In re Joseph C. Terzo, Proc. No. D2016-35 (USPTO Dir. Nov. 2, 2016)

Michael E. McCabe, Jr.Misrepresentation, Neglect, UPL, USPTO

Disposition: Exclusion on consent from practice before the USPTO arising from numerous ethics violations in handling multiple USPTO client matters.  Final decision here.

Summary: A patent and trademark practitioner was excluded on consent following numerous allegations for ethical misconduct. The practitioner was charged with violating, inter alia, the USPTO Rules of Professional Conduct proscribing failure to provide competent representation, failure to keep clients reasonably informed about the status of a matter), failure to explain a matter to the extent reasonably necessary to permit the clients to make informed decisions regarding the representation, engaging in conduct involving dishonesty, fraud, deceit or misrepresentation, engaging in conduct that is prejudicial to the administration of justice, engaging in acts and omissions that adversely reflect on fitness to practice before the Office, failing to make reasonable efforts as a partner in a law firm to ensure that the firm has in effect measures giving reasonable assurance that the non-attorney assistants’ conduct is compatible with the professional obligations of the practitioner, aiding in the unauthorized practice of law, making an agreement prospectively limiting the practitioner’s liability to clients for malpractice when the clients were not independently represented in making the agreement, failing to deposit into a client trust account legal fees and expenses that have been paid in advance, to be withdrawn by the practitioner only as fees are earned or expenses incurred, and failure to cooperate with the Office of Enrollment and Discipline in an investigation.

Related to USPTO Practice? Yes

Facts: The OED conducted a disciplinary investigation into the conduct of patent and trademark attorney Joseph Terzo. After its investigation, the OED Director filed a disciplinary complaint alleging numerous acts of professional conduct.

The complaint generally alleged that Mr. Terzo became a member of IP Law Group P.C. (“IP Law”) on or about April 21, 2015, by entering into a partnership agreement with Andrew Alia. He became owner of 8,000 shares, initially holding 92,000 shares in trust. Mr. Terzo was aware that Mr. Alia was suspended from the practice of law in Pennsylvania on a temporary emergency basis on April 17, 2015.

Mr. Terzo took over representation of Mr. Alia’s clients and neither informed those same clients that he was their new attorney, nor did he inform them that Mr. Alia was no longer available to be their attorney. Mr. Terzo did not obtain the clients’ signatures for Revocation of Attorney forms filed with the Office in trademark applications, and instead he signed and filed the forms himself. He also did not communicate directly with clients regarding their trademark applications.

Mr. Terzo relied upon a “Trademark Questionnaire” to obtain information from clients regarding their trademark applications and did not determine the accuracy of the information set forth in the questionnaire. He did not communicate with his trademark clients before filing their applications, which included not explaining trademark legal concepts to them.

Mr. Terzo further aided his non-lawyer assistants in the unauthorized practice of trademark law by directing them to provide legal advice and legal services to his clients. Mr. Terzo had one paralegal who lived and worked in San Diego, while Mr. Terzo lived and worked in Philadelphia. Mr. Terzo directed his paralegal to prepare, sign his name, and file trademark applications with the Office without his direct supervision. Additionally, Mr. Terzo allowed this paralegal to approve Examiner’s Amendments for his clients’ trademark applications. Further, he directed his non-lawyer assistants to provide patent advice and legal services to clients.

Further still, Mr. Terzo attempted to limit his liability to a client for malpractice when the client was not independently represented in making the agreement.

In addition, Mr. Terzo required his clients to pay in advance for their trademark legal services. He deposited the trademark clients’ entire pre-paid fees and expenses into his operating account before the fees were earned and expenses incurred.

Finally, Mr. Terzo failed to cooperate with OED’s investigation of him. He provided false information to OED and failed to produce to the OED documents that were requested from him.

Based on the foregoing, Mr. Terzo submitted an affidavit resigning voluntarily from practice before the USPTO.