In re Juliet M. Oberding, Proc. No. D2015-06 (USPTO Dir. Feb. 12, 2016)

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

Disposition: Sixty (60)-day suspension and twenty-four (24)-month period of probation after reinstatement, which was unopposed by practitioner and which was predicated upon identical discipline imposed in California.  Final decision here.

Summary: A trademark practitioner who lied to her client on multiple occasions regarding the status of her trademark application was suspended by the USPTO for sixty (60) days and received a two (2)-year probationary term for conduct involving misrepresentations to a client, lack of diligence; neglect; and public discipline by another authority arising from the same conduct.

Related Case: In re Juliet Monique Oberding, Case No. 14-0-05179 (Cal. State Bar Ct. July 18, 2015)

Related to USPTO Practice?  Yes

Facts: This matter arose from a California-based trademark attorney’s misrepresentations regarding the status of her client’s trademark application.

On March 27, 2012, Amy Berg (“Berg”) hired Juliet Oberding to complete and file a trademark application with the USPTO. Ms. Berg paid Ms. Oberding $1,150 for the trademark application service on May 10, 2012.

On June 23, 2012, Ms. Berg e-mailed Ms. Oberding for a status update on the trademark application. Ms. Oberding’s e-mailed reply claimed, “everything is great.” However, she had yet to file the trademark application with the USPTO.

On September 18, 2012, Ms. Berg called Ms. Oberding by telephone and left a voice message. Ms. Oberding replied by e-mail as follows: “Thanks for your call. It generally runs 6 to 9 months for a trademark. I’ll let you know as soon as I hear anything.” However, Ms. Oberding had yet to file Ms. Berg’s trademark application with the USPTO.

On May 23, 2013, Ms. Berg contacted Ms. Oberding via e-mail for a progress update on Ms. Berg’s trademark. Ms. Oberding’s reply claimed the “USPTO is taking a lot longer processing trademarks than they (sic) have in the past.” However, Ms. Oberding had yet to file Ms. Berg’s trademark application with the USPTO.

On March 5, 2014, Ms. Berg e-mailed Ms. Oberding expressing concern as to why the process was taking so long. On March 6, 2014, Ms. Oberding, who still had not filed Ms. Berg’s trademark application, stated that: “The USPTO has been a lot quicker in the last year. I have trademarks currently clearing at six months. I will make sure that your trademark goes through immediately. Please bear with me until the end of the month. If your trademark is not finalized by then I will refund your payment minus the USPTO fee.”

On March 30, 2014, Ms. Oberding finally filed Ms. Berg’s trademark application. After reviewing herself the USPTO website, Ms. Berg confirmed the filing date and called the USPTO, which advised her that the March 30, 2014 filing was a new filing and that the application would be reviewed within three months. On April 14, 2015, the USPTO registered Berg’s trademark.

Based upon these stipulated facts, Ms. Oberding was charged by the California Bar with violation of that state’s ethics rules by willfully failing to perform legal services with competence and knowingly making false representations to a client. As a result of her agreed misconduct, the State Bar of California suspended Ms. Oberding for thirty (30) days from the practice of law in California, effective July 1, 2015, and placed her on a one (1)-year stayed suspension and one (1)-year period of probation. In addition, as a condition of her stayed suspension, Ms. Oberding was required to attend California’s “Ethics School” and to take and pass the Multistate Professional Responsibility Exam within one (1) year of her date of suspension. See In re Juliet Monique Oberding, Case No. 14-0-05179 (Cal. State Bar Ct. July 18, 2015).

The Office of Enrollment and Discipline also conducted an investigation. Ms. Oberding stipulated to the OED that her conduct violated the following provisions of the USPTO Code of Professional Responsibility: For her conduct before May 4, 2013, she violated 37 C.F.R. § 10.23(b)(4) (misconduct involving dishonesty or misrepresentation involving a client matter) and 37 C.F.R. § 10.77(c) (neglecting a client matter entrusted to her).   For conduct after May 4, 2013, she violated the following provisions of the USPTO Rules of Professional Conduct: 37 C.F.R. § 11.103 (failing to act with reasonable diligence and promptness in representing a client); and 37 C.F.R. § 1l.804(c) (engaging in misconduct involving dishonesty or misrepresentation by falsely informing a client that her trademark application was being processed. Ms. Oberding agreed to a sixty (60) day period of actual suspension and two (2)-year probationary period.

Although Ms. Oberding was eligible to apply for reinstatement with the USPTO by April 12, 2016, as of the end of 2016, no petition for reinstatement has been granted. It is unclear whether she has sought reinstatement. She thus remains suspended from practice before the USPTO.

Meanwhile, on December 1, 2016, the California State Bar court issued a Suspension Order stating that Ms. Oberding had not passed the MPRE within the time prescribed in the state’s original disciplinary order. Accordingly, Ms. Oberding “is suspended from the practice of law in this state effective December 27, 2016, pending proof of passage” of the MPRE.  To date, the USPTO has issued no public discipline predicated upon the California Suspension Order.