Kerry Goff Aug. 14, 2016, 3:00pm

SAN RAFAEL -- A California attorney has been disbarred, because he actively represented 300 to 400 trademark cases before the U.S. Patent and Trademark Office (USPTO) despite not being able to practice in this area of law. 

Malcolm B. Wittenberg, a San Rafael attorney, was disbarred May 28. 

Wittenberg appealed the recommendation for disbarment, arguing that he deserved a suspension instead, because he acted in good faith. Despite his appeal, a three-judge review panel rejected his claims, mainly because of his admission to practicing without being a member of the bar. A prior conviction in 2001 further supported his lack of moral fitness.

“In 2005, Wittenberg was suspended as the result of his felony conviction for insider trading,” the official court document said. “After his suspension ended, he never sought remittance to the USPTO, yet practiced patent law from late 2005 to October 2012.”

Wittenberg originally was a longtime key member of Crosby Heafey Roach & May’s patent group when he was indicted on two counts of insider trading and accused of making an illegal $14,000 profit on a stock deal. As part of a plea agreement, Wittenberg pleaded guilty to one count of insider trading and a second count was dropped. He reached a separate agreement with the Securities and Exchange Commission, paying $29,000 without admitting or denying any allegations of wrongdoing.

Although Wittenberg faced up to 10 years in prison and a $1 million fine on the single count of insider trading, he was sentenced to three years of probation.

Based on the nature of his previous conviction, as well as his current infractions, the hearing judge found Wittenberg culpable of violating the Rules of Professional Conduct by engaging in this unauthorized practice of law, and the debate that ensued was whether disbarment was an acceptable decision for his case.

“The issue before us is the level of discipline, because Wittenberg does not challenge culpability,” the court document said. “ Instead, he argues that his good faith belief that he was authorized to practice trademark law before the USPTO constitutes mitigation sufficient to warrant a suspension, not disbarment.”

The court argued that to practice before the USPTO in patent matters, practitioners must have a technical degree, pass an examination that demonstrates proficiency and knowledge of patent law, and maintain good moral fitness.

“The single requirement to practice trademark law is membership in good standing in the Bar of any United States jurisdiction,” the court said. “Practitioners in patent matters receive a USPTO registration number, but no such number is required for trademark practice.”

The court document also explained that Wittenberg acknowledged that he openly practiced before the USPTO in 300 to 400 matters and that he claimed he was authorized to practice trademark law once his California suspension was lifted, because he was then considered a member in good standing of a Bar of the United States.

“Wittenberg testified that ‘numerous’ other practitioners agreed that he was able to practice trademark law once his suspension was lifted,” the court said.

The court did not accept Wittenberg’s argument and proceeded with disbarment.

“We recommend that Malcolm B. Wittenberg be disbarred from the practice of law and that his name be stricken from the roll of attorneys admitted to practice in California,” the court said.

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Organizations in this Story

U.S. Patent and Trademark Office
600 Dulany St
Alexandria, VA 22314

U.S. Securities and Exchange Commission
100 F Street Northwest
Washington, DC 20001

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