513    Motion to Withdraw as Representative; Petition to Disqualify

513.01    Motion to Withdraw as Representative

37 C.F.R. § 2.19(b)  Withdrawal of Attorney. If the requirements of § 11.116 of this chapter are met, a practitioner authorized to represent an applicant, registrant or party to a proceeding in a trademark case may withdraw upon application to and approval by the Director or, when applicable, upon motion granted by the Trademark Trial and Appeal Board. ...

37 C.F.R. § 11.116  Declining or terminating representation.

  • (a) Except as stated in paragraph (c) of this section, a practitioner shall not represent a client, or where representation has commenced, shall withdraw from the representation of a client if:
    • (1) The representation will result in violation of the USPTO Rules of Professional Conduct or other law;
    • (2) The practitioner’s physical or mental condition materially impairs the practitioner’s ability to represent the client; or
    • (3) The practitioner is discharged.
  • (b) Except as stated in paragraph (c) of this section, a practitioner may withdraw from representing a client if:
    • (1) Withdrawal can be accomplished without material adverse effect on the interests of the client;
    • (2) The client persists in a course of action involving the practitioner’s services that the practitioner reasonably believes is criminal or fraudulent;
    • (3) The client has used the practitioner’s services to perpetrate a crime or fraud;
    • (4) A client insists upon taking action that the practitioner considers repugnant or with which the practitioner has a fundamental disagreement;
    • (5) The client fails substantially to fulfill an obligation to the practitioner regarding the practitioner’s services and has been given reasonable warning that the practitioner will withdraw unless the obligation is fulfilled;
    • (6) The representation will result in an unreasonable financial burden on the practitioner or has been rendered unreasonably difficult by the client; or
    • (7) Other good cause for withdrawal exists.
  • (c) A practitioner must comply with applicable law requiring notice to or permission of a tribunal when terminating a representation. When ordered to do so by a tribunal, a practitioner shall continue representation notwithstanding good cause for terminating the representation.
  • (d) Upon termination of representation, a practitioner shall take steps to the extent reasonably practicable to protect a client’s interests, such as giving reasonable notice to the client, allowing time for employment of other counsel, surrendering papers and property to which the client is entitled and refunding any advance payment of fee or expense that has not been earned or incurred. The practitioner may retain papers relating to the client to the extent permitted by other law.

A practitioner who wishes to withdraw from employment as the attorney or other authorized representative of a party to a proceeding before the Board must file a request with the Board for permission to do so. The request to withdraw must be based upon one of the grounds for mandatory or permissive withdrawal listed in 37 C.F.R. § 11.116(a)  and 37 C.F.R. § 11.116(b).

Moreover, the practitioner must comply with the requirements of 37 C.F.R. § 11.116(c)  and 37 C.F.R. § 11.116(d). [ Note 1.] In accordance with that rule, a request for permission to withdraw should include: (1) a specification of the basis for the request; (2) a statement that the practitioner has notified the client of his or her desire to withdraw from employment, and has allowed time for employment of another practitioner; (3) a statement that all papers and property that relate to the proceeding and to which the client is entitled have been delivered to the client; (4) if any part of a fee paid in advance has not been earned, a statement that the unearned part has been refunded, or, if appropriate a statement that no fees have been paid in advance and not refunded; and (5) proof of service of the request upon the client itself and upon every other party to the proceeding. [ Note 2.] The facts establishing these elements should be set out in detail. [ Note 3.] Moreover, a request to withdraw from representation may not be used as a subterfuge to obtain an extension or reopening of time that a party would not otherwise be entitled to. [ Note 4.]

If the request to withdraw is granted, the Board will suspend proceedings and allow the party a stated period of time (usually 30 days) in which to appoint a new attorney or other authorized representative (and inform the Board thereof), or to file a paper stating that it desires to represent itself. If the party fails to take such action, the Board may issue an order to show cause why default judgment should not be entered against the party based on the party’s apparent loss of interest in the case. [ Note 5.]

A request for permission to withdraw as counsel in an application that is the subject of a potential opposition (i.e., an application as to which a request for extension of time to file an opposition is pending) is determined by the Board, not the Trademark Operation, and it should be filed with the Board to insure prompt processing. See TBMP § 212.01.

A party may inform the Board of the appointment of new counsel either by filing written notification thereof (as, for example, by filing a copy of the new appointment), or by having new counsel make an appearance in the party’s behalf in the proceeding. See TBMP § 114.03. See also TBMP § 114.04.

For information concerning action by the Board after expiration of the time allowed in the suspension order, see TBMP § 510.03(b). For further information concerning withdrawal of counsel, see TBMP § 116.02, TBMP § 116.03, TBMP § 116.04, and TBMP § 116.05. Cf. TMEP § 607.

Effective May 3, 2013, the United States Patent and Trademark Office adopted new USPTO Rules of Professional Conduct that are based on the American Bar Association’s Model Rules of Professional Conduct. Prior to this date, the requirements for withdrawing as an attorney were set forth in 37 C.F.R. § 10.40. They are now set forth in 37 C.F.R. § 11.116. Cases decided prior to May 3, 2013 refer to the USPTO Rules of Professional Responsibility that were in effect at that time. These earlier cases continue to be instructive.

NOTES:

 1.   See 37 C.F.R. § 2.19(b)  and 37 C.F.R. § 11.116; University Games Corp. v. 20Q.net Inc., 87 USPQ2d 1465, 1468 (TTAB 2008) (request to withdraw granted); SFW Licensing Corp. v. Di Pardo Packing Limited, 60 USPQ2d 1372, 1373-74 (TTAB 2001) (request to withdraw denied as prejudicial to client where it was filed on last day of client’s testimony period, although grounds for withdrawal were known months earlier).

Cf. In re Slack, 54 USPQ2d 1504, 1507 (Comm’r 2000) (request to withdraw during ex parte prosecution granted where requirements of 37 C.F.R. § 10.40 [removed and replaced with 37 C.F.R. § 11.116 ] were satisfied and attorney filed the request within a reasonable time after notifying applicant of his intent to withdraw).

 2.   37 C.F.R. § 11.116. Cf. TMEP §607 (Withdrawal of Attorney of Record [during ex parte examination]).

 3.   See 37 C.F.R. § 2.127(a)  (motions must contain a "full statement of the grounds"). Cf. SFW Licensing Corp. v. Di Pardo Packing Limited, 60 USPQ2d 1372, 1373-74 (TTAB 2001).

 4.   Cf. SFW Licensing Corp. v. Di Pardo Packing Limited, 60 USPQ2d 1372, 1373-74 (TTAB 2001).

 5.   See University Games Corp. v. 20Q.net Inc., 87 USPQ2d 1465, 1468-69 (TTAB 2008) (request to withdraw as counsel granted, proceedings suspended, and party allowed time to either appoint new counsel or file submission stating it will represent itself); CTRL Systems Inc. v. Ultraphonics of North America Inc., 52 USPQ2d 1300, 1302-03 (TTAB 1999) (motion to set aside judgment denied since opposer is as equally accountable as attorney who failed to withdraw from case for lack of attention to case); Pro-Cuts v. Schilz-Price Enterprises Inc., 27 USPQ2d 1224, 1224-25 (TTAB 1993) (discharging order to show cause that issued for loss of interest after withdrawal of counsel).

513.02    Petition to Disqualify

37 C.F.R. § 11.19(c)  Petitions to disqualify a practitioner in ex parte or inter partes matters in the Office are not governed by §§ 11.19 through 11.60 and will be handled on a case-by-case basis under such conditions as the USPTO Director deems appropriate.

If a party to an inter partes proceeding before the Board believes that a practitioner representing another party to the proceeding should be disqualified (due, for example, to a conflict of interest, or because the practitioner should testify in the proceeding as a witness on behalf of his client), the party may file a petition to disqualify the practitioner. [ Note 1.]

Petitions to disqualify are not disciplinary proceedings and hence are not governed by 37 C.F.R. § 11.19 –37 C.F.R. § 11.60. Rather, petitions to disqualify are governed by 37 C.F.R. § 11.19(c)  and are determined in the manner specified in that rule.

When a petition to disqualify is filed in connection with a proceeding pending before the Board, the Board immediately issues an action suspending proceedings in the case and advising the parties that no additional papers should be filed by the parties until further notice, pending consideration of the petition. After the petition has been determined or dismissed, the Board issues an action resuming proceedings in the case and taking further appropriate action therein. Petitions to disqualify in matters before the Board are currently determined by the Chief Administrative Trademark Judge under authority delegated by the Director. The Chief Administrative Trademark Judge may further delegate his/her responsibility to a Board judge or Board attorney for signature.

For examples of cases involving petitions to disqualify, see the decisions cited in TBMP § 114.08.

NOTES:

 1.   With respect to disqualification where the attorney is a witness in the case, such as giving testimony on behalf of the client, see 37 C.F.R. § 11.307; Focus 21 International Inc. v. Pola Kasei Kogyo Kabushiki Kaisha, 22 USPQ2d 1316, 1317 (TTAB 1992); Allstate Insurance Co. v. Healthy America Inc., 9 USPQ 2d 1663, 1663 nn.4-5 (TTAB 1988) (generally not prudent for an attorney to verify answers to interrogatories since it could expose him or her to additional discovery and even disqualification); Little Caesar Enterprises Inc. v. Domino’s Pizza Inc., 11 USPQ2d 1233 (Comm’r 1989) (petition to disqualify counsel on basis that counsel would be called as adverse witness denied). Cf. In re Gray, 3 USPQ2d 1558, 1560 (TTAB 1987) (no weight given to counsel’s affidavit concerning secondary meaning because it would impermissibly make him a witness in the case).