Overview

Attorney Malcolm B. Wittenberg, previously suspended for insider trading, was disbarred after resuming trademark practice before the USPTO without reinstatement. Though he claimed a good faith belief that reinstatement to the California Bar restored his federal trademark authority, the Review Department rejected this argument, finding his conduct demonstrated a cavalier disregard for professional regulations and the protection of the public. The court held that disbarment was necessary to protect clients and uphold professional integrity.

Background

• Wittenberg, a patent and trademark attorney, was convicted in 2001 of insider trading for purchasing shares in a client company ahead of a merger, earning $14,000 in profit.
• He was placed on interim suspension in California and disbarred in Virginia.
• The USPTO excluded him from practice in 2004 after he resigned from federal practice and required reinstatement for future eligibility.
• After his California suspension ended in 2005, he resumed trademark practice before the USPTO without applying for reinstatement — handling between 300–400 matters over seven years.
• In 2012, the USPTO discovered the violation and formally prohibited him from further filings.

Violations

• Rule 1-300(B): Unauthorized practice of law in another jurisdiction — representing clients before the USPTO despite exclusion.
• Section 6106: Moral turpitude — repeated disregard of professional restrictions and self-interest over legal compliance.

Defenses and Court’s Rejection

• Good Faith Defense: Wittenberg argued he honestly believed reinstatement in California authorized USPTO practice. The Review Department rejected this because:
  • USPTO regulations explicitly prohibited practice after exclusion without reinstatement.
  • His resignation affidavit and the exclusion order made reinstatement a condition for reauthorization.
  • His belief was not “objectively reasonable.”
• Statutory Limitation Argument: He claimed Bus. & Prof. Code §6077 barred disbarment for rules violations. The court held the Supreme Court’s inherent authority over attorney discipline supersedes statutory limits.

Aggravation and Mitigation

Disciplinary Analysis

• The Review Department emphasized protection of the public and noted Wittenberg’s continued disregard for rules mirrored his insider trading conduct.
• Under Standard 2.10(a), disbarment or suspension is appropriate for unauthorized practice. Given his prior record and repeated misconduct, disbarment was warranted.
• Section 6077 does not restrict the Supreme Court’s or State Bar Court’s disciplinary authority to recommend disbarment.

Disposition

• Disbarment: Ordered from the practice of law in California.
• Rule 9.20: Required notice to clients and opposing counsel.
• Costs: Assessed under §6086.10, enforceable as a money judgment.
• Inactive enrollment: Continued pending Supreme Court decision.

Sanctions Table

Key Takeaways

• Practicing before a federal agency after exclusion constitutes unauthorized practice and warrants disbarment.
• Good faith misunderstanding of federal regulations does not excuse rule violations when objectively unreasonable.
• Prior serious discipline requires progressively stronger sanctions.
• California’s State Bar Court retains authority to recommend disbarment even when statutes limit suspensions to three years.