner; Hair shampoo; Liquid soaps for hands and face; Soaps for household use; Sun block; Sun
creams; Talcum powder; Toilet soaps; Toilet water; Toothpastes
Intent toUse: The applicant hasa bona fide intention touse oruse through theapplicant's related company
or licenseethe mark in commerce on or in connectionwith the identified goods and/or services.(15
U.S.C. Section 1051(b)).
C/0102LINDENCRESTCT 4:
SUGAR LAND, Texas 77479
ryu204@yahoo.com (authorized)
The docket/reference number is sw-92;T40169.
A fee payment in the amount of $275 has been submitted withthe application, representing payment for 1
class(es).
RESPONDENTS
EXHlBrr
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 19 of 120 PageID# 287
- <correspondences>
_ <correspondence action-code="crooto" version="ncw">
<type-code>c</type-code>
- <new-address>
<name>SHUANGFEI DAILY CHEMICALS USA INC.</name>
<firm-nam8>.</firm-name>
^ <street>C/0 102 LINDENCREST CT</street> ^
<intsmal-address />
<city>SUGAR LAND</city>
<state>Texas (TX)</state>
<postal-code>77479</postal-code>
<country-name>UnIted States (USX)</country-name>
<phone />
<fax />
<emall authorized="y" >iyu204yahoo.com</email>
<attomey-docl<et-number>8w92jT40169</attorney-docI<et-number>
</new-address>
</correspondence>
</coiTespondences>
</correspondence-form>
</trademark-case-fl ie>
- <signatures>
- <slgnature action-codes'create" versions "new" >
<esignature-type>DIRECT</esignature-type>
<slgnature-type >D</signature-type>
<signature-entry-number> 1 </signnture-entry-number>
<signature-name>/Zhenhui Li/</signature-nanr)e>
<signatory-date >20120903</slgnatory-datte>
<signat]ory-name>Zlienhui Lf</signatry-name>
<slgnatory-position>Presldent</signatory-positlon>
<phone />
</signature>
</signatures>
- <fee-types>
- <fee-type action-code=:"create" vers on="new">
<fee-code>7007</fee-code>
<number-of-classes>l</njmber-of-classes>
<number-of-classes-pald>l</number-of-classes-pald>
<subtotal-amount>275</subtotal-amount>
</fee-type>
<tota l-amou nt>275</total -amount>
</fee-types>
- <payment action-code="creato*' verslon=:"nevtf">
<ram-sale-number>9465</ram-sale-number>
<ram-accounting-date>20120904</rann-accounting-dabe>
<payment-method>CC</payment-method>
</paynnent>
</trademark-case-files>
- <boilerpiates>
- <boilerpiate>
<boilerplate-type>EMAIL.l</boilerplate-tvpe>
<boilerpiate-description>EmBii Autliorization Statenient</boilerplate-description>
<boilerplate-text>Applicant authorizes the USPTO to communicate with the applicant or its
representative via e>mail.</boilerplate-text>
<boilerplate>text>NOTE: While tiie application may listen e-mall address for the applicant^
applicant's attorney, and/or applicant's domestic representative, only one c^mail address
may be used for correspondence, in accordance with Office policy. The applicant must Iceep
this address current in the Office's records.</boi!erplate-text>
</boilerplate>
- <boilerplat:e>
< boilerplate-type>GOODSSERVICES.FTK. lB</boilerplate-type>
<boilerplate-description>Section lb Statement</boilerplate-descrlpt3on>
<boilerplate-text>Intent to Use: The applicant has a bona fide intention to use or use through
the applicant's related company or licensee the mark in commerce on or In connection with
the identified goods and/or services. (15 U.S.C. Section 1051(b)).</boilerplate-text>
file;///C:/Useis/nruss/AppData/Local/Temp/TIR/85719310_Page-2-RAW.XML 8/4/201A
Change Of Correspondence Address
The table below presents the data as entered.
Input rii'ld Kiitcrccl 1
SERIAL NUMBER 85719310
LAW omCE ASSIGNED LAW OFFICE 110
MARK SECTION
MAKK 1CALIBIO (stylized and/or with design)
CORRESPONDENCE SECTION (current)
f
SHUANGFEI DAILY CHEMICALS USA INC.
SUGAR LAND Texas 77479
ORIGINAL ADDRESS /
US
ryu204@yahoo.com
NKW C()RRI':SP0NDI-:NCI':; ADDRESS 1
- !
i
1
SHINHWA
IF, No. 8, Lane 12, Chung Shan 11th St.
NEW ADDRESS Tainan
Taiwan
701
ryu204@yahoo.com
AUTHORIZED TO COMMUNICATE
YES
VIA E-MAIL
SIGNATURE SECTION
SIGNATURE /Zhenhui Li/
SIGNATORY NAME Zhenhui Li
SIGNATORY DATE 03/05/2013
SIGNATORY POSITION Director
AUTHORIZED SIGNATORY YES
1FILING INFORMATION SECTION
SUBMIT DATE Tue Mar 05 16:21:35 EST 2013
USPTO/CCA-75.89.68.113-20
130305162135266508-857193
10-5002d63635bb5b22al c347
TEAS STAMP
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 20 of 120 PageID# 288
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 21 of 120 PageID# 289
- <case-flIe-statementactlon-code=s"croBte'' version="newtf">
<type-code>DM</type-code>
<text>Tho mark consists of stylized detign of the wording "Healthy Walking begins
with" in smaller fonts above the wording "STRONG FEET" in capitalized form and
two horizontal lines right above and below the wording "STRONG FEET".</tfixt>
</case-file-sta tement>
</case-file-statements>
- <case-file-owners>
- <case-flIe-owner actlon-code="croato" verslon="new">
<legal-entlty-type-code>03</legal-entlty-type-code>
<name>3Er CROWN INTERNATIONAL CO., LTD.</name>
<dba-aka-text />
<street>No. 88, Yuwun Road, East Di8trlct</street>
<lnternal-address />
<city>Talnan City</city>
<state />
< postal-code />
<country-name>Taiwan (TWX)</country-name>
<emall authorlzed=V >ryu204yahoo.com</email>
<phone />
<fax />
<incorporated-ln-state-code>Talwan (TWX)</incorporated-in-state-code>
<webslte-address />
</case-flle-owner>
</case-file-owners>
</base-appllcatior-form>
- <coiTespondence-form>
<source-form>ftk</source-form>
- <coiTespondences>
- <correspondence action-codess"creato" version="new">
<type-code>c</type-code>
- <new-addre5s>
<name>JET CROWN INTERNATIONAL CO., LTD.</name>
<flrm-name /> j
^ <street>c/o 102 LINDENCREST CT</street>
^ <intsmal-address />
<city>SUGAR LAND</city>
<state>Texas (TX)</stBte>
<postal-code>77479</postal-code>
<country-name>United States (USX)</country-name>
<phone />
<fax />
<emall authorlzed=V>iyu204yahoo.com</emall>
<attomey-docket-number />
</new<*address>
</correspondence>
</correspondences>
</correspondence-form>
</trademark-case-file>
- <signatures>
- <signature acaon-code="creBte" verslon="new">
<eslgnature-type> DIRECT</eslgnature-type>
<signature-type>D</slgnature-typ8>
<slgnature-entr/-number> 1 </signature-entry-number>
<signature-name>/Wang, Edmund/</slgnature-name>
<sIgnatry-date>20120824</signatory-datB>
<slgnatDry-name>Wang, Edmund</slgnatDry-name>
<slgnatory-posi:ion>DIroctor</signatorv-posltlon>
<phone />
</signature>
</signatures>
- <fee-types>
- <fee-type action-code="creato" version="now">
<fee-code>7007</fee-code>
<number-of-classes> l</number-of-classes>
I EXHIBIT
ffle:///C:/Useis/niuss/AppData/Lccain'einp^IR/85712340_Page-2-RAW.XML
I
| '
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 22 of 120 PageID# 290
From: TMOffidalNotlc8S@USPTO.GOV
Sent: Tuesday. March 26,2013 00:13 AM
To: ryu204@yahoo.com
Subject: Trademark Serial Number 85712340: Official USPTO Notice of Allowance
No opposition wasfiled forthis published application. The issuedateofthisNOA establishes the duedatefor the
filing ofa Statement ofUse (SOU) or a Request forExtension ofTime to file a Statement ofUse (Extension Request).
WARNING: An SOUthat meets all legal requirements must be filed before a registration certificate can issue. Please
read belowfor important information regarding the applicant's pending six (6) month deadline.
SIX (6)-M0NTH DEADLINE: Applicant has sbc (6) MONTHS from the NOA Issue date to file eKhen
- An SOU. iftheapplicant Isusln-g the mark incommerce (required even iftheapplicant wasusing themark atthetime of
filing theapplication, if use basiswasnot specified originally); OR
- An Extension Request, ifthe applicant is notyetusing the mark incommerce. If an Extension Request isfiled, a new
request must befiled every six(6) months until theSOU isfiled. The applicant may file a total offive (5) extension
requests. WARNING: An SOU may not befiled more than thirty-six (36) months from when the NOA issued. The
deadline forfiling is always calculated from the issue date ofthe NOA.
For information onhow to(1) divide anapplication; (2) delete goods/services (or entire class) with a Section 1(b) basis; or(3)
change filing basis. seehttD://www.usoto.QOv/trademarics/basics/Morelnfo SOU EXT.isp.
FAILURE TO FILE A REQUIRED DOCUMENT OUTLINED ABOVE DURING THEAPPROPRIATE TIME PERIOD WILL
RESULT INTHE ABANDONMENT OF THIS APPLICATION.
If you believe this NOA should notlave Issued orcorrection oftheinfomnation shown below is needed, you must submit a
request totheIntent-to-Use Unit. Please usethe"Post-Publication Amendment" forni under the"POST-PUBLICATIOIWOST
NOTICE OFALLOWANCE (NOA) FORMS" category, available at http7AAww.usDto.qovfteas/index.html. DoNOT reply tothis
e-mail,as e-mailedfilings will NOT be processed.
LAW OFFICE
LAW OFFICE 105
ASSIGNED
EXTENSION OF
NO
USE
MARK SECTION
OWNER SECTION
EMAIL ryii204@yalioo.com
CORRESPONDENCE SECTION (current)
NAME JET CROWN INTERNATIONAL CO., LTD.
CITY SUGARLAND
STATE Texas
EMAIL ryii204@yahoo.com
AUTHORIZED TO
COMMUNICATE VU Yes
E-MAIL
CORRESPONDENCE INFORMATION
KUNSHAN PEPWING TEXTILE CO.,
*NAME
LTD.
CITY VICTOIUA
STATE Texas
(Required for U^. applicants)
COUNTRY United States
FEE INFORMATION
NUMBER OF CLASSES 1
SIGNATURE INFORMATION
SIGNATURE /George YANG/
SIGNATORY'S NAME George YANG
I RESPONDENTS
EXHIBIT,
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 25 of 120 PageID# 293
</display-goods-servlce >
</goods-servlces >
- <case-flle-statements>
_ <case-file-statfimentaction-codess''croate" version="now">
<type-code> DM</type-code>
<text>Tho mark consists of a horizontal line, numbers "365", and words "WR . All
three elements are located In a square. The numbers"365" is on an upper side of
the horizontal line, and the words "WR" Is at the bottom side of the horizontal
line. The word "365WR" contains no special meaning In the industry; the color is
not claimed in the trademark.</text>
</case-flle-statement>
</case-file-statements>
- <case-file-owners>
- <case-file-owner actlon-code="create" version="new">
<legal-entitv-type-code>03</legal-entity-type-code>
<name>KUNSHAN PEPWIN6 TEXnLE CO., LTD.</name>
<dba-al<a-text />
<street>#19, Huangpujiang Mid Rd, Lujia Town,</street>
< internal-address />
<city>KunshBn, Jiangsu</city>
<state />
<postal-code>215331</posta l-code>
<country-name>China (CNX)</country-name>
<emall authDrlzed="y">ry204yahoo.com</email>
<phone />
<fax />
<lncorporated-in-state-code>China (CNX)</lncorporated-in-state-code>
<website-address />
</case-file-owner>
</case-flle-owners>
</base-appllcation-form>
- <coiTespondence-form>
<source-form>fUc</source-form>
- <correspondences>
- <correspondence actlon-code="creato" version ="new">
<type-code>e</type-code>
- <new-address>
<name>iaJNSHAN PEPWING TEXTILE CO., LTD.</nanrte>
. <firm-name>c/o Office of Bang Shia</flrm-name>
V <street>c/o 204 CANYON CREEK</street> ^
< Intemal-address />
<cjty>VICTORIA</city >
<state>Texas (TX)</state>
<postaI-code>77901-3695</postaI-code>
<country-name>Unltod States (USX)</counlry-name>
<phone />
<fax />
<email authorizeds:"y">ryu204)yahoo.com;bspat-bang8hia.com</email>
<attomey-docket-number> BT-759; C-970</attorney-docket-number>
</new-addrsss>
</correspondence>
</correspondences>
</correspondenc-form>
</trademark-case-f le>
- <signatures>
- <signature action-code!3"creato" verslon="new'>
<eslgnature-type>DIRECT</eslgnature-type>
<slgnature-type>D</slgnature-type>
<signature-enb*y-number> 1 </slgnature-entry-number>
<slgnature-nanre>/George YANG/ </signature-name>
<signatpry-date>20120729</slgratory-datB>
<signatx>ry-narne>George YANG</slgnatory-name>
<signatory-posiaon>President</slgnatory-posltion>
<phone />
</signature>
ffle;///C:/Useis/nruss/AppData/Local/Teinp/TIR/85689678_Page-2-RAW.XML /4/20! :
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 26 of 120 PageID# 294
MARK SECTION
SIGNATURE SECTION
IAUTHORIZEDSIGNATORY iYES
i
AA 4 S
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 27 of 120 PageID# 295
requests registration ofthe trademark/service mark identified above in the United States Patent and
Tr^emark Office on the Principal Register established by the Act ofJuly 5,1946 (15 U.S.C. Section 1051
et seq.), as amended^ for the following:
For specific filing basis information for each item, you mustview the display within the InputTable.
International Class 009: Breathing apparatus for underwater swimming; Divers masks; Diving
gloves; Diving suits; Ear plugs for divers; Eyeglass cases; Eyeglasses; Goggles for sports; Life-buoys;
Nose clips for divers and swimmers; Ski goggles; Sunglasses; Swimming goggles
Intent to Use: The applicant has abona fide mtention to use or use throu^ the applicant's related company
orlicensee the mark incommerce onorinconnection with the identified goods and/or services. (15
U.S.C. Section 1051(b)).
Declaration
respondents
EXHIBIT
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 28 of 120 PageID# 296
file:///C:AJsers/nniss/AppData/Local/TemprnR/85595869_Page-2-RAW.XML 8/4/2014
-tf
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 29 of 120 PageID# 297
MARK SECTION
ORIGINAL ADDRESS
-2^ VICTORL\ Texas 77479
US
iyu204@yahoo.com
AUTHORIZED TO COMMUNICATE
YES
VIA E-MAIL
SIGNATURE SECTION
(? ^
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 30 of 120 PageID# 298
requests registration ofthe trademark/service mark identified above inthe United States Patent and
Trademark Office on thePrincipal Register established bytheActofJuly5,1946 (15 U.S.C. Section 1051
et seq.), asamended, forthe following:
Intemational Class029: Meat;Foodprepared from fish; Canned seafood; Canned fish; Preserved
fiiiit; Preserved vegetable
Intent to Use: Theapplicant has a bonafide intention to useor usethrough the applicant's related company
or licensee the mark in commerce on or in connection with the identified goods and/or services. (15
U.S.C. Section 1051(b)).
' EXHIBIT
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 31 of 120 PageID# 299
MARK SECTION
1 -
MARK
Design only
CORRESPONDENCE SECTION (current)
1C/0 XL\MEN SHINHWA CO., LTD.
9 XL\MEN, FUJIAN
ORIGINAL ADDRESS 361004
CN
ryu204@yahoo.com
1NKW CORRtSPONDEsNCK .\DDRESS |
c/o OfficeofBangShia
204 CANYON CREEK
NEW ADDRESS
VICTORIA
Texas
United States
77901
bs@pat-bangshia.com
AUTHORIZED TO COMMUNICATE
VIA E-MAIL YES
SIGNATURE SECTION
USPTO/CCA-71.30.187.138-2
0120411192938692660-85585
TEAS STAMP 03 l-49017978679d342ef9b0e
Chaoge Of Correspondence Address
The table below presents the data as entered.
Kntcrcd
SERIAL NUMBER 77836647
LAW OFFICE ASSIGNED LAW OFFICE 114
MARK SECTION
MARK ACCESS MOTOR (stylizedand/orwith design)
CORRESPONDENCE SECTION (current)
WENG PING HUANG
JIATAI INDUSTRIAL PARK #5 ZHONGXING
RO,\D
ORIGINAL ADDR SSS
CHIAYI COUNTY
TW
bs@pat-bangshia.com
iN'KW C()KRi:SmNDENCi:: ADDRESS
ACCESS MOTOR CO LTD
JIATAI INDUSTRL\L PARK #5 ZHONGXING
NEW ADDRESS
ROAD
CHL^Yl COUNTY
Taiwan
SIGNATURE SECTION
SIGNATURE /bang er shia/
SIGNATORY NAME banger shia
SIGNATORY DATE 02/07/2013
SIGNATORY POSITION current correspondent/domestic representative
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Thu Feb 07 20:56:51 EST 2013
USPTO/CCA-71.29.79.139-20
130207205651722875-778366
47-50043clf73af673clab66f
TEAS STAMP
6aS03bb7278a0cca334586969
RESPONDENTS
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 33 of 120 PageID# 301 EXHIBIT
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 34 of 120 PageID# 302
EXHIBIT AF
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 35 of 120 PageID# 303
Exhibit AF
^The Privacy Act of 1974,5 U.S.C. 552a, establishes a code offair information
practices that governs the collection,maintenance, use, and dissemination of
information about individuals that is maintained in systems ofrecords by federal
agencies. The Privacy Act requires that agencies give the public notice oftheir
systems of records by publication in the Federal Register.
On April 30,2014, theOED Director moved for leave torequest fi:om the clerk ofthe
U.S. District Court for the Eastern Districtof Arkansas a subpoena for the recordscustodian of
Windstream Communications, Inc. ("Windstream") toappear at a deposition. TheMotionfor
Leave toProceed Under 35 U.S.C, 24("Motion") states that the deposition is to betaken in
lieu ofthe record custodian's personal appearance atthe hearing scheduled to commence onJuly
22,2014 in Washington, D.C.
^TSponmnts
EXHIBIT
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 37 of 120 PageID# 305
will be impeded. Last, the OED Director notes tliat in-housc counsel for Windstream has agreed
accept service ofasubpoena and to produce an appropriate records custodian at their offices in
Little Rock, Arkansas.
ORDERED.
.-Mexander Fernandez
Administrative Law Judge
/f?
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 38 of 120 PageID# 306
c
In the Matter of
States Patent and Trademark Office ("USPTO" or"Office"), bycounsel, respectfully moves this
Tribunal forleave to jfile a redacted version of an exhibit. Specifically, the USPTO Director
seeks to file a redacted version of a four-page IP Address Chart along with theassociated
Declaration as anexhibit in this matter. Good cause exists forgranting this motion asthe
proposed redacted material contains personally identifiable information ofnon-parties and non-
witnesses. Because this proceeding has been made public by the Tribunal at the request ofthe /
Respondent, the requested reliefis appropriate, reasonable, and non-prejudicial. Aredacted ^
version of the IP Address Chartand associated Declaration are attached to this motion.
On August 6,2014, counsel for tiie OED Director sent an email toRespondent pursuant
to 37C.F.R. 11.43 advising that the OED Director desired to file a motion to file a redacted
version of an exhibit,because the m-redacted document containspersonally identifiable
3 m
^ g j<
^SpSnSen^^ ^ ^ ^
EXHIBIT m
42.
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 39 of 120 PageID# 307
r r"
Respectfully submitted,
August 7,2014
Melinda M. DeAtley
Elizabeth UUmer Mendel
Associate Solicitors
Mail Stop 8 Office ofthe Solicitor
United States Patent and Trademark Office
P.O. Box 1450
Alexandria, Vurginia 22313-1450
(571) 2724V(DeAtley direct)
(571)273aP(fax)
@uspto.gov
Counsel for:
Director ofthe Office ofEnrollment and Discipline
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 40 of 120 PageID# 308
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 41 of 120 PageID# 309
c r
In the Matter of
The Director ofthe Office ofEnrolhnent and Discipline ("OED Director") for the United
States Patent and Trademark Office ("USPTO" or"Office"), bycounsel, hasmoved this
^ Tribunal for leave to file aredacted version ofan IP Address Chart along with the associated
Declaration, as an exhibit in this matter.^ This memorandum is filed in support ofthe motion.
FACTS
Accordmg tothe Tribunal's June 30,2014 Notice ofHearing and Order, Respondent
and counsel for the OED Director are to exchange proposed exhibits onAugust 13,2014. The
^ OED Director seeks leave firom the Tribunal to file aredacted version ofthe IP Address Chart,
alongwiththe associatedDeclaration, as an exhibitin this matter.
ARGUMENT
' Acopy ofthe Declaration and the redacted four-page P Address Chart isattached to the
accompanymg Motionfor Leave toFilea Redacted Version ofIP Address Chart
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 42 of 120 PageID# 310
c r
dty, atat^ zip code, tdqxhooe number and e-mail address for tliree Individuals wiio are neittKer
-
^ parties nor witnesses in to proceeding. The information is found onpages two and three ofthe
IP Address Chart Because thesethreeindividuals arenot involved directly or indirectty in this
^ informationisdie name, visex ID, address, city, state,zip code, telephone number, and e-mail
addressofthree individuals, again, into are non-parties-and non-witnesses.
The IP Address Chart and the associated Dedaration are to be used as evidmce in diis
matter. ThepersonalinformationofthetiikdpartiescontainedinthelPAddressChartmaybe
to diis prddteding asnone areparties or witnesses and useoftheir Windstream IPaddresses are
CONCLUSION
For thereasons setforth above, theOED Director requests diatHas Tribunal grant leave
Respectfully submitted,
August7,2014 Y/f.
MelindaM. DeAtley
Elizabeth Ullmer Mendel
Associate Solicitors
Mail Stop 8 Office ofthe Solicitor
United States Patent and Trademark Office
P.O. Box 1450
Alexandria, Virginia 22313-1450
(571) 272-fl||p(DeAtley direct)
(571)273iW(fax)
IIHBHiliP@iispto.gov
Coimsel for:
Dkector of the Office of Enrollment and Discipline
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 44 of 120 PageID# 312
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 45 of 120 PageID# 313
r"
WMstrMrnm*# - 09300
RickyYU
e'ffffiilWrnfw
vwsAnMaOMlnditrMiniwI
AwwmTYw
DSL 1/7/2007 Adivo
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 46 of 120 PageID# 314
r r
WindstreamFiie# 63300
r T r
Payments madethai Pesonal Banking online aoxunt Wlndsreamdoes not retain banking information.
T
Additional E-mail Addresses
7 f T
Payments made thru Pesonst Banking onKfie aocount WIndstream does not retain banking Informstton. /
r
WtmfttmmFito# 63300
281.285-0279
9
InfbnnaBon. ^7
AddlHonal E-nwD Addrottoi
yullansw(nd8tr68m.net
^^rtPato
DSL 1/4/2013 Active
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 49 of 120 PageID# 317
EXHIBIT AG
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 50 of 120 PageID# 318
The OED Director's bases for the Motionto Strike Respondent's Post-Hearing Exhibits
speaks tothe weight the Court should afford the documents and not to their admissibility.
Therefore, the Court finds thatsuch documents areadmissible and may be considered bythe
Court inreachmg itsdecision regarding the allegations in the Amended Complaint, However, the
Court will consider the parties' positions regarding these exhibits in determining how much
weight, if any, to afford them. Accordingly, theOED Director's Motion to Strike Respondent's
Post-Hearing Exhibits is DENIED.
' Respondent was afforded the opportunity torespond tothe Motion toStrike, She did soonNovember 10,2014.
^TESPONDEBr?
^ EXHIBIT
-m-
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 51 of 120 PageID# 319
So ORDERED,
Alexander Fem^dez ^
Administrative Law Judge
'The Court afforded Respondent the opportunity to seek legal counsel, but she declined.
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 52 of 120 PageID# 320
JAN 1 6 2015
Please be advised that the Office ofEnrollment and Discipline ("OED") received information
regarding you. The issuance ofthis letter means that the information has passed OED's initial
screening process. As discussed further below, the OED Director requests your comments on the
information before determining whether any violation ofthe United States Patent and Trademark
Office ("USPTO" or "Office") Rules ofProfessional Conduct may have occurred.
You should that OED must develop all information regarding the information
received, including that information which may justify or exonerate the alleged actions ofa
registered practitioner or mitigate the seriousness ofany violations that may have occurred.
Your statement ofposition may result in adecision to dismiss the matter. You may wish to
retain orconsuU with counsel before submitting a statement ofyour position. Your response to
this letter should be received by OED within thirty-one (31) days ofthe date ofthis letter, or by
Fghniarv 16.201S. whichever is later.
Mall Rtnr> OPO P O. Box 1450. Alexandria. Virginia 22313-1450 - vwww.uspto Gov
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 53 of 120 PageID# 321
P&S62
Dr. Bang-er Shia
Patent Office of Bang Shia
OEDFileNo.: G2505
9. OED also received information regarding statements that you made in reference to your
e-mail addresses during your testimony at the hearing on October 8,2014. The
statements nay be false or misleading.
10. Each ofthe above matters is set forth in detail below.
11. Post-hearing, Judge Alexander Fernandez issued an Order for Documents dated October
9,2014. The Order required you to file any documents in your possession giving you
"iegal authority to bind" your clients in the applications at issue at the hearing. You did
so onOctober 20,2014. These documents are addressed below.
' The Tribunal consolidated the Disciplinary Proceeding Nos. 2014-04 and 2014-31 on July 8,2014. Upon motion
made by counsel for the OED Director, Disciplinary Proceeding No. 2014-04 was dismissed by the Tribunal at the
commencementof the hearing in the matters.
Mail Stop OED, P.O. Box 1450, Alexandria, Virginia 22313-1450 -www.uspto.gov
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 54 of 120 PageID# 322
. Page 3
Dr. Bang-erShia
Patent Office of Bang Shia
OED File No.: G2505
15. Also, this document does not give power ofattorney and/or legal authority to bind the
applicant. The text is adeclaration taken from the '869 application. It is the type of
declaration associated with trademark applications, not a"power ofattorney for legal
authority to bind with the applicant." Please explain.
16. Further, with regard to the Declaration and the purported authorization in the *869
application, please explain whether:
a. the signature in the Declaration and the signature in the purported
authorization are the same; and
^The Hearing Transcript is from the hearing on October 4,2014 through October 10,2014 in the Disciplinary
Proceeding. Reference to the Hearing Transcript is abbreviated hereinafter "Tr. at [page number].
Mail Stop OED. P.O. Box 1450. Alexandria, Virginia 22313-1450 -www.uspto.gov
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 55 of 120 PageID# 323
19. The purported authorization in U.S. Trademark Application No. 85/585,301 at page 2
appears to have been altered. Acaption appears to have been added at the top ofthe
document which states: "POWER OF ATTORNEY WITH LEGAL AUTHORITY TO
BIND THE APPLICANT." The positioning ofthe caption islevel and horizontal across
the page. The remainder ofthe document appears to be tilted. Also, the text ofthis
document does not give power ofattorney and/or legal authority to bind the applicant as
the caption indicates. The text under "signature and other information" is the standard
language ofadeclaration taken from atrademark application or other trademark
document requiring asignature. The text does not discuss or purport to give anyone legal
authority to sign on behalfofthe trademark applicant. Please explain.
20. Please explain in detail whether you or anyone acting on your behalf altered this
document in any manner prior to submitting itto the Tribunal, including what appears to
havebeen altered in the document as set forth in the paragraph above.
22. The purported authorization in U.S. Trademark Application No. 85/689,678 at page 1
includes the caption: 'AUTHORIZATION FROM THE APPLICANT BEFORE TIffi
USPTO." The text states that it gives ".. .legal authority toactonbehalfofthe applicant
... including electronic signing for docmnents filed tothe USPTO...." In accordance
with thetrademarks rules, no one can give another person legal authority to electronically
sign atrademark document on his or her behalfbefore the USPTO. See 37 C.F.R.
2.193(c)(1). Moreover, in the Commissioner for Trademarks' Exclusion Order, you
were expressly informed that any authorization purporting to give you the permission to
electronically sign on behalfofanother person was improper. Further, the USPTO
Director's Decision reiterated that:"[a] non-attorney may not sign a trademark
application on behalfofan applicant" and that signing the electronic signature, even
under the purported authority from the applicant, constitutes acting as the attorney for the
applicant. Please explain.
23. Please explain in detail whether you or anyone acting on your behalfaltered this
document in any manner prior to submitting itto the Tribunal.
24. Please provide OED with the original ofthis document.
n Piirpnrted Aiithprization in U.S. Trademark AppMcation No. 85/712340
25. The purported authorization in U.S. Trademark Application No. 85/712,340 at page 2
appears to be adocument created by combining two documents. The caption: "POWER
OF ATTORNEY" and text "This isto authorize Dr. Banger Shia atInt'l Patent Office of
Bang Shia, to have the legal authority to bind the applicant before the USPTO" appear to
be from one document. The "Declaration" appears tobe from a separate document, as
the font is smaller and the entire paragraph tilts to the left. Moreover, the text ofthe
"Declaration" is the language ofadeclaration taken from atrademark application or other
trademark document requiring asignature. It does not contain any l^guage sugpting it
is apower ofattorney or adocument authorizing you to take any action which will bind
the corporation. Please explain.
26. Please explain in detail whether you or anyone acting on your behalf altered this
document in any manner prior to submitting itto the Tribunal, including what appears to
have been altered in the document as setforth in the paragraph above.
28. The purported authorization in U.S. Trademark Application No. 85/747,741 at page 2
contains the caption: "POWER OF ATTORNEY FOR LEGAL AUTHORITY TO BIND
WITH THE APPLICANT." However, the text of this document does not give a power of
attorney or legal authority to bind the applicant. The text under the "Declaration" is the
language ofadeclaration taken from a trademark application or other trademark
document requiring a signature. Itis not a proper power ofattorney. The signature
purports to be that ofTim Wu, President. Please explain.
29. Further, this document was allegedly executed on August 27,2012 and the trademark
application was filed on October 7,2012. However, Tim Wu signed a"Declaration for
response to OA" on March 6,2013 inwhich he states:
The signatory has confirmed that he/she isnot represented by either an
authorized attorney or Canadian attorney/agent, and thathe/she is either
(1) the applicant or (2) aperson(s) with legal authority to bind the
applicant; and ifan authorized U.S. attorney or Canadian attorney/agent
previously represented him/her in his matter, either he/she has filed a
signed revocation ofpower ofattorney with USPTO or the USPTO has
granted the request ofhis/her prior representative to withdraw.
30. No withdrawal ofpower ofattorney appears to have been filed at any time. Ifyou
submitted this document to the Tribunal to prove that you have authorization to represent
the applicant, it appears to conflict with Mr, Wu's filing indicating that his company is
not represented. Please explain.
31. Please explain in detail whether you or anyone acting on your behalfaltered this
document in any manner prior to submitting itto the Tribunal, including what appears to
have been altered in thedocument as setforth intheparagraph above.
36. The purported authorization in U.S. Trademark Application No. 85/748,531 also appears
to beanaltered document. The caption: "POWER OF ATTORNEY FOR LEGAL
AUTHORITY TO BIND WITH THE APPLICANT' and the "CONTACT
INFORMATION" tilt slightly left. The "Declaration" and Applicant's signature and
other information are at a different angle asthey appear totilt further left. The text under
"Declaration" isthe language ofa declaration taken from a trademark application or other
Mail Stop OED. P.O. Box 1450, Alexandria. Virginia 22313-1450 -vwww.uspto.gov
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 58 of 120 PageID# 326
37. Additionally, this purported authorization raises questions similar to those raised with
respect to the purported authorization in U.S. Trademark Application No. 85/747,741.
This alleged authorization document was executed on August 27,2012, but on March 6,
2013 Tim Wu signed a"Declaration for response to OA" in which he states the company
is not represented. Ifyou submitted this purported authorization to the Tribunal to prove
that you have authorization to represent Ae applicant, it appears to conflict with Mr.
Wu's filing that his company is not represented. Please explain.
38. Please explain in detail whether you or anyone acting on your behalf altered this
document in any manner prior to submitting itto the Tribunal, including what appears to
have beenaltered in the document as set forth in the paragraph above.
40. The purported authorization in U.S. Trademark Application No. 85/756,529 also appears
tobe analtered document. The purported authorization contains the caption: "POWER
OF ATTORNEY FOR LEGAL AUTHORITY TO BIND WITH THE APPLICANT' and
a "CONTACT INFORMATION" section at the bottom. These twosections line upas
they tilt slightly to the left. The text ofthe "Declaration" and the Applicant's signature
with additional information are in a different font and tilt further to the left. The text
under "Declaration" is the language ofa declaration taken from a trademark application
orother trademark document requiring a signature, not language granting a power of
attorney orauthority to bind the applicant. Please explain.
41. This purported authorization also raises other questions. This document contains no date
as to when it was executed. However, the *529 application wasfiled on October 17,2012
and a Response to Office Action was filed on March 24,2013. No withdrawal ofpower
ofattorney appears to have been filed at any time. However, Tim Wu, President signed a
"Declaration for response to OA" on March 6,2013 inwhich he states the company is
not represented. Ifyou submitted this purported authorization to the Tribunal to prove
that you have authorization torepresent the applicant, it appears toconflict with Mr.
Wu's filing that hiscompany is not represented. Please explain.
42. Please explain in detail whether you or anyone acting on your behalfaltered this
document in any manner prior to submitting it to the Tribunal, including what appears to
have been ahered in the document as set forth in the paragraph above.
44. During the hearing, you were asked what e-mail addresses you have or use. Tr. at 308.
You stated that you had orused only the following e-mail addresses:
bangershia@yahoo.com; BS@pat-bangshia.com; and ryu204@yahoo.com. Tr. at 308-
309.
45. However, it appears that you may have used at least one or both ofthe following e-mail
addresses when electronically corresponding with theUSPTO:
a. bodhimantras@gmail.com; and
b. Ianloop2014@gmail.com.
(ii) whether you provided such e-mail address to the USPTO or authorized
the use of suche-mail address as a correspondent, domestic representative,
and/or applicant/owner e-mail address;
46. Trademark applications appear tohave been filed orhave had documents filed therein by
you after the USPTO Director's Decision and which contain at least one ofthe e-mail
addresses listed above in paragraph 45(a)-(b), which were not revealed byyou during the
hearing. These applications were not known toOED prior to October 2014 and were not
part ofthe Disciplinary Proceeding. These trademark applications include U.S.
Trademark Application Nos. 86/353,051; 85/863,395; 86/072,453; and 86/057,473, and
are set forth below.
47. U.S. Trademark Application No. 86/353,051 ("the '051 application") was electronically
filed onJuly30,2014,which was after theUSPTO Director's Decision.
Mail Stop CED. P.O. Box 1450, Alexandria, Virginia 22313-1450 -www.uspto.gov
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 60 of 120 PageID# 328
a. The '051 application lists the correspondence e-mail addresses for the
applicant as smart.shen@msa.hinet.net and bodhimantras@gmail.com and
authorizes the USPTO to communicate via these e-mail addresses
regarding the '051 application.
b. The Trademark Status and Document Retrieval ("TSDR") records indicate
that the electronic filing ofthis application originated from IP address
75.89.65.115, which is owned by Windstream Communications and used
by customers in Sugar Land, Texas. The reply e-mail address in the
extensible Markup Language ("XML") data for this filing is
lanloop2014@gmail.com.
c. The filing fee for the '051 application was paid using a Visa credit card
ending in2376 with a cardholder name ofBanger Shia.
d. The e-mail addresses bodhimantras@gmail.com and
lanloop2014@gmail.com appear to be connected to you as your e-mail
addresses because lanloop2014@gmail.com was used to receive the filing
receipt for the '051 application and the filing fee for the '051 application
was paid using a credit card in your name.
See Appendix C.
Please explain whether you filed the '051 application, and if so, with what authority since
you are not anattorney and it was after the USPTO Director's Decision affirming the
Commissionerfor Trademarks' Exclusion Order, which excluded you from participatmg
as a domestic representative or correspondent intrademark applications.
Please explain why it appears that you acted asthe correspondent inthe '051 application
byusing e-mail addresses bodhimantras@gmail.com and lanloop2014@gmail.com, in
direct violation of the Commissioner's Exclusion Order and the USPTO Director's
Decision.
48. U.S. Trademark Application No. 85/863,395 C^the '395 application") was electronically
filed onFebruary 28, 2013. A Statement of Use was electronically filed inthe '395
application on April 29,2014, which was after the USPTO Director's Decision.
a. The Statement of Use in the '395 application lists the correspondence
e-mail address forthe applicant as bodhimantras@gmail.com. Thee-mail
address bodhimantras@gmail.com appears to be from Sugar Land, Texas
and owned by Windstream Commimications.
b. TSDR records indicate that the electronic filing of this Statement of Use
originated from IP address 151.213.178.142, which is owned by
Windstream Communications and is used by customers in SugarLand,
Texas. Thereply e-mail address in the XML data for this filing is
lanloop2014@gmail.com.
c. The fee for the Statementof Use in the '395 application was paid using a
Visa creditcard ending in 2376with a cardholder name of Banger Shia.
See Appendix D.
Please explain whether you filed the Statement of Use in the '395 application, andif so,
with what authoritywhen you are not an attorney and it was after the USPTO Director's
Decision.
Please explain why it appears that you acted as the correspondent in the '395 application
by usinge-mail addresses bodhimantras@gmail.com and lanloop2014@gmail.com, in
Dr.Bang-erShia Page 11
Patent Office of Bang Shia
OEDFileNo.: G2505
direct violation ofthe Commissioner's Exclusion Order and the USPTO Director's
Decision.
50. U.S. Trademark Application No. 86/072,453 ('the '453 application") was electronically
filed on September 23,2013.
a. The '453 application lists the correspondence e-mail address for the
applicant as bodhimantras@gmail.com and authorizes the USPTO to
communicate via thise-mail address regarding the '453 application. The
e-mail address bodhimantras@gmail.com appears to befrom Sugar Land,
Texas andowned by Windstream Communications.
c. The filing fee for the '453 application was paid using a Visa credit card
ending in 8089 with a cardholder name of Yu Yu. You testified at the
hearing that your husband's name is YuLiang Yu and thatyour husband
has nothing to do with practicing in trademark matters before the USPTO.
Tr.at288,504, 546-549.
See Appendix E.
Please explain whether you filed the '453 application, and ifso, with what authority when
you are not an attorney and itwas after the Commissioner for Trademarks' Exclusion
Order excluding you from participating as a domestic representative and correspondent
address, which was effective immediately.
Please explain why itappears that you acted as the correspondent in the '453 application
by using e-mail addresses bodhimantras@gmail.com, in direct violation ofthe
Commissioner's Exclusion Order and the USPTO Director's Decision.
Please state whether you, your husband, orany other authorized user on Visa credit card
ending in 8089 paid the filing fee mentioned above. Please identify specifically who paid
the filing fee.
Please explain ifyou or someone under your authority electronically signed the signature
ofLiang Hui, Director, before electronically filing the Response to Office Action in the
'453 application with Ae USPTO from your Windstream Communications e-mail
account.
Please explain whether you filed the Response inthe '453 application, and ifso, with
what authority when you are not an attorney and it was after the USPTO Director's
Decision.
Please explain why it appears that you acted as the correspondent in the '453 application
pertaining to the Response to Office Action byusing e-mail address
bodhimantras@gmail.com, indirect violation ofthe Commissioner's Exclusion Order
and the USPTO Director's Decision.
52. A Request for Reconsideration After Final Action was filed in the '453 application on
February 28,2014, which was afterthe USPTO Director's Decision. TSDR records
indicate that the electronic filing of this document originated fi-om IP address
75.90.80.129, which is owned by Windstream Communications and is used by customers
in Sugar Land, Texas. The reply e-mail address in the XML data for this filing is
bodhimantras@gmail.com. The Request for Reconsideration after Final Action was
signed with adirect electronic signature using what appears to by yow Windstream
Communications e-mail account in Sugar Land, Texas. The electronic signature isthat of
Liang Hui, Director, although ahandwritten signature was also included. See Appendix
G.
Please explain ifyou or someone under your authority electronically signed the signature
ofLiang Hui, Director, before electronically filing the Request for Reconsideration after
Final Action with the USPTO on February 28,2014.
Please explain whether you filed the Request for Reconsideration After Final Action in
the '453 application, and ifso, with what authority when you are not an attorney and it
was after the USPTO Director's Decision.
Please explain why it appears that you acted as the correspondent in the *453 application
pertaining to the Request for Reconsideration After Final Action by using e-mail address
bodhimantras@gmail.com, in direct violation ofthe Commissioner's Exclusion Order
and the USPTO Director's Decision.
53. U.S. Trademark Application No. 86/057,473 ("the *473 application") was electronically
filed on September 6,2013.
a. The *473 application lists the correspondence e-mail address for the
applicant as bodhimantras@gmail.com and authorizes the USPTO to
communicate via this e-mail address regarding the *473 application. The
e-mail address bodhimantras@gmail.com appears to be from Sugar Land,
Texas and ownedby Windstream Communications.
c. The filing fee for the *473 application was paid using a Visa credit card
ending in 8089 with a cardholder name of YuYu. You testified at the
hearing that your husband's name is Yu Liang Yu and that your husband
has nothing to dowith practicing intrademark matters before the USPTO.
Tr.at288,504, 546-549.
See Appendix H.
Please explain whether you filed the '473 application, and ifso, with what authority when
you are not an attorney and itwas after the USPTO Director's Decision.
Please explain why itappears that you acted as the correspondent in the *473 application
by using e-mail address bodhimantras@gmail.com, in direct violation ofthe
Commissioner's ExclusionOrder and the USPTO Director's Decision.
Please state whether you, your husband, orany other authorized user on Visa credit card
ending in 8089 paid the filing fee mentioned above. Please identify specifically who paid
the filing fee.
55. Also, explain your basis for filing any such documents since you are not an attomey and
were excluded from participating asa domestic representative and correspondent address
by the Commissioner for Trademark's Exclusion Order dated February 21,2013, which
was affirmed by the USPTO Director's Decision on December 27,2013.
56. Additionally, please explain your basis for filing any documents in any trademark
applications after the Commissioner for Trademarks' Exclusion Order dated February 21,
2013, which was affirmed by the USPTO Director's Decision on December 27,2013 and
serving as the correspondent using bodhimantras@gmail.com and/or
lanloop2014@gmail.com.
57. During the hearing, counsel forthe OED Director asked youto provide information
regarding your current e-mail addresses. Tr. at 308. After youprovided twoe-mail
addresses during your testimony, counsel asked you aboutone othere-mail address.
Tr. at 309. Counsel for the OED Director then asked you "[a]re there any other email
Mail Stop OED, P.O. Box 1450, Alexandria, Virginia 22313-1450 - www.uspto.gov
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 66 of 120 PageID# 334
addresses that you use or have used inthe last ten years?" Id. You ultimately responded,
"[y]eah, [sic] those three are about it."Id
a. Please explain your basis fornotproviding the Tribunal or OED with
information regarding your use of the e-mailaddresses:
bodhimantras@gmail.com and/or lanloop2014@gmail.com.
b. Please provide OED with a list ofevery e-mail address you, a member of
your family, oranyone who performs services onyour behalforon behalf
ofyour company, have used tofile documents with the USPTO within the
last ten years.
58. Also during the hearing, counsel for the OED Director asked you questions under oath
regarding the various trademark applications at issue, including questions regarding your
authority to act on behalfofthe applicants inthe following trademark applications: U.S.
Trademark Application Nos. 85/585,031; 85/595,869; 85/689,678; 85/712,340; and
85/747,741. Excerpts from the hearing transcript regarding these applications with the
question and your answer are set forth hereafter:
a. Pertaining to U.S. Trademark Application No. 85/585,031:
Q: And you did notprovide the Office of Enrollment and Discipline vwth
anydocument thatshows youwere given authority by the company to
legally bind it, did you?
A: You didn't ask for it. This should not be in the documents on January
23,2012.
Tr.at479.
Tr.at497.
Mail Stop OED, P.O. Box 1450, Alexandria, Virginia 22313-1450 -www.uspto.gov
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 67 of 120 PageID# 335
Dr. Bang-erShia
Patent Office of Bang Shia
OED File No.: G2505
Q: And you never provided the US PTO with any document from
Kunshan Pepwing Textile Co., Ltd. that authorized you have to take
actions to legally bind the company, did you?
A. Ididn't provide it because they never asked for it. They accepted
everything we submitted.
Tr. at 508.
Tr. at 520.
Tr. at 563.
59. However, OED specifically asked you in OED File G2341 to provide any relevant
information and/or documents regarding the matters inOED's Request for Information
dated March 18,2014, ("March 18^ RFI"). Also, OED asked you to specifically respond
to questions regarding each ofthese above applications and provide anv supporting
documentation in OED's second Request for Information dated May 2,2014 ("May 2"
RFI")- Appendix 1.
60. Please explain what appears to be adifference in your answers, under oath at the hearing,
as found inthe hearing transcript excerpts above inparagraphs 58(a)-(e), wherein you
testified thatOED orthe USPTO never asked for documents pertaming to your authority
to represent applicants before the USPTO. However, OED did ask for any relevant
Mail Stop OED. P.O. Box 1450, Alexandria. Virginia 22313-1450 -www.uspto.gov
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 68 of 120 PageID# 336
Dr. Bang-er Shia Page 17
Patent Office of Bang Shia
OEDFileNo.: G2505
documents relating to these trademark applications in its March IS*** RFI and May 2"''
RFI.
61. Please provide OED with any other relevant information and any documents relating to
the above matters.
The following rules ofthe USPTO Rules ofProfessional Conduct are currently under
consideration inthis investigation: 37CFR 11.116(a)(1) (representing client when such
would result in violation of USPTO Rules of Professional Conduct); 11.303(a) (requiring candor
toward a tribunal); 11.304(b) (falsifying evidence); 11.505 (unauthorized practice oflaw);
11.701 (false and misleading communication about the practitioner's services); 11.804(a)
(violating the USPTO Rules ofProfessional Conduct); 11.804(c) (conduct involving dishonesty,
fraud, deceit, or misrepresentation); 11.804(d) (conduct that is prejudicial to the administration
ofjustice); and 11.804(i) (engaging in other conduct that adversely reflects on the practitioner's
fitness to practice before the Office).
The OED Director will make nodetermination fordisposition of this matter until you have been
afforded an opportunity to fully state your position with respect thereto within thirty (30) days of
the date ofthis letter. This is your opportunity pursuant to 5 U.S.C. 558(c), if appropriate, to
demonstrate that you are or have come into compliance with the USPTO Rules ofProfessional
Conduct. Please note thatthe USPTO Rules of Professional Conduct impose an obligation to
cooperate with OED in an investigation ofany matter before it, and proscribe knowingly failing
to respond to arequest from OED. 37 CFR 11.801(b). In addition, ifyou do not respond to
this Request for Information or any OED request, the Committee on Discipline may draw an
adverse inference inmaking a determination under 37CFR 11.23. See Baxter v. Pctlmigiano,
425 U.S. 308 (1976). Should you need more time tosubmit your position, you may request a
reasonable extension of time. Please notethat an extension of time for responding to this letter,
ifgranted, shall not exceed sixty (60) days fi-om the date ofthis letter.
Accordingly, we invite your response to the alleged facts presently under consideration. In your
response, please also state your account ofthe events in achronological and specific manner and
include copies ofany particularly pertinent documents referred to in your response. Your
response should address the information in each ofthe numbered paragraphs in this letter. You
may also address the information in view ofthe referenced Rules ofProfessional Conduct. Also,
please provide any other comments or evidence you believe would be helpful in considering this
matter.
We will attempt toverify the statements inyour response just as we do with the information
provided to us. For this reason, and because a registered practitioner could be subject to
discipline for making amaterially false statement or deliberately failing to disclose amaterial
fact in connection with a disciplinary matter {see 37 CFR 11.804(c) and 11.804(d)), you
shouldaccurately set forth your factual statements.
*r<irt
KAY - 8 2015
The Office ofEnrollment and Discipline ("OED") ofthe United States Patent and Trademark
Office confirms receipt ofyour letter dated February 13,2015 ("February 13 letter"), which
was received by OED on February 18,2015. This letter has been reviewed and appears to be
in response to OED's January 16,2015 Request for Information and Evidence Under 37 CFR
11.22(0 ("January 16** RFI").
Your February 13"^ letter lacks anumber ofrequested responses and is therefore considered
incomplete. Acopy ofOED's January 16" RFI is attached hereto so that you can further review
the specific requests for information and provide your comments. For example, you did not
respond to amajority ofthe alleged information in paragraph numbers 1through 61 in the
January 16*^ RFL Please specifically respond to each ofparagraphs 11 through 61 in the RFI, ^
including providing any requested and/or supporting documentation. Rather, your February 13
letter addressed matters ft^om previous OED investigations (OED File Nos. G2081 and G2341)
and from the resulting disciplinary proceedings (Disciplinary Proceeding Nos. D2014-04 and
D2014-31) regarding your conduct. The matters in these files are not at issue in the present
investigation.
You are reminded ofyour duty to cooperate with OED throughout its investigation ofthis matter.
See 37 CFR 11.801(b). Furthermore, ifyou do not respond to this request for information, the
Committee on Discipline may draw an adverse inference in making a determination under
37 CFR 11.32. See Baxter v. Palmigiano, 425 U.S. 308 (1976).
' Please note that due to the size ofthe attachments included with OED's January 16* RFI, OED is enclosing
herewith the January le*"* RFI without the attached materials. Ifyou did not receive the materials attached to OED's
January 16^ RFI, please let us know and we will provide you with a copy thereof.
RESPONDENTS
EXHIBtT
Svoiff^
FEB 0 5 2016
The Office of Enrollment and Discipline ("OED") ofthe United States Patent and Trademark
Office C'USPTO") has concluded its investigation ofthe circumstances surrounding the
information received regarding your conduct. Formal action is not being taken against you at
this lime in light ofthe Initial Decision and Order entered in In re Shia, Disciplinary Proceeding
No. D2014-31 onApril 22,2015, which excluded you from practice before the USPTO inpatent,
trademark, and other non-patent matters.' However, your conduct and the circumstances at issue
during this investigation may be reconsidered if you submit a petition for reinstatement under
37C.F.R. 11.60 to OED.
An individual who practices before the USPTO may be disciplined, interalia, for violations
of the USPTO Rules of Professional Conduct.^ See 37 C.F.R. 11.19. The OED Director
may conclude an investigation without issuing a warning or taking disciplinary action. See
37 C,F.R. 11.221 h)(l).
' You appealed the Initial Decision and Orderdated April 22,2015 to the USPTO Director. As of the date of this
leiier, there has not been a decision on the appeal.
- Effective May 3,2013, the USPTO Rules of Professional Conduct apply to persons who practice before the Otfice.
See 37 C.F.R. 11.101-11.901. Because the events at issue occurred subsequent to that effective date, the USPTO
Rules of Professional Conduct apply to this matter.
RESPONDENTTS
EXHlBrr
11 505 (unauthori7d practice oflaw); 11.701 (making false and misleading communication
about the practitioner's services); 11.804(a) (violating the USPTO Rules ofProfessional
Conduct); 11,804(2) (engaging in conduct involving dishonesty, fraud, deceit, or
misrepresentation); 11.804(d) (engaging in conduct that is pr^udicial to the admimsttation of
justice); and 11.804(i) (engaging in other conduct that adversely reflects on the practitioner s
fitness topractice before the Office).
Apractitioner may be disciplined for submitting fraudulent documents to a^bunal. See
In re Anonymous, Disciplinary Proceeding No. D2014-05 (USPTO Apr 1,2014) (repnmandmg
practitioner for submitting false or misleading declaration to the USPTO ma tradei^k
application); In re Chan, Disciplinary Proceeding No. D2011-21 (USPTO Jan. 17,2012)
(reprimanding anc giving probation to practitioner for providing false or misleaduig dcctoations
to the USPTO in patent applications); In re Tendler, Disciplinary Proceedmg No. 2013-17
(USPTO Jan. 8,2014)^ (suspending practitioner for failing to advise the USPTO that a
previously submitted declaration was inaccurate and not advising the USPTO ofthe actual facts
concerning the inaccuracy and untruthfulness in the declaration); see also Rohm &Mass
Company v. Crystal Chemical Company, 722 F.2d 1556 (Fed. Cir. 1983) (finding a^tent
invalid due to fraud based on practitioner submitting afalse declaration to the USPTO durmg the
prosecution ofthe patent application).
Also, aperson may be disciplined for violating professional conduct rules by engaging in the
unauthorized practice of law, including the unauthorized practice oftrademark law, before the
Office. See e.g., In re ZborovslQi, Proceeding No. D2011-62 (USPTO Nov. 17,2011)
(suspending patent agent for engaging in the unauthorized practice oftrademark law); see also
People V. Corbin, 82 P.3d 373,375 (Colo. 2003) (disbarring attorney for filing trademark
applications while suspended from the practice of law); Statewide Grievance Committee v.
Goldstein, 1996 WL 753092 (Conn. Super. 1996) (restraining non attorneys from engaging in
conduct constituting the practice oflaw including offering trademark legal forms); In re Jensen,
Proceeding No. D2009-46 (USPTO Feb. 18,2010)' (reprimanding attorney for allowing non-
attorney to sign and file trademark applications before the USPTO).
This letter should not be construed as authorizing you to engage in conduct violating any
disciplinary rule. Appropriate action will be taken regarding apractitioner who violates a
disciplinary rule.
Upon careful review ofthe facts currently in the record, OED will be taking no further action in
this matter. Accordingly, this investigation is deemed terminated and the file is closed.
Mail Stop OED. P.O. Box 1450, Alexandria. Virginia 22313-1450 -www.uspto.gov
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 72 of 120 PageID# 340
Please telephone us at (571) 272-4097 if you have any questions regarding this matter.
Sincerely,
Jennifer A. Harchick
Staff Attorney
Office of Enrollment and Discipline
G2505,
01/16/15 Harchick RFI No. 1
G2505,
05/08/15 Harchick RFI No. 2
02/05/16 Harchick File
closed^
' Aproceeding under 35 U.S.C. 32, shall be commenced not later than 1year after the date on which the misconduct forming toisfor
the proceeding is made known to an officer or employee ofthe Office as prescribed under section 2(b)(2)(D). As the first ofG2505 was
issued onJan. 16,2015, aComp/amr originates therefrom shall be filed no later than Jan. 16,2016. File G2505 is automatic^ly closed as
long as no Complamt is filed by Jan. 16,2016. Attorney Harchick sent a"courtesy" letter infonmng the closmg ofG2505, and mentiomng
"additionally" the PTO Director's decision has not made on Dr. Shia's APPEAL (not her REPLY BRIEF) I! RESPONDENTS
I fXHIBIT^
JS:
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 74 of 120 PageID# 342
MAR 1 8 fflW
IlNrnm STATES Patent AND TRAPBMABK.OEncE
OFra OP EWMJUMEMTAKO DtsctPtwe
DrBang^Shia CERTTFIEDMAILmffi^^^-^^^^^
SentOffice ofBangShia RETURNRECEIPTREQUESIED
102 LindenCTCst Court
Sugar Land, IX 77479
Re: FilcNo.G2341 . .
REQUEST FOR INFORMATION AND EVIDENCE UNDER 37 CFR 11.22(0
DcarDr. Shia:
Please be advised that the Office ofEnrollment and Discipline ("OED*') received information
regarding you from the Office ofthe Deputy Commissioner for.TrademarkExamination Policy
on January 9,2014. Tte issuance ofthis letter means that the information has passed OED*s
initial screening process. As discussed fiirther below, the OED Director requests your comments
on the information before determining whether any violation ofthe United States Patent and
Trademark Office C*USPTO" or "Office") Code ofProfession^ Responsibility tod/orRules of
professional Conduct' may have occuned.
You should understand Uiat OED must develop all information regarding the information
received, includmg that information which mayjustify"or exonerate the alleged actions ofa
registered practitioner or mitigate the seriousness ofany violations that nuQr have occurred.
Your statement ofposition may result in adecision to dismiss Ihe matter. Youmay widi to
retain orconsult with counsel before submitting a statement ofyour position. Your response to
this letter should bereceived by OED within thirty (30) days ofthedate ofthis letter, orby
Aprfll7.2014. whichever is later.
For tfie alleged conduct occurring prior to May 3,2013, the USPTO Code ofProfessional
Rwponsibili^ is applicable. See 37 CFR 10.20-10.112. For the alleged conduct occuning on or
after May 3,2013, the USPTO Rules ofProfessional Conduct are applicable. See 37 CFR 11.101-
11.901.
RESPONDENTS
GOV#519
G18582
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 75 of 120 PageID# 343
RECEiVicD
OED.G2341
APR 2? 2014
Attornqr Jennifer Harchick OFFICE OFENKOaMEN<
AND
fob 1450, Alexandria VA 22313-1450
Dr.Bang-er Shia
Patent OfiSce ofBang Shia
102 Lindencrest Ct,Sugar Land TX 77479
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for pro D2014-04. Please investigate -yUA.*-.
proceeding.TWslet(erco<istitutesasubmionundet35 g 9".(o
,32 . pro D2014-04. dated Jan.10,
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Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 76 of 120 PageID# 344
MAY -2 2014
The Office ofEniolhnent and Disciplme ("OED") ofthe United States Patent and Trademark
Office confirms receiptofyour letter dated April 17,2014. Uns letter has been reviewed and
appears to be in response to OED's March 18,2014Request for Infonnation and Evidence
Under 37 CFR 1U2(f) ("RFF).'
Your April 17"^ letter raises an issue regarding OED date stamps. Please note that the different
date stamps addressed in your April 17^ letter are official OED date stamps.
Also your April 17^ letter lacks anumber ofrequested responses and is therefore considered
incomplete. AcopyofOED'sMarch 18,2014 RH is attached hereto so fliat you can further
review the specific requests.for mformation and provide your comments. For example, you did
not respond to amajonty ofthe aUeged infomiation inparagraph numbers I thro^ 38 in the
RFI. Please ^cifically respond to each ofparagraphs 1through 38 in the RFI, including
prodding any requested and/or supporting documentation. You are reminded ofyour duty to
cooperate with OED throughout its investigation ofthis matter. See 37 CFR 11.801(b).
Furthermore, ifyou do not respond to this request for infonnation, the Committee on Discipline
may draw an adverse inference mmaking adetermination under 37 CFR 11.32. See Baxter v.
Palmigiano, 425 U.S. 308 (1976).
Please be advised that ifwe do not receive aresponse from you withm seventeen (17) days, i.e.,
bv Mav 19.2014, OED will proceed with its investigation based upon the information and
evidence currently ofrecord. Please address your response to Mail Stop OED, U.S. Patent and
Your April 17,2014 letter refers to OED*s letter dated April 18,2014, which we believe to be a
typographical error as April 18"^ is subsequentto your April 17 letter.
^Please note that due to the size oftheattachments included with OED's M^h 18 RFI, OBD
is enclosing herewiththe March 18^ RFI witiiouttiie attached materials. Ifyou did not receive
the materials attached toOED's March 18*'' RFI, please letus know and we will provide you
with a copythereof.
Man Stop OED, P.O. Box 1450, Alexandria, Virginia 22313-1450 -www.U8pto.gov o UIAORO
onlAzo^
GOV#521
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 77 of 120 PageID# 345
EXHIBIT AH
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 78 of 120 PageID# 346
Exhibit AH
2. Final Order failed to acknowledge and respond to Dr. Shia*s timely submitted
Reply BriefofJuly 3,2015.
3. Tampering with the evidence, Ms. Harris concealed from the finding offact. Dr.
Shia's hearing testimony of her legal authority to bmd the applicants before the
PTO.
4. Tampering with the evidence, Ms. Harris misrepresented the word "signatures"
from its context of "electronic signatures", contradicting with the evidence of
hundreds ofthousands ofpages ofdocuments.
5. Final Order contains self-incriminating fact against the PTO. Ms. Harris
admitted PTO erased electronic signatures buther argument failed to justify for the
PTO, as her argument contracted with the fact.
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 79 of 120 PageID# 347
In theMatter of
Appellant
Final Order
The Director of the OfficeofEnrollment andDiscipline ("OED'*) at the United States Patent and
Trademark Office ("USPTO" or"Agency") instituted disciplinary proceedings against Bang-er Shia
("Appellant**) forviolations of itsdisciplinary rules incoimection with improper filing of trademark
documents before the Agency. Ahearing was held before Administrative Law Judge ("AT P*) Alexander
Fernandez and, on April 22,2015, ALJ Fernandez issued an initial decision concluding tfiat the Appellant
violated six (6) ethicsrulesgoverning practice before the USPTO. As a sanction, theALJ excluded
Appellant from practicing before the USPTO inpatent, trademark and other non-patent matters. Pursuant
to 37 C.F.R. 11.55, Appellant appealed the April 22,2015 initial decision of the ALJ.
On appeal, the Director herein finds that the ALJ*s findings are fully supported by the record. The
record supports the ALJ*s findings that Appellant engaged in misconduct infour ways: (1) Appellant
improperly signed trademark documents filed with the USPTO; (2)Appellant improperly filed trademark
documents prepared by foreign attorneys; (3) Appellant's actions went beyond therole ofa domestic
representative and constituted practice before the Office intrademark matters; and (4) Appellant
continued toactasa domestic representative after being excluded from doing sobythe Trademark
Commissioner. Further, theALJ properly concluded that the misconduct violated six (6) ethics rales.
Finally, the ALJ considered the factors required by 37 C.F.R. 11.54(b) before concluding that a sanction
of exclusion was appropriate.
I. BACKGROUND
proper person. 37 C.F.R. 2.193(e); Trademark Manual ofExamining Procedure (TMEP)^ 611.02. For
example, trademark documents that require a verification ofthe facts, such asaninitial application or
Statement of Use,mustbe sworn to in a declaration thatis signed by the owner or theowner's authorized
properly authorized to sign a declaration onbehalf ofan owner is either (i) a person with legal authority
to bmd the owner (c.g., a corporate officer orgeneral partner ofa partnership); (ii)a person with firsthand
knowledge ofthefacts and actual orimplied authority to actonbehalfoftheowner; or(iii) anattorney
with a power ofattorney from the owner. 37 C.F.R- 2.193(eXl); TMEP 611.03(a). Aperson who does
notsatisfy oneofthese three requirements cannot sign a trademark document onbehalfofanowner.
3. AResponse toOffice Action' must besigned consistent with theprocedures setforth in37
C.F.R. 2.193(eX2), see37C.F.R. 2.62(b), TMEP 712, that is,signed bytheowner, a qualified
corporate officer must sign." TMEP 611.06(d). A corporate officer isa person who holds anoffice
established inthearticles of incorporation orcorporate bylaws. Id. Usual titles forsuch officers include,
' "Tr." denotes referencss to the hearing transcript found at TabF inthe Administrative Record ("A.R") for
Proceeding D2014-31.
^ The Trademaik Manual ofExamining Procedures (TMEP) isa reference manual forthe practices and procedures
fin- prosecuting trademaik applications before USPTO. See
http://tmep.uspto.gOv/RDMS/detail/roanual/TMEP/Apr2013/dle2.xml#/manual/TMEP/Apr2013/introductiondlel.x
mi*
^An OfficeActionis a legaldocunent issued bythe USPTO and which identifies legalandprocedural issues witha
trademarkapplication, and related filings. Tr. at 143-144.
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 81 of 120 PageID# 349
5. Proper signatories are required toensure that documents filed with the Office and which could
effectuate a change inan applicant's right are signed bysomeone with broad authority, notjustastotheir
6. The procedures for trademark application proceedings allow a limited, non-signatoiy role for a
"domestic representative" and a "correspondent'* Adomestic representative isan individual appointed by
a foreign trademark applicant to receive notices orprocess in proceedings affecting the applicant's
application orrepresent a party in aproceeding before the USPTO, unless the domestic representative is
also a qualified practitioner who has been recognized by the USPTO asthe representative ofan applicant
orregistrant oris someone with legal authority tobind ajuristic applicant (i.e., a corporate officer).
TMEP 609.04,611.06(d); Tr.at 58, 194-195,328-330,342,372.
7. Atrademark applicant may also designate a correspondence address sothat correspondence from
with a domestic representative, a correspondent may notprosecute an application or represent a party ina
proceeding before theUSPTO, unless thecorrespondent is alsoa qualified practitioner who has been
authority tobindajuristic applicant (i.e., a corporate officer). TMEP 609.04,611.06(d); Tr. at 60-61,
344-345,372.
applicants and registrants to file documents with theAgency. Tr.at61. TEAS isaccessed viathe USPTO
Webpage, www.uspto.gov/trademarks. andthe various TEAS fonns usedto submit filings canalsobe
foundthereand are available to the public. Tr. at 61,176,224; Appellant's Ex. P1-P2. USPTO
encourages electronicfiling of forms because forms filed usingTEAS are automatically uploaded to the
9. Using TEAS, an applicant can fill out an application form, pay an application fee, and receive a
serial numberfor the application. Tr. at 61. Additional filings, such as Responses to Office Actions,
who maysign the forms in trademark proceedings. TMEP 611.01(b); Tr. at 205-207.
10. There are three acceptable signature methods available when filingdocuments electronically
11. The first method is the "Direct" signaturemethod. Here, an appropriate signatoiypersonally
enters his or her name, in any combination of letters, numbers, spaces,and/orpunctuation marks, between
two forward slashes. 37 C.F.R. 2.193(c)(1); TMEP 611.01(c); Tr. at 67, 72,78. This is the default
method offiling documents with TEAS. Tr.at 76. Using theDirect sign method, if a trademark document
to be filedis savedfor later filing, anyelectronic signature would not be savedon theTEAS form and
wouldneed to be reentered - personally by the proper signatoiy - due to a presumption thatthe document
is beingsaved to be modified later. Tr.at 211-213. Therequirement thatthe electronic signature bere-
entered at thetime of filingis donepurposefully, to ensure thatthe person signing andfiling the
document is able to personally verify the facts setforth in the document at the timeof filing. Tr. at 211-
213,216-217, The XML data for filingsusing this signature method will show "<esignature-type>
12. The second method for signingtrademark documents to be filed throughTEAS is the "Esign-on"
or "E-mail Text Fonji to second party for signature."TMEP 611.01(c);Tr. at 67,103-105. This method
allows a TEASuser to fill out a trademark document online and email the document to the appropriate
signatoiy for electronic signature within TEAS. TMEP 611.01(c); Gov. Exs. 476,478-480; Tr. at 67,
103-105,109. Using this method,there is no blockto enter an electronic signature. Tr. at 105.Rather, the
appropriate signatoiy personally signsthe document, which is then automatically returned via TEAS to
the parly who requested signature. TMEP 611.01(c); Tr.at 109. TheXML dataforfilings using this
signature method will show "<esignature-type> ESIGN-ON." Tr. at 116; Gov. Ex. 473, at G17739.
4
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 83 of 120 PageID# 351
i
,3.Theurdmethcdforsigaingadearkdpouxne.sisfl.e"HSl^^^^^
Mcsignawre"method,whichaUows adocumentthatisflUedoutonlinetobe printedandmaUedortoed
toasignatoryfor personalsignatureinthetraditionalpen-and-inkmam^er.
68 128.Thesigiatnreportion, TMEP611.01(0;Tr.at67-
alongwith any requi^ddeclaration. isthenscannedto aJPEGorPDF ffle
aaat.achedtotheTEASfonforsubnrissionto.heUSFTO.TMEPi611.0Kc).Tl^medrod^
a,lowforane.ec.ronicsignatureontheTBASform.Gov.Ex.489;Tr.atl29-130.TheX^
mingsusingthissignaturemethodwi.lshow"-ignature-,ype>HSIGN^^^^^
Tr. at
U 137.
IJ/.
5.. Startmgin2005.Appeltotb^fflig<''>^*^'^'""^^^
payingfees electronicaUy withthe USPTO.Tr. at 320-321.
6. AppeUantbeganservingasadomesticrepresentative and correspondentforforeigntnuiemark
appUcants in 2005 or 2006. Tr. at 16-21,222.
7. S,nceearly2005or2()06.AppeIlantl.asbeenadomesticrepresetativeforpatentadle^^
appUcations.Tr.a,222.AppeUant>sforeignoUentsp,ovidedher.hmeswhichshechecWforem>.s
and fUed with fteUSPTO. Tr. at 222,474,501-502,506-507.619.
g Forthet^demarkfilings identifiedatGovernmentExhibits507 through514,AppeUantadmitted
enteringtheelec.ronicsignatresofhercUen.sond,osefilingsa.dpersonaUyfi.i^^
theTJSPTO.Tr.at574-575.This issodespiteAppellantaclo^owl^igingthatshecouldhavetransm.^
filings tothirdpartiesfor signatmeandlhenfiledthedocuments,viththeOfr.ce.IntEx.ll.atG1575;
Tr.atSSO.
ThftTradeiP^**-^ Applications
A HV-jKIOVm W appHfMsul
9 OaMarch30.2012,AppeUatfiledthe-031applicationwith.heUSm),identifyiB^
company,D.gshanDong^gA,uaticP.ocessingCo..m,('^ngsha.n-fl.ea
4enkseekiggistration.Gov.Ex.507;Tr..t465.Appel.antisnotanofficvvith.hi^
Tr.at467.AppeUa.-s,y204@yahoo.con.e.n^addresswas identifiedasthedesignatede-n^^
infile"ApplicantInformation"and"CorrespondenceInformation"fields. Gov.Be. 507;Tr. at467-468,
473.
v.*-: , - v. . . /.v
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 86 of 120 PageID# 354
n.AppeUantpaid.emingfeefor1he-340appUcationusingherocr^i.c.rd
^04@yahoo.oome-maaaddxessforreoeiptomefflingconfination.G^
98-99; 525-526, 549.
before the USPTO. Jut Ex. 4; Gov. Ex. 510; Tr. at 530.
8
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 87 of 120 PageID# 355
24. OnAugustl7.2013.AppellantmedaSta.ementofUseforthe'74UppUcation.Gov.B^512,at
G18287;T..at564.TheSementofUsewassubmit.edusing.heHSIGN-Onsignateme.hod.Gov.
EX. 512,at018292.Appellantboth electronicallyenteredthename ofanotherperson,"rtimWu/," on
the StatementofUse. aswellas attachedthehandwritten
G18299;Tr.at564.565.TheStatementofUsewas signatureofTimWu.receivedtheExctasionOrder
filed afterAppeUanthad Gov. Ex. 512.atG18288.
fiom theTrademarkCommissionerdatedFebruary21.2013. Jnt. Ex. 4. Gov.Bx. 512.
D >"">
25.OnAprU12.2012,Appellantfiledthe-869appUcationwiththeUSFrO,identie,ingaTaiwanese
corporation, EngKuOp.icalIndus.riaICo..Ltd..astheappUcantand ownerofthemarl^Go^^
Tr. at483,489. AppeUant is notan officerwitt.tocorporation. Tr. at 484. AppeUanfs
^204@yahoo.come-maUaddresswas identifiedasthedesignatede-mailadd^ssinthe-AppUcan^
^formation" fields. Gov. EX. 508. at G1793U Tr. at484. AppeUant-s CanyonCreek*
,y204@yahoo.comemailaddress areidentifiedinthe"CorrespondenceInfom.ation"fields. Gov. Ex.
508, at G17931-G17932; Tr. at 484-485.
9
;y.:;;:?;;:; i.v-V^rr-rv";:;;ri-u;-;;"": ;
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 88 of 120 PageID# 356
i .
ofacopyof1heStateiiieiitofUsesigaedonJanuaryl7,2
J T rv 17 2013,byyMr. Chou. Gov. Ex. 508, at ir.
d
at 495.
29.Appellaiitwaspaidforherwoik.Tr.at484.
E. 2>S&2SffliiEEtiStiaZL^^ . .
30 OnJly30.2012,AppeUantffledthe'678appUcationfUedvdth{heUSPTO.dent^a
32. The-678appUoationideatifiedtheOfficeofBangShUandldentmedAppe.laaf.
address in the"CorrespondenceInformatioa" fields. Gov. Ex. 509, atG17994.
11
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed' 08/17/16
'i ;:\'';-i>; ' Page
' . 90. of 120 PageID#
' 358
.1 i. .. ^
E5ia.5U.Aia.osK.eapp.icaaon.3sforthesame..aae..as...^^
.531appUcaoniaetmedadi^cU^of^o<.thaa.e'741app^^^^^^
5.7Ap^l.atisnct.offic^.h.sco^on.Tr.at561.Ap^ant-s^^^^
address wasid<Ufiedasfldesiga.ed.Bu.addssu..h."AppUca>.Info^^^^^
5aatG18326.Appellant-sLmdeacstCor..ddressandher:yu204@yahoo.oomem^
ito^ffiedtad^e-OHr^ndenoelnfonnation" fields. Gov. Ex. 513.a.GlS326.G18327.
42. Appellaatfiledthe'SSlappUcationusingteDireetsignmethod. Gov.EK.S13.atG18332.Pnor
>filingthe-531 applicationwththeUSPTO.AppeUantenteredtheelectronicsignatureofanother
person,-mmWW." inthe signature field. Tr. at568;Appeal at 10.
43OnMa=h24.2013,AppellantffledaResponsetoOfficeActionforthe'531applicationusmg.he
Directsignmethod.Gov.Ex.513.atG18342,G18346;Tr.at575.Al.hoghAppeUanticldeda.pdf
copywitThnWu'shandwrit.ensigna.urewiththeResponse,Appellantalso e^^
,^of".rimWurh.thesignaturefield.Gov.E.513.atG18342,G18345;Tr.at574;Appe^
10.1heResposewasfiledaerAppe.lanthad.^ivedtheOrderofEKclusionflomth^
Commissioner, datedFebruary 21.2013. fat Ex. 4; Gov. Ex. 510.
44 0nAugustl7.2013.Appel.antfi.edaStatementofUsere,a.edto.he'531appUcadonw..hthe
USPTOGov.Ex.513,atG18365-G18367;Tr.at575.TheStatementofUseasfiledusingtheHSIGN-
Onmefl.odanda.pdfdocumentattached^theStatementofUsemcludedacopyTimWu'shandwrr^
!
i
.' !
signature. Gov.Ex. 513.atG18370.G18378.TheStatementofUsewasfiled afterAppellanthad
^ivedfl.eOrderofExclusionftomtheTr,demarlcCommissioner.da.edFebruary21.2013.I^^
!
!
.1 Gov. Ex. 513.
% ^ ArmVr-'- npplicmon").
. asathirdtkmarkappUcationforMinHsiang.Gov.Exs.512-514.AltboughthisappUca,ionwasfi.r
45.On.Octoberl7.2012,AppelUmtffledflte<529appUca.ion.i.htheUSPTO.Gov.Ex.514.This
i
46 Ue'529appUca.onwasfiI.dusingtheDictsig.me.od.Gov.E.514.atGmi5.P^^^ o
r..S.e.29app..=a.o.wl.^USPTO.AppeU^e.eo
fflmW/.-Mnthedeolaraosigaataref.eldof.heappUoatio.Go.
575: Appeal at 11.
514.
1 .4
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 93 of 120 PageID# 361
USPTO. Gov. Ex. 506, at 017852; Tr. at 577; Appeal at 12. In doing so, she also affinnatively indicated
that slie was an authorized signatoiy for the Change ofConespondence Address form, see Gov. Ex. 506,
at G17853 and Tr. at 577, despite the fact that she is neither someone with the legal authority to bindthe
applicant or apractitioaer qualified to practicebefore the Office in Trademarlc matteis.
Trademark Exclusion
50. On Januaiy 23,2012, the Trademark Commissioner issued aShow Cause Order to Appellant,
informing her that USPTO suspected her ofengagmg in the unauthorized practice oftrademark law
before the USPTO, and was considering issuing an exclusion order. Appellant sEx. C1-C3. Appellant
responded to the Show Cause Order on February 2,2012, stating that she merely provided administrative
support for applicants by serving as their correspondent or domestic representative.
51. On February 21,2013, the Commissioner found that Appellant had engaged in unauthorized
practice in trademark matters before the USPTO and excluded her from participating as acorrespondent
or domesticTepresentative in any current or friture trademark matters before the USPTO. Jnt. Ex. 4,
Appellants Ex. G1-G3; Tr. at 443. The basis for that Exclusion Order was afinding that Appellant
engaged in the unauthorized practice oflaw before the USPTO by preparing and signing trademark
applications and other documents. Jnt Ex. 4. The Order advised Appellant that her contact mformation
would be removed immediately from all relevant trademark applications and registrations and that the
USPTO would notify affected applicants and registrants of any such changes, as necessary. Id. The
Exclusion Order, which Appellant read and understood, was effective unmediately. Jnt. Ex. 4; Tr. at 443.
52. Appellant appealed the Trademark Commissioner's decision to the USPTO Director. On
December 27,2013, the USPTO Director afiFumed the Commissioner's decision. Jnt Ex. 12; Gov. Ex. 13.
Appellant received the Director's decision. Tr. at457.
53. After issuance ofthe Exclusion Order, Appellant's foreign clients instructed her toremove her
name and address from documents filed with the USPTO. Tr. at466. USPTO also removed Appellant's
name from records inthe USPTO database. Appellant's Exs. 12,22. However, Appellant continued
assisting with the trademark documents in violation ofthe Exclusion Order. Gov. Exs. 509-514.
15
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 94 of 120 PageID# 362
54. On November 8,2013, theDirector ofthe Office ofEnrollment and Discipline ("OED Director")
filed aComplaint and Notice ofProceedings under 35 U.S.C. 32 against Appellant, Proceeding No.
D2014-04. A.R.,TabB.01.
55. On March 25,2014, the OED Director filed an Amended Complaint inProceeding No. D2014-
04. A.R.,TabB.49.
56. On June 27,2014, the OED Director filed a second Complaint against Appellant, Proceeding No.
D2014-31. A.R., Tab C.Ol. At tlie OED Director's request, the two cases were consolidated. On July 22,
2014, the OED Director filed an Amended Complaint in D2014-31 ("Amended Complainf), which
removed certain charges and clarified others, and the matter was scheduled for ahearing. A.R., Tab C.07.
57. The Amended Complaint in D2014-31 alleged that Appellant, aregistered patent agent, who is
notand never has been anattorney, went beyond acting as a domestic representative for foreign
applicants and engaged in unauthorized practice in trademark matters before the Office. A.R., Tab C.07.
The Amended Complaint further alleged she forged the electronic signatures ofapplicants to trademark
documents andfiled those documents withtheUSPTO, in connection with the following trademark
applications: the *031 application; the *678 application; the *340 application; the *741 application; the
*310 application; the '531 application; the *529 application; and signed her own name on a trade mark
document filed inconnection withapplication serial number the'647 application. A.R., TabC.07.
Furthermore, Appellant was alleged tohave continued toact as the domestic representative incertain
trademark applications after being excluded from doing soby the Commissioner and tohave concealed
hermisconduct byusing ane-mail ormailing address thathad notyetbeen detected bythe USPTO as
being associated with her. Id. Finally, Appellant was alleged tohave actively assisted foreign attorneys in
the unauthorized practice of trademark law. Id.
58. OnAugust 20,2014, Appellant filed anAnswer and Counterclaim to the Amended Complaint
^Answer"). A.R., TabC.21. Appellant denied the Amended Complaint's allegations and raised a number
16
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 95 of 120 PageID# 363
59. On October 1,2014,the OED Director filed aMotion to Dismiss D2014-04, electing to proceed
to trial only on the allegations asserted in D2014-31. A.R., Tab C.40. The Motion to Dismiss D2014-04
was granted by the AIJ on the first day ofthe heariig. Tr. at46,3-4. The hearing proceeded based solely
upon the Amended Complaint fded July 22,2014 in 02014-31. Seegenerally, A.R., Tab F(transcript of
proceedings).
60. Ahearing before the AU was held on October 6-10,2014. A.R., Tab F.
in. INITIAL DECISION BY ADMINISTRATIVE LAW JUDGE
On April 22,2015, the ALJ issued an Initial Decision and Order in Proceeding No. D2014-31. A.R.,
Tab A. In that decision, the ALJ found that Appellant's actions regarding documents filed mconnection
with the nine applications constituted misconduct in four ways: (1) Appellant improperly signed
trademark documents filed with the USPTO; (2) Appellant improperly filed trademark documents
prepared by foreign attorneys; (3) Appellant's actions went beyond the role ofadomestic representative
and constituted practice before the Office in trademark matters; and (4) Appellant continued to act as a
domestic representative after being excluded from doing so by the Trademark Commissioner. Id. The
AU concluded that Appellant's misconduct violated the following USPTO disciplinary rules: 37 C.F.R.
10.23(a) (disreputable misconduct); 10.23(b)(4) (deceit and misrepresentations to the USPTO);
11.804(c) (deceit and misrepresentations to the USPTO); 11.303(aXl) (failure to correct
misrepresentations made to the Office); 10.77(a) (handling matters she was not competent to handle);
11.505 (aiding others in the unauthorized practice oflaw); and 10.23(b)(5) and 11.804(d) (conduct
prejudicial to the administration ofjustice). Id.
In addition to the specific findings and conclusions, the AU also found that Appellant's affirmative
defenses had no merit. A.R., Tab A. The AU rejected Appellant's constitutional, jurisdictional, and
regulatory arguments in their entirety. A.R., Tab A.
Finally, after weiring the factors set forth at 37 C.F.R. 11.54(b), the AU ordered that Appellant be
excluded {torn practice before the Office in patent, trademaric, and other non-patent matters. A.R., Tab A.
17
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 96 of 120 PageID# 364
AppeUant has been aregistered patent agent since 2005. Tr. at 295-296. As such, she is subject to the
disciplinaryjurisdiction ofthe Office. 37 C.F.R. 11.19(a). For the conduct involved in this disciplinary
case. Appellant was subject to the ethical requirements set forth in both the USPTO Code ofProfessional
Responsibility, 37 C.F.R. 10.20 etseq, and the Rules ofProfessional Conduct, 37 C.F.R. 1l.lOl et
seq.^
Appellant appeals from the April 22,2014, initial decision ofthe AU enteringjudgment in favor of
the Agency and excluding Appellant from the practice ofpatent, trademark, and other non-patent matters
before the Office. See A.R., Tab A. USPTO regulations permit a party toappeal anALJ's initial decision
to the USPTO Director within thirty (30) days ofissuance ofthe initial decision. See 37 C.F.R.
11.55(a); see also 35 U.S. C. 2(b)(2)(D). On appeal, the USPTO Director has authority to conduct ade
ovo review ofthefactual record. 37C.F.R. 11.55(f), 11.56(a). The USPTO Director may affirm,
reverse, ormodify the initial decision, orremand the matter to the hearing officer for such further
proceedings as the USPTO Director may deem appropriate. See 37 C.F.R. 11.56(a).
The Director, having considered Appellant*s appeal and the record ofthe proceedings before the ALJ,
which includes admissions made byAppellant during the hearing proceedings, finds that there isample
evidence to support the AU's bitial decision. The decision was properly made and therefore the initial
decision oftiie AU is AFFlKlVIEP.
A. Jurisdiction.
Appellant has raised various arguments that the Agency has no jurisdiction todiscipline her. She
argues that the "PTO has no 'substantive rulemaking power.'*' A.R., Tab C.53, at16-19; Appeal at 15-17;
Reply at13-15. Additionally, she claims that the Trademark rules and TMEP "govern the conduct of
^Effective May 3,2013, the USPTO Rules ofProfessional Conduct, 37C.F.R. 11.101 through 11.901, apply to
persons who practice before the Office. Prior toMay 3,2013, the USPTO Code ofProfessional Responsibility
applied topersons practicing before the Office. See 37 C.F.R. 10.20-10.112. Here, since Appellant's alleged
misconduct occurred both prior to and after May 3,2013,both theoldandthenew rules areimplicated.
18
Case 1:16-cv-01051-AJT-MSN Document 1-3 Filed 08/17/16 Page 97 of 120 PageID# 365
'proceedings' oftrademark examination at PTO, not the conduct of^practitioners/** and, as aresult, the
Trademark rules and TMEP cannot form thebasis ofa disciplinary action against a practitioner. A.R., Tab
C53 at 16 19; Appeal at 14: Reply at 13-15. Finally, she claims that state law, rather than federal law,
applies to her practice before the Office. Reply at 13. None ofthese arguments has any legal support.
Congress vested the USPTO with plenary, statutory authority to promulgate regulations "govem[ing]
the recognition and conduct ofagents^ attorneys, or other persons representing applicants orother parties
before the OflTice." 35 U.S.C. 2(b)(2XD); see also Kroll v. Finnerty, 242 F.3d 1359,1364 (Fed. Cir.
2001) (stating that the USPTO has the "exclusive authority to establish qualifications for admitting
persons to practice before it, and to suspend or exclude them from practicing before if);Haley v. USPTO,
2015 WL 5277880, at *8 (E.D. Va. Sept. 8,2015) (noting that "Congress gave the USPTO wide latitude
to govern the conduct ofthe members ofits bar"). The Director ofthe USPTO may suspend or exclude a
person from practice before the Patent and Trademark Office ifthe person is "shown to be incompetent or
disreputable, or guilty ofgross misconduct," or ifthe person violates regulations established by the
Office. 35 U.S.C. 32. Thus, there is no question that the USPTO Director has authority toregulate
practice before the Office in both patent and trademark matters, including the unauthorized practice of
law before the Office. (See id.); see also Haley 2015 WL 5277880, at 9("Congress also explicitly gives
the USPTO the power to promulgate regulations related tothe conduct ofitsmembers.")
Pursuant toitsauthority to regulate theconduct ofpractitioners, the USPTO enacted itsformer Code
ofProfessional Responsibility, 37C.F.R. 10.20 etseq.. and the current Rules ofProfessional Conduct,
37 C.F.R. 11.101 throu^ 11.901, both ofwhich include anumber ofmandatory disciplinary rules
setting forth the minimum level ofconduct below which no registered patent practitioner can fall without
being subjected todisciplinary action. Ifa registered patent practitioner engages in misconduct and/or
fails to comply with his orherprofessional obligations inviolation ofthese rules, the USPTO has the
authority tosuspend cr exclude the practitioner from fiirther practice before theOffice. See 35 U.S.C.
32;37 C.F.R. 11.19. Appellant, asa registered patent agent, is a practitioner and thus is bound bythe
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USPTO's disciplinary rules and is subject to the disciplinaryjurisdiction ofthe Office. 37 CF-FL
11.19(a).
Appellant's argument that violations ofthe Trademark rules and TMEP cannot form the basis ofa
disciplinary action is rejected. It is well-setUed that apractitioner is subject to the Office's disciplinary
jurisdictionfor misconduct that is not specificaUy set forth in the disciplinary rules. See In re Edmgton,
ProceedingNo. D2008-12 (USPTO July 9,2009) (finding the Respondent's manslaughter conviction to
be sufficient evidence that the respondent engaged in disreputable or gross misconduct in violation ofthe
USPTO's disciplinary rules); In re Reynolds, Proceeding No. D1999-12, at 19 (USPTO Apr. 4,2001)
(finding Respondent's convictions for driving while intoxicated represent conduct adversely reflecting on
his fitness to practice law in violation of37 C.F.R. 10.23(b)). Here, the AU correcUy noted that both
the Trademark rules set forth in Title 37, part 2, ofthe Code ofFederal Regulations, and the TMEP set
forth the proper practices and procedures relative to prosecution oftrademark applications before the
USPTO. Dec. at16. These authorities also offer guidance as to the appropriate conduct oftrademark
appUcants, attorneys, representatives for trademark applicants when registering marks with the USPTO.
Id, See generally, 37 C.F.R. Pt. 2; TMEP 600. The AU's conclusion that conduct that violates these
authorities may also constitute misconduct under the disciplinary rules is reasonable and supported by
precedent Thus, Appellant's argument that the Trademark rules and TMEP cannot form the basis ofa
disciplinary action is without merit.
Lastly, Appellant's argument that state law, rather than federal law, applies to her practice before the
Office is without any legal foundation. It is long-settled that regulating admission and disciplinary issues
before the USPTO lies within USPTO's exclusive jurisdiction. See Sperry v. Florida ex rel Florida Bar,
373 U.S 379,385-386 (1963) (Registration with the USPTO confers aright to practice before the Office
without regard to whether astate within which the practice is conducted would otherwise prohibit such
conduct); see also Kroll, 242 F3d at 1364 ("(T]he PTO has exclusive authority to establish qualifications
and procedures for admitting persons to practice before the PTO, and to suspend or exclude those patent
practitioners firom practicing before thePTO.")
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Finding that Appellant isbound by the USPTO's disciplinary rules and is subject to the disciplinary
jurisdiction ofthe Office, allegations ofAppellant's misconduct is discussed in detail below.
B. Appellant's Actions Constitute Misconduct.
improperly signed trademark documents filed with the USPTO; (2) Appellant filed trademark documents
prepared by foreij^ attorneys; (3) Appellant engaged in actions that went beyond the role ofadomestic
representative and constituted practice oflaw before the Office in trademark matters; and (4) Appellant
continued to act asa domestic representative after being excluded from doing so bythe Trademark
Conmiissioner. A.R., Tab A.
Each ofthese conclusions, as discussed further below, are amply supported bytherecord.
isnot an attomey, the intent ofthe documents as towhat authority isactually conveyed was found to be
unclear and, even ifpowers were properly bestowed, the AU concluded Appellant could not have acted
on behalfofthe applicant asshe did not have personal knowledge ofthe facts, as required by the TMEP.
Dec. at 11-12. Lastly, even ifAppellant had been a proper signatoiy, the AU concluded that she should
have signed her own name onthetrademark documents and not the name ofanother person. Dec. at 13.
Each of these findings, which areproper based upon the evidence inthe record, are discussed further
below.
All correspondence andfilings with theOffice thatrequire a signature must bear either a handwritten
(c). Here, all ofthe documents at issue were filed electronically using the TEAS system. Gov. Exs. 506-
514. As such, the rules governing the signature ofdocuments filed electronically apply. As stated, those
rules require that aperson signing adocument electronically must '^personally enter any combination of
letters, numbers, spaces and/or punctuation marks in the signature block on the electronic submission.'' 37
C.F.R. 2.193(c)(1) (emphasis added); TMEP 611.01(c). Another person may not sign the name ofa
qualified practitioner orother authorized signatory. TMEP 611.01(c). There is no instance in which a
person is permitted to sign the name ofanother person, as Appellant admits having done repeatedly.
As stated above, using TEAS, there are three acceptable methods available for transmittmg
documents to the USPTO. TMEP 611.01(c); Tr. at 67. The "Direct" signature method permits an
appropriate signatory to personally enter his or her name, in acombination of letters, numbers, spaces,
and/or punctuation marks, between two forward slashes. Tr. at 67,72,78; 37 C.F.R. 2.193(cXl). This is
the default method offiUng documents with TEAS. Tr. at76. The XML data for filings using this
signature method will show "<esignature-type> DIRECT." Sfee. e.g.,Gov.Ex. 510 (xml data for *340
application); Tr. at 96-^7. The second method, "Esign-on" or "E-mail Text Form to second party for
signature,*' allows aTEAS user to email atext version ofaTEAS form to the appropriate signatory for
signature, which is then automatically returned via TEAS to the party who requested signature for filing.
TMEP 611.01(c); Tr. at 67, 103-105, 109-115. The third method for signing trademark documents is the
"HSign-On" or "Handwritten pen-and-ink signature" method, where auser can submit aprinted pen-and-
ink signature personally made by an appropriate signatory, which is then scanned as aPDF or JPEG file
and attached totheTEAS form for filing. TMEP 611.01(c); Tr. at 67-68, 128. Using this method, there
also is no option for an electronic signature on the TEAS form. Gov. Ex. 489; Tr. at 129-130. The XML
data for filings using this signature metliod will show "<esignature-type> HSIGN-ON." Gov. Ex. 508, at
G17938; Tr. at 137. Regardless ofwhich ofthe three methods chosen, no circumstances permit a person
to sign the name ofanother person on atrademark document. TMEP 611.01(c); Tr. at 64. Instead, all
documents must bepersonally signed. 37C.F.R. 2.193; TMEP 611.01(c); Tr. at64.
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ti addition to providing aproper signature, all documents filed with the office must be properly
signed by an authorized signatory. TMEP 611.02; Tr. at 333-334. For example, verifications offacts on
behalfofan applicant or registrant, such as an application^ or statement ofuse, must be personally signed
by someone meeting the requirements of37 CFR 2.193(c)(1). TMEP 611.02,611.03(a). Other
documents must be personally signed by the applicant or registrant, someone with legal authority to bind
the applicant, or aqualified practitioner. TMEP 611.02; Tr. at 347. For ajuristic applicant, aperson
with legal authority to bind acorporation is acorporate officer, including inter alia acorporate President,
Vice-President, Secretary, or Treasurer. TMEP 611.02,611.06(d); Tr. at 329,333-334.
The facts ofthe record, including admissions made by Appellant, fiilly support the AU'sfindings and
conclusions that Appellant repeatedly improperly signed trademark documents filed with the USPTO.
Appellant admitted that she electronically signed the name ofapplicants and registrants on trademark
documents filed with the OfiBce and which are associated with the following trademark serial numbers:
'031, *340, *741, *869, *678, *310, *531, and *529. Tr. at 478-479,482,490-491,494-495,502,507-508,
514, 520,545, 560,562-563,564-565,568,574-575. These multiple acts offiling another person's name
on trademark documents filed with the Office constitute aclear violation ofthe trademark rules, which
require that all documents filed with the Office be personally signed, and these acts offiling are
misconduct.
As adefense. Appellant repeatedly claims that she only signed the names ofapplicants or registrants
totrademark documents because TEAS removed orerased the applicants orregistrants' direct signatures.
A.R., Tab C.53; Appeal at 22-25; Reply at 3. Appellant's argument demonstrates her misunderstanding of
the signature options mTEAS. The bulk ofthe documents here were filed using the Direct signature
method, which requires that an authorized signatoiy personally sign the document at the time offiling. Tr.
at 212-213. If thedocument is downloaded forlater filing, then TEAS requires theelectronic signature to
be entered again so as to ensure that the person filing itis able to personally verify the facts set forth in
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the document at the time offiling. Tr. at 211-213,216-217. IfAppellant had wished to file atrademark
in amanner that did not require the contemporaneous electronic signature ofan authorized
signatory at die time offiling, she should have selected the E-sign or H-sign options. She did not
Consequently, an appropriate signatory was required to personally sign any document at the time of
filing. No circumstances permit AppeUant to do what she did here instead, that is, to sign electronically
another person's name to atrademark document and then file that with the Office.
Appellanthas not shown that she was aproper signatory for any ofthe filings noted above. The
^ppii^.nt.= and registrants on thefilings are alljuristicentities. Gov. Exs. 507-514. The record does not
show Appellant to be acorporats officer for any ofthese entities, in which case she would have legal
authority to bind these corporations. Tr. at 467,484,500,516,535,561. Appellantclaims titat"[f]oreign
applicants authorized Dr. Shia to submit trademark documents to the USPTO." Appeal at 5; A.R.. Tab
C.53. However, areview ofher testimony and the documents that Appellant submitted at the hearing, all
ofwhich the AU considered and addressed in his opinion, do not support her argument
First, even ifthe documents Appellant provided had consisted ofproper Powers ofAttorney,
Appellant is not an attorney. Tr. at 297. See 37 C.F.R. 2.193(eXl)(An attorney with power ofattorney is
properly authorized to sign adeclaration on behalfofan owner.) Valid Powers ofAttorney must
designateby name at least one individual qualified practitioner. TMEP 605.01. See also 37 C.F.R.
2.17(b) ("To be recognized as arepresentative in atrademark case, apractitionerqualified under11.14
ofthis chapter may [f]ile apower ofattorney....") (emphasis added); Malinay v. Nishimwa, 2013 WL
4240460, at *1 (D. Haw. Aug. 'A, 2013) (A powerofattorney only pemits nonlawyer to act on another's
behalffor matters for which an attorney license is not required.); Syan v. Hyden, 2012 WL 4793116 (S.D.
Cal. Oct 9,2012) (even ifanon-attomey was given adurable power ofattorney with broad language
regirding and litigation, that power ofattomqr does notvalidly providetiie right to representthat
person as his or her attorney); Harris v. PhiladelphiaPolice Dep7,2006 WL 3025882 (E.D. Pa. Oct 20,
2006) (Federal courts do not permit anon-attomey to engage in the imaulhorized practice oflaw by
pursuingan action pro se with plamtifPs power ofattorney.); Ross v. ChakrabarH, 5A.3d 135,139 (Md.
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Ct Spec. App. 2010) (finding apower ofattorney did not give an agent the right to perform legal
services, where the law does not permit the principal to act through an agent who is not licensed to
perform such services).
In addition, the text ofthe documents Appellant submitted simply do not grant her the authority
claimed. Though titled as Powers ofAttorney or "Authorization From The Applicant Before the
USPTO", they are not Powers ofAttorney that comply with the requirements ofthe TMEP or 37 C.F.R.
2.17. The documents, which appear to be cut and pasted from other documents, do not adequately
describe the authorities conveyed to Appellant; they consist of"Declaration" boxes and other pieces of
information that do net bear upon finding avalid power ofattomey. A.R., Tab C.44. Finally, even ifthe
document did permit Appellant :o act on behalfof individual applicants or registrants. Appellant still is
not permitted to enter the electronic signature for other individual applicants and registrants as was done
here.
on the record. Appellant engaged in misconduct when she improperly signed trademark
docmnents filed with the USPTO. Appellant improperly signed the name oftrademark applicants and
registrants on trademaric documents, in violation ofOffice rules. The AU's findings and conclusions are
supported.
Appellant testified atthe hearing on multiple occasions that foreign attorneys would prepare
trademark documents andforward those documents toherforreview. Tr.at222,474,501-502,506-507,
619. Appellant would then file those documents with the USPTO. Tr. at 575. Appellant was paid for her
review, signing, and filing oftrademark documents. Tr. at467,484,500-501,516-517.
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Onlyin limited circumstances may foreign agents or attorneys file an application for reciprocal
recognition to represent parties in their country. 37 C.F.R. 11.14(c); TMEP 602.03. However, here,
there is no evidence in the record to supporta conclusionthat the foreignattorneys that Appellantworked
with to prepare andfile trademark documents with theOffice were recognized under these provisions.
The AU also concluded that Appellant engaged in activities that wentbeyondherrole as a domestic
representative orcorrespondent and constituted the practice oftrademark matters before the Office. Dec.
at 14. Specific actions that Appellant engaged inand which constituted the practice oftrademark law
before the Ofiice includedthe fact that foreign attorneyswould preparetrademarkapplications.
Responses toOffice Action, and Statements ofUse, and then send those documents toher for review and
submission to the Office, which Appellant did. Dec.at 14. Onseveral occasions. Appellant completed the
before the USPTO. 37 C.F.R. 11.14(a). "Individualswho are not attorneysare not recognized to
practice before theOffice intrademark... matters.'* 37C.F.R. 11.14(b); seealsoTMEP 602.01. The
practice oftrademark matters includes, inter alia^ preparing a trademark application; prosecuting a
trademark application including by submitting an amendment, response, or other document; andsigning
amendments andresponses to Office actions. 37C,F.R. 11.5(b)(2); TMEP 608.01. A non-attorney can
interactwith the USPTO concerning a trademark application or registration only in limited administrative
support roles. Forexample, a "correspondent" may "transmit and receive correspondence." TMEP
theapplication ... or registration or ri^ts thereunder^ fora foreign applicant or registrant. 37C.F.R.
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3.61;iee tdso TMEP 610 ("Designatioa ofDomestic Rspresentative by Parties Not Domiciled mthe
United States"). Neither aconespondent or domestic representative is authorized to prosecute an
application orrepresentaparty in aproceeding beforethe USPTO, unless the domestic representative is
also aqualified practitionerwho has been recognized by the USPTO as flie representative ofan applicant
or registrant or is someone with legal authority to bind ajuristic appUcant acorporate officer).
TMEP 609.04,611.06(d); Tr. at 58,60-61,194-195,328-330,342,344-345,372.
Appellantunequivocally engaged in the activities cited by the AU and thq- far exceeded any
authority she would have as adomestic representative or conespondent. She was not an owner ofany of
the marks in the applications or registrations filed and she held no corporate officer position with the
applicant corporation. Gov. Exs. 506-514; Tr. at467,484,500,516,535,561. She is not an attorney. Tr.
at297. Yet, she testified that she reviewe4 signed and filed trademark documents with the Office. Tliese
fully support the AU's findings that Appellant's conduct went beyond merely forwarding
correspondence betweenthe applicants and the USPTO and constituted practice before the Office in
trademark matters under 37 C.FJR. 11.5(bX2) and TMEP 608.01 and is misconduct.
4. Appellant Continued to Act As Domestic Representative After Being Excluded From Doing
So by the Trademark Commissioner.
Lastly, the AU found fliat Appellant continued to file trademark documents with the USPTO even
after receivmg an Exclusion Order from the Commissioner for Trademarks directing her to stop acting as
a representative or conespondent in trademark matters before the Office. Dec. at 16. Documents
for which she continued to file ttademaik documents included Statements ofUse, Responses to Office
Actions, and Change ofCorrespondence Address forms related to the '340, '741, '678, '310, '529, and
'531 Dec. at 16. Again, these findmgs are supported by the record.
On February 21,2013, the Commissioner found that Appellant had engaged in unauthorized practice
in trademalk matters before the USPTO and excluded her participating as acorrespondent or domestic
representative in any current or fiitare trademark matters before the Office. Jnt Ex. 4; Appellant sEtc.
Xr. at 443. The Order advised Appellant that her contact information would be removed
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immediately from all relevant trademark applications and registrations and that the USPTO will notify
affected applicants and registrants ofany such changes. Jnt Ex. 4. The Exclusion Order was effective
immediately. Jnt. Ex. 4. Appellant read and understood the letter. Tr. at 443. The USPTO Director
affirmed the Commissioner's decision. Jnt Ex. 12; Gov. Ex. 13. Appellant received this decision. Tr. at
457.
Despite receiving and understanding the Exclusion Order, Appellant continued assisting her foreign
clients with their trademark applications. While her name and mailing address were taken offofas
domestic representative or correspondent, her email address remained listed as such on documents filed
with the Office. Gov. Exs. 507-511. She also continued to submit trademark documents to the Office after
February 21,2013. Gov. Exs. 509- 514; Tr. at 575. Continuing with these activities -assisting and filing
trademark documents and listing her email on trademark documents asdomestic representative or
correspondent after receiving and understanding the Trademark Commissioner's Exclusion Order is
misconduct.
violated 6 ethical rules oftheUSPTO Rules of Professional Conduct and Code of Professional
Responsibility. Dec. at 16. As discussed further below, the AU's conclusions were appropriate.
1. 37 CJTJR^ 10.23(a) - Dbreputable Conduct.
"A practitioner shall not engage in disreputable orgross misconduct" 37 C.F.R. 10.23(a). USPTO
regulations do not define what constitutes disreputable orgross misconduct However," disreputable
conduct has generally included unprofessional conduct" and was well understood to include "any conduct
violative ofthe ordinary standard ofprofessional obligation and honor." Jn re Lane, Proceeding No.
Appellant's argument that the AUen-ed in applying the fonner 37 C.F.R. part 10 to the aUeged misconduct is
without merit See RReply at4.Part 10 continues toapply tomisconduct that occurred prior toMay 13,2013, the
datethenew Rules of Professional Conduct became effective. And, although Appellant is correct thatconduct
engaged in prior to May 13,2013 could also constitute violations ofthe new niles, 37 C.F.R. 11.901, this does
notnegate theapplicability of the prior Part10.
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The AU concluded that Appellant violated 37 C.F.R. 10.23(a) because her conduct did not comply
with the practices and procedures outlined by the USFTO, specifically, by afSxing her clients' electronic
signatures to trademark documents and by filing trademark documents prepared by unauthorized foreign
attom^, both activities that violate the USPTO's rules. Dec. at 17. Appellant further engaged in
disreputable conductwhen she continued to actas domestic correspondent after being excluded fixjm
doing so by the Commissioner, and then attempted to conceal that feet from the Agency. Dec. at 17. For
the reasons set forth below, the ALTs conclusion that Appellant engaged in disreputable conduct U
Upheld.
As the ALJ correctly noted, the trademark rules, 37 G.F.R. pt. 2, and the TMEP, set forth the rules of
practice that have been established and which must be followed when practicing trademark matters before
the USPTO. See 37 C.F.R. pt. 2; TMEP, INTRODUCTION ("The primary function ofthe rules of
practice is to advise the public ofthe regulations that have been established in accordance with the
statutes, which must be followed before the USPTO.") And, though aviolation ofthe trademark rules or
TMEP are notperse violations ofUSPTO's disciplinary rules, misconduct not specificaUy identified
within the trademark rules orTMEP may constitute misconduct for purposes ofdiscipline. See Inre
Edington, ProceedingNo. D2008-12, at 6(USPTO Mar. 13,2009) (finding the^Respondent's
manslaughter conviction to be sufficient evidence that the respondent engaged in disreputable or gross
misconduct inviolation ofthe USPTO disciplinary rules); In reRemolds, Proceeding No. D1999-12, at
19 (USPTO Apr. 4,2001) (finding Respondent's convictions for driving while intoxicated represent
conduct adversely reflecting on his fitness topractice law in violation of37 C.F.R. 10.23(b)).
The record before the Director fully supports the ALJ*s findings that Appellant affixed her clients'
electronic signatures to trademark documents, filed trademark documents prepared by unauthorized
foreign attomeys, and continued to act as domestic correspondent after being excluded fi-om doing so by
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the Commissioner, and then attempted to conceal that fact from the Agency. These actions unequivocally
violate the trademark rules and the TMEP, as well as defied the Commissioner's authority to regulate
those who practice in trademark matters before the OfBce. 37 C.F.R. 2.193; 11.1,11.5(bX2),
11.14(a) and (b); TMEP 602.01,602.03,608.01,611.01(b) and (c); Jnt Ex. 4. Consequently, the
ALJ's finding that Appellant engaged in disreputable conduct is proper.
2. 37 C.F.R. 10.23(b)(4) and 11.804(c) - Apractitioner shall not engage in
conduct involving dishonesty, fraud, deceit, ormisrepresentation.
Apractitioner shall not [e]ngage in conduct involvmg dishonesty, fraud, deceit, or
misrepresentation." 37 C.F.R. 10.23(bX4); 37 C.F.R. 11.804(c) (2013). The AU concluded that
Appellant violated these provisions by falsely representing that trademark documents bore applicants'
actual signatures, by filing Change ofCorrespondence Address forms that purported to remove her name
as the domestic representative or correspondent butthat provided an email address that the USPTO had
not yet attributed to her, and by affirmatively misrepresenting that she was an authorized signatory on the
*647 application when she was not. Dec. at18.
USPTO regulations do not defme "deceit,'' "dishonesty," or misrepresentation. "^Deceit' has been
defmed as 'dishonest behavior' or 'behavior that is meant to fool or trick someone."' See In re Lane,
Proceeding No. D2013-07, at 14 (quotin^eriam-Webster.com (2014)). The forgery ofaperson's
signature constitutes an act ofdeceit. See Iowa Supreme CourtAttorney Disciplinary Bd v. Liles, 808
N.W.2d 203,206 (Iowa 2012) (finding an attorney's forgery ofawitness's signature on awill constitutes
deceitful conduct); Disciplinary Counsel v. Wilson, 32 N.E.3d 426,427-428 (Ohio 2014) (finding an
attorney who signed her daughter-in-law's name onto asworn affidavit and presented that affidavit to the
court engaged in conduct involving dishonesty, fraud, deceit, or misrepresentation even though the
attorney believed she had her daughter-in-law's consent to do so).
"A misrepresentation is *[t]he act ofmaking afalse or misleading assertion about something,
usu[ally] with the intent to deceive,' and includes 'notjust written or spoken words but also any other
conduct that amounts to afalse assertion.'" In re Lane, at 14 (quoting Black's Law Dictionary (9"^ ed.
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2009)). Therefore, "[c]oiicealment or even non-disclosure may have the effect ofamisrepresentation.*' Id.
Falsely signing adocument and submitting it to the Office is afalse representation even ifthe substance
ofthedocument is accurate, because thesignature is misleading. In re Uchendu, 812 A.2d 933,939 (D.C.
2002)."'
Here, Appellant admitted to signing the signatures ofapplicants on several trademark applications
andother trademark documents and then filing those documents with theUSPTO. Tr. at 574-575; Appeal,
at 6-11. Though she attempts to justify her actions by attacking the TEAS system design and by casting
her actions asakin to '^photocopying,'' seeAppeal at 12,24-25; Reply at 3,these self-serving
justifications do not excuse her actions. The AUcorrectly noted that Appellant made no attempt to
provide notice or otherwise indicate that the electronic signatures were entered by anyone other than the
purported signatories. Thus, she falsely represented that the documents bore the applicants' actual
signatures, which is dsceitfiil andmisleading.
The AU's finding that Appellant concealed thefact that she was continuing toact as a domestic
representative orcorrespondent despite being excluded from doing so by the Commissioner for
Trademarks also finds support intherecord. After receiving the Trademark Commissioner's January 23,
2012 ShowCause Orderand the February 21,2013 Exclusion Order, Appellantfiled five Changeof
Correspondence Address forms purporting atfirst glance toremove Appellant from that role. Gov. Exs.
^Appellant's attempts todistinguish Uchendu areunpersuasive. As here, Uchendu signed hisclients' names on
documents thatrequired verification anddienfiled those documents witha court. SUchendu, 812A.2d at 934. Also
as here, Uchendu claimed, andthe court rejected, thathe had theauthority to signdocuments forhis clients. The
court noted thata general right to delegate signature onprobate documents would be inappropriate in light of the
verification requirements for those documents. Id. at937-938. Finally, Uchendu's argument Aat hedid not intend to
defiaud anyone was rejected bythecourt, which stated *Jiat **lack ofintent to defraud does not alter the falsity ofhis
representations orthe dishonesty ofhisconduct" Id.at 939. "(HJonesty is basic tothepractice of law " Id.This
reasoning is persuasive andAppellant's defense thatshe lackedintent to deceive isrejected.
' Appellant repeatedly stated herview that TEAS "erased" theproper signatories' e-signatures, which necessitated
herto signtheTEAS fomis uponfiling. A.R., Tab 0.53; Appeal at 22-25; Reply at 3. However, thisdemonstrates
Appellant's lack of competence inusing theTEAS system. Appellant chose the"Direct" sign method forthevast
majority ofthefilings atissue. Using this method, the requirement that theelectronic signature bere-entered atthe
time of filing is done purposefully, to ensure thattheperson signing and filing thedocument isableto personally
verify thefects setforth inthedocument at thetime of filing. Tr.at211-213,216-217. If she wanted to notenter a
signature contemporaneously with filing, she should have elected tofile the documents using the E-sign orH-sign
methods.
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507-511 (Change ofCoirespondence Address forms); Jnt. Ex. 4; Tr. at 443. Despite this apparent change,
however, these rhangn ofCorrespondence Address forms identify email addresses belonging to
Appellant and which USPTO had not yet associated with Appellant. Gov. Exs. 507-511 (Change of
Correspondence Address forms). This conduct is deceitful.
Finally, on February 7,2013, Appellant misrepresented to the liSPTO that she was an authorized
signatory on the Change ofCorrespondence Address for the '647 application by indicating "YES" in the
on the form that asks ifthe signatory is an "authorized signatory." Gov. Ex. 506, at G17852; Tr. at
577. Since a ofCorrespondence address form must be signed by someone with legal authority to
bindthe applicant or apractitioner qualified to practice before the Office in trademark matters, and
Appellant is neidrer ofthese, this "Yes" representation was also deceitful and false.
In sum, based on the foregoing, the AU's conclusion that AppeUanfs conduct invoked deceit and
misrepresentations in violation of37 Cf.R. 10.23(bX4) and 11.804(c) was proper.
3. 37 C.F.R. 11303(a) - Failed tocorrect misrepresentations.
Apractitioner shall not knowingly "[m]ake afalse statement offact or law to atribunal or fail to
correct a false statement ofmaterial fact or law previously made to the tribunal by the practitioner.'' 37
C.F.R. 11.303(aXl). The AU correctly concluded that Appellant made misrepresentations to the Office
that she failed to correct, inviolation of 11.303(a). Dec. at 19.
As noted, the ALJ properly found that Appellant falsely represented that trademark documents bore
the applicants' actual signatures, filed Change ofCorrespondence Address forms that purported to remove
her name as the domestic representative or correspondent but that provided an email address that the
USPTO had not yet attributed to her, and affirmatively misrepresented that she was an authorized
signatory on the '647 application when she was not. The Trademaric Commissioner's Show Cause Order
dated January 23,2012 put Appellant on notice, confirmed by the Exclusion Order dated February 21,
2013 that provided further notice and explained that the act ofelectronically signing an applicant's name
onto trademark documents is inappropriate. JntEx. 4. Appellant testified that she read the Exclusion
Order and understood its contents. Tr. at 443. However, Appellant made no attempt to correct her prior
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misrepresentations relatedto the trademark documents cited in this matter. This failure to correct these
felse representations to the OfBce violates 37 C.F.R. 11.303(aXl)-'
4. 37 C.F.R. 10.77 -Appellant handled matters she should have known she was
not competentto handle.
"A rr''^"n<-r shall not... [hjandle alegal matter whichthe practitioner knows or should know that
the practitioner is not competent tohandle...." 37 C.F.R. 10.77(a). Section 10.77(a) requires, ta part,
that apractitioner know the rules relatingto the matter for which she is representing her clients. And, by
agreeing to represent these clients it isfte practitioner's duty to inform herselfofthe applicable rules if
she does not already know them. See Reibman v. Senie, 302 A.D.2d 290,291 (N.Y. App. Div. 2003);
Attorney Grievance Conm'n ofMd. v. Zhang, 100 A.3d 1112.1129 (Md. 2014), reconsideration denied
(Aug. 27,2014) (finding an attorney did not provide competent representation to aclient by failing to
conduct any legal research before advising her client on amatter in which the attorney was not familiar).
By agreeuig to act as domestic representative and to file documents with the Office on behalfof
foreign applicants, the AU correctly noted that Appellant was required to educate herselfontfie proper
method for filing electronically on TEAS and with the appropriate signature. Dec. at 19-20. hiformation
that would have been helpfiil to Appellant can be found in the Trademark Rules, the TMEP, and by
viewing the "Help" section on the TEAS Forms. Dec. at 20. Appellant provided no defense that would
excuse why she vras unwillmg or unable to educate herselfas to the proper signature method or how to
properly file trademark documents with the OfBce. Her feilure to educate herselfmeans thatshe was
h^nHling trademark matters before the Office knowing that she lacked the competence to do so, in
violation of37 C.F.R. 10-77(a).
' Thoueh the feilure to correct felse representation occurred both before and after the effective date ofthe new Rdes
ofProfessional Conduct, May 13,2013, AppeUant was only charged by the OED Director under the new rules. A.R.,
TabC.7.
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Proceeding No. D2014-11 (USPTO Apr. 29,2014) (excluding a practitioner who engaged in the
unauthorized practice oflaw by representing aclient in acivil and criminal matter before the Colorado
courts despite not being alicensed attorney). Here the AU concluded that Appellant violated this
provision when she filed Statements ofUse for the *340 and ^531 appUcations,' which had been prepared
by foreign attorneys not authorized to practice before the Office. Dec. at 21.
Determining whether conduct constitutes aiding another in the unauthorized practice oflaw requires a
two-step analysis. Commission on ProfIEthics &Conduct ofthe Iowa State BarAss'n v. Baker, 492
N.W.2d 695 (Iowa 1992). First, the Couit must determine whether actions taken by the foreign attorneys
constitute unauthorized practice in trademark matters before the Office. Id. at 701. Second, the Court
must determine whether Appellant aided in those actions. Id. The practice oflaw goes beyond the act of
representing another before acourt. Id. The practice oflaw also includes "out ofcourt services" and the
preparation oflegal documents constitutes the practice oflaw. Id.\ Geauga Cty. BarAss'n. v. Haig, 955
N.E.2d 352 (Ohio 2011). The rules governing representing others before the Office make clear that
practice before the office in trademark matters, which must be accomplished by an attorney, mcludes
services such as consulting with orgiving advice toa client in contemplation offiling atrademaric
application or other document with the Office and preparing an application for trademark registration. 37
C.F.R.11.5(bX2), 11.14.
Foreign attorneys are not authorized topractice before the Office except inveiy limited
circumstances." See 37 CJF.R. 11.1,11.14(a),(c); TMEP 602.03. Nevertheless. Appellant testified
that foreign attorneys prepared trademark documents, including the Statements ofUse for the *340 and
*531 applications, and forwarded these documents to her for review and filing. Tr. at222,474,501-502,
Appellant claims that she did not violate 11.505, which became effective May 13,2013, because she "did not
file any trademark applications after May 3,2013." Appeal at30. However, the record reflects that she did file
Statements of Useforthe '340 and'531 applications onMay26,2013 andAugust 17,2013, respectively, which is
after 11.505 became effective. Gov. Exs. 510, 513.
" Appellant vaguely argues that foreign attomeys are permitted topractice before the Office. A.R., Tab C.53;
Appeal at 18. However, she offers no authority for this proposition that would contravene orpegate 37C.F.R.
11.1,11.14(a) and (c), and TMEP 602.03, which logger prohibit foreign attorneys from practicing before the
omce.
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506-507,619. The forsign attorney's actions, which constituted practice in trademark matters, therefore
also constituted the unauthorized practice oflaw. See 37 C.F.R. 11.1,11.14(a),(c); TMEP 602.03.
Appellant's acts ofaccepting these documents from the foreign attomeys and filing them with the USPTO
aided tiiose unauthorized practitioners in violation of37 C.F.R. 11.505.
6. 37 C.FJI. 1023(b) and 11.804(d) - Conduct was prejudicial tothe
administration ofjustice.
The AU found, and the record supiwrts this finding, that Appellant engaged in numerous activities
that are prejudicial to the administration ofjustice. As discussed above. Appellant aided foreign attomeys
in tiie unauthorized practice oflaw before the Office. Appellant also forged the signatures oftrademark
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applicants onto documents submitted to the USPTO. Finally, Appellant knowingly defied the Trademark
Corajnissionefs Exclusion Order by continuing to send and receive correspondence on behalfofthe
applicants. Appellant's engagement in these activities is uncontroverted. These activities undermined the
efficiency and efficacy ofth^ trademark registration process and are prejudicial to the administration of
justice in violation of37 C.F.R. 10.23(b), 11.804(d).
D. Affirmative Defenses"
In an effort to avoid disciplinary sanction, Appellant raised several affirmative defenses in response to
the disciplinary charges. Appellant must prove any affirmative defense by clear and convincing evidence.
37 C.F.R. 11.49. This standard requires evidence "ofsuch weight that it produces in the mmd ofthe
trier offact afinn belieforconviction, without hesitancy, as to the truth ofthe allegations sought to be
established.** InreLane, Proceeding No. D2013-07, at2(quotingy/menez v. DaimlerChrysler Corp., 269
F.3d 439,450 (4th Cir. 2001)). Because she fails to satisfy this burden, and as more fully discussed
below, heraffirmative defenses fail.
a. Due Process
Appellant alleged that she was deprived ofliberty to represent others in patent, trademark, and other
matters without notice. A.IL, Tab C.53; Appeal at 5;Reply at3.Specifically, she claims she has engaged
in the same alleged misconduct since 2006 but was never notified that she was doing anything wrong. Id.
TheAU correctly rejected these arguments. Dec. at23-24.
"The fimdamental requirement ofdue process is the opportunity tobe heard atameaningful time and
in a meaningful manner.*' See InreKarten, 293 F.App'x 734,736 (11th Cir. 2008) (quoting Mathews v.
Eldridge, 424 U.S. 319,333 (1976). In disciplinary proceedings, an attorney is entitled to due process,
" Throu^out the appeal, Appellant provides various arguments attacking the Trademark Commissioner's Fd)rtiary
21,2013 Exclusion Order. Appeal at25-28; Reply at 2-3. That Order informed Appellant that she could appeal the
exclusion decision viaa Petition to theUSPTO Director. Jnt. Ex. 4. Appellant did file such a Petition, and the
USPTO Director upheld the Exclusion Order. Jnt Ex. 12; Gov. Ex. 13. Thus, Appellant has exhausted the Agency's
administrative processes for challenging the Trademark Conunissioner's Exclusion Order and any arguments
challenging the validity ofthat order will not be re-visited here.
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suchas reasonable notice ofthe charges before the proceedingscommence. See In re Suffalo, 390 U.S.
544,551 (1968); In re Cook, 551 F.3d 542,549 (6-^ Cir. 2009) (procedural due process includes fair
notice ofthe charge). Due process requirements are satisfied where arespondent "attended and
participatedactively in the various hearings, and was afforded an opportunityto p.ent evidence,to
testify, to cross-examine witnesses, and to presentargument." In re Squire, 617 F.3d 461,467 (6th Cir.
2010)(quoting Ginger v. CircuHCourt Wayne Oy., 372 F.2d 620,621 (6th Cir. 1967)); alsoIn re
Zdravkovich, 634 F.3d 574 (D.C. Cir. 2011) (statingthat attorney could not satisfy claim ofdue process
deprivation where he was given noticeofthe charges against him, was represented by counsel, and had
hearingatwhich counsel had the opportunify to call and cross-examine witnesses, make arguments, and
submit evidence). Due process requirements are also met where arespondent is given"an opportunity to
respond to the allegations set forth in the complaint, testify at length in [his] owndefense, presentother
witnesses and evidence to support [his] version ofevents..., [and is] able to make objections to the
hearing panel's findings and recommendations." b, reSquire, 617 F.3d at 467 (quoting/ re Cook 551
F.3dat550.
Here. Appellant received notice ofthe disciplinary charges and participated actively in the pre-
hearingprocedures and at the disciplinary hearing. A.R., Tabs C, F. Her participation, as reflected in the
record, included filing and responding to various Motions, cross-examining witnesses, and testifying in
her own defense. A.R.. Tabs B, C. Despite this, she repeatedfy argued that she lacked notice that her
actions constituted misconduct until 2012. However, as already stated. Appellant is charged widi
herselfas to the rales governing proper signatures and filing ofdocuments with die USPTO.
The USFTO's trademark rules, TMEP and the TEAS Help guide would have assisted Appellant in
educatingherselfas to governing rules. However, she failed to educate herself. Further, the AU's
that Appellant's forged signatures direcUy contributed to the delay in the USPTO discovenng
the misconduct is both persuasive and supported by testimony from USPTO witness Catherm Cam. That
testimony is that ifasignature on atrademark document appears proper on its face - as was the case with
the documents Appellant filed, which were forged by her- then further inquiry by the USPTO would not
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AU also rejected Appellant's claim that herconstitutional right to contract with clients without
government restriction was violated. A.R.. Tab C.7. correctly notingftat this constitutional provision
applies to state legislation. Dec. at 24 (citing Pueblo ofSantaAm v. Kelly, 932 F. Supp. 1284,1297
(D.N.M. 1996), iffd, 104 F.3d 1546 (10th Cir. 1997). Further, even ifthis clause were implicated, the
AU correctly noted that Appellant's failure to proffer any evidence ofcontracts between her and her
clients is fetal to this claim. Dec. at 24-25 (cifmgFdbri v. United Techs. IM7, Inc., 387 F.3d 109,124 (2d
Cir. 2004)). Having failed to cany her burden, this argument fails.
c. SelectiveEnforcement
Throughout the disciplinary proceedings and in her post-hearing briet Appellant argued that shewas
denied equal protection under the Fourteenth Amendment because she is being treated differently than
similarly situated parties. A.R., Tab C.53. Specifically. Appellant alleged that the OED Director has
ignored the similar conduct ofother foreign e-filers while "vigiUntly" reviewing Appellant's conduct M.
However, the AU correctly rqected this argument by noting that Appellant's arguments and
i^.nrifir,tinn.= ofsimilarly situated individuals who allegedly received more favorable treatment ate
insufficient to support aselective enforcement claim. Dec. at 25-26. Appellant made no showing, at the
hearing or otherwise, that the individuals she identified have actually avoided discipline or disciplinary
investigation or. ifthq- have, the reasons that no discipline was instituted against these individuate. Her
conchisoiy statements are insufficient to satisfy her burden ofproving aclaim ofselective enforcement
2. Lack of Jurisdiction
For reasons already discussed, this allegation is dismissed. In short. Appellant is aregistered patent
agent with the USPTO. She is therefore subject to the Office's broad disciplinary jurisdiction.
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3. Procedural Violations
Appellant's remaining arguments that she relied upon to contestdiscipline, boti. procedural and
substantive, are withoutany factual or legal support and thus have no merit.
E. Thp Pftnaltv ofExclusion is Appropriate,
The AU's initial decision concluded that Appellantviolated six professional conduct standards, and
that exclusion ofAppellant from practice before the Office was an appropriate sanction. Dec. at 29-30.
An AU initial decisionthat imposes exclusion must explain tiie reason for tiie exclusion after
consideration of the following fourfactors:
(1) Whether the practitioner has violated aduty owed to aclient, to the
public, to the legal system, or to the profession;
(2) Whether the practitioner acted intentionally, knowingly, ornegligently,
(3) The ajnount ofthe actual or potential injury caused by the practitioner's misconduct; and
(4) The existence ofany aggravating or mitigating factors.
37C.F.R.n.54(bKlH4).
The Director ofthe USPTO reviews an appeal from an AU initial decision on the record before the
AO. See 37 C.F.R. 11.55(f); see also Marinangeli v. Lehman, 32 F. Supp. 2d 1,5 (D.D.C. 1998). After
such review, and as discussed below, the AU's initial decision to exclude Appellant from practicing
before the USPTO included acareful and proper analysis ofthe four factors set forth in 37 C.F,R.
11.54(b). The AU's sanction ofexclusion is warranted and thus upheld.
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The ALJ properly considered and applied the four factors relevant to an exclusion under 37 C.F.R.
11.54(b). Dec. at 27-29. First, the AU found that Appellant's actions violated duties owed to aclient, to
the public, to the legal system, and to the profession. Dec. at 28. Specifically the ALJ noted that Appellant
failed tofulfill her obligation competently learn and understand the requirements for submitting
trademark documents tothe USPTO. Id. Further, he noted that Appellant failed tomaintain the integrity
and competence ofthe legal profession in several ways, including by engaging in disreputable and
deceitful conduct, making false and misleading representations tothe Office, and aiding others inthe
unauthorized practice oflaw, thus warranting a maximum sanction. Id.
Asto thesecond factor, theALJfound thatAppellant acted knowingly and intentionally in all
respects ofher misconduct including when she submitted trademark documents she knew were not signed
by applicants, when she aided others in the unauthorized practice oflaw, and when she continued to serve
asa domestic representative despite beexcluded bythe Trademark Commissioner. Dec. at28. The AU
noted the particular egregiousness ofdisrespecting the Commissioner's authority and further concluded
that this second factor counseled in favor of a maximum sanction. Id.
Third, theALJconcluded that there was no evidence of anyactual injuiy caused byRespondent's
misconductbut that her misconductcould cause significantinjuryto the applicantsand registrants where
documents were notproperly verified andthus subject to cancellation. Dec. at 28.This factor counseled
Finally, the ALJidentified one mitigating andmultiple aggravating factors in thecase. Aggravating
factors werenotedas Appellant'sdishonest motive by intentionally concealing the fact that she continued
time"; andthe fact that Appellant hasrefused to acknowledge thatheractions constitute misconduct. Dec.
Considering the four factors notedabove, the ALJconcluded thatAppellant's exclusion fi-om practice
before the Office wasan appropriate sanction. Dec. at 29-30. AstheALJ's sanction was made after
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considering all ofthe required fectors, and is fiilly supported by the uncontroverted evidence ofrecord,
the sanction of exclusionis upheld.
ORDER
Having considered Appellant's appeal under 37 CJ.R. 11.55, from the April 22,2015 initial
decision ofthe AU excluding Appellant from the practice ofall patent, trademark, and other non-patent
matters before the Office, itis ORDERED that the initial decision ofthe AU is AFFIRMED.
It is further.
ORDERED that the OED Director give notice pursuant to 37 C.F.R. 11.59 ofthe public
discipline and the reasons for the discipline to disciplinary enforcement agencies in the state(s) where
Appellant is admitted to practice, to courts where Appellant is known to be admitted, and to the
public;
ORDERED that the USPTO dissociate Appellant's name from any Customer Numbers and the
public key infi^tnicture ("?!") certificate associated with those Customer Numbers;
ORDERED that Appellant shall not apply for aUSPTO Customer Number, shall not obtain a
USPTO Customer Number, norshall she have hername added to a USPTO Customer Number,
ORDERED that Appellant shall comply with the provisions of37 C.F.R. 11.58 governing the
dutiesof disciplined practitioner.
Any request for reconsideration ofthis decision must be filed within twenty (20) days from the date
ofentry ofthis decision pursuant to 37 C.F.R. 11.56(c). Any request for reconsideration mailed to the
USPTO must be addressed to:
Sarah Harris
General Counsel
United States Patent and Trademark Office
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Ifa for reconsideration is not filed, and Appellant desires fiuther review. Appellant is notified
that she is entiUed to seekjudicial reviev/on die record in theO.S. District Courtfor the Eastern District
ofVirginia under 35 U.S.C. 32 "within thir^ (30) d^ after the date ofthe order recording the
Director's action." See E.D.Va. Local Civil Rule 83.5.
FT IS SO ORDERED.
CtAA^
iM IfO
Date oarah Hams
General Counsel
UnitedStatesPatentandTrademark Office
on behalf of
Michelle K. Lee
Under Secretaiy ofCommerce forIntellectual
Property and Director ofthe United States Patent
and Trademark Office
cc;
Bang-erShia
Appellant
ElizabethUUmerMendel
MelindaM-DeAtlc^
Associate Solicitors
Counsel for the Director ofOffice ofEnrolhnent and Disciphne
42