In re David B. Newman, D2015-14 (USPTO Dir. Nov. 12, 2015)

Michael E. McCabe, Jr.Conflict, USPTO

Disposition: Thirty (30)-day suspension, eighteen (18)-month probation, and requirement that practitioner pass MPRE and complete certain ethics CLEs as condition for reinstatement. After the thirty (30)-day suspension period had passed, the practitioner filed a petition for reinstatement. The practitioner was subsequently reinstated by the OED Director to practice before the USPTO in non-patent matters.  Final decision here, and reinstatement Order here.

Summary: The USPTO Director approved a settlement agreement in which a non-patent practitioner received a thirty (30)-day suspension for his role in representing joint trademark clients without appreciating that they were both his clients, accepting payment from a third party for the jointly represented clients without the clients’ informed consent, and neglect in failing to oversee and allowing a subordinate attorney to take action on behalf of one of the joint clients adverse to the interests of the other joint client. After serving the thirty (30)-day suspension, the attorney petitioned the OED Director for reinstatement. The attorney was subsequently reinstated to practice before the USPTO.

Related to USPTO Practice?  Yes

Related Case: In re David B. Newman, reinstatement granted, Proc. No. R21 (OED Director Jan. 21, 2016)

Facts: This case involved a senior litigation attorney and trademark practitioner with the law firm of Day Pitney in New York. The attorney, Mr. David Newman, had thirty-seven (37) years of discipline-free practice.

In or about February 2013, two (2) of Mr. Newman’s long-time clients requested that he provide trademark legal services to the daughter of one of his clients and the daughter’s business partner. Mr. Newman was instructed to bill the long-time client for these services. An associate failed to conduct a proper conflicts check for the new matter, and neither Mr. Newman nor the associate obtained informed consent regarding the risks and benefits of the joint representation. In addition, confidential communications regarding the joint client matter were shared with Mr. Newman’s existing clients without the joint clients’ informed consent.

A dispute arose between the joint clients. The associate, along with one of Mr. Newman’s long-term clients and one of the joint clients (but not the other) decided to abandon the joint clients’ trademark application. This was done without the knowledge or consent of the second joint client. New trademark applications were filed on behalf of another entity without the second joint client’s knowledge or consent. Mr. Newman failed to intervene when he knew that the associate would take actions adverse to one of the firm’s joint clients.

Mr. Newman stipulated that he violated 37 C.F.R. § 10.62(a) (failure to obtain consent after full disclosure from a client to accept employment if the exercise of the practitioner’s professional judgment on behalf of the client will be, or reasonably may be, affected by the practitioner’s own financial, business, property, or personal interests); 37 C.F.R. § 10.66(a)-(c) (failure to decline proffered employment if the exercise of the practitioner’s independent professional judgment on behalf of a client will be or is likely to be adversely affected or would involve the practitioner in representing differing interests); 37 C.F.R. § 10.77(c) (neglecting a legal matter entrusted to the practitioner); 37 C.F.R. § 10.68(a)(l)-(2) and (b) (without obtaining consent after full disclosure from the client, accepting compensation from one other than the practitioner’s client for the practitioner’s legal services); 37 C.F.R. § l1.501(b) and (c)(2) (as a practitioner having direct supervisory authority over another practitioner, failing to make reasonable efforts to ensure that the other practitioner conforms to the USPTO Rules of Professional Conduct)