Ethics Opinion 085
Opinion #85 – 07/15/1968 (14-68)
advertisements, holding out, patent practice, specialization, trademark practice
Topic: Letterhead, announcements, patent attorney
Digest: Designation as patent attorney on letterhead, announcements and their distribution
Canons: Former Canons 27, 46
The inquirer is a member of the New York State Bar, an associate in a firm composed of two partners and himself, and is soon to be admitted to practice before the United States Patent Office. The firm is located in the Capital District. He wishes the Committee to advise him as to:
1) The proper method for designating himself as a patent attorney on the letterhead of his law firm, no other member of such firm being a patent attorney.
(2) Whether it would be proper for the firm to print in one professional announcement, the inquirer’s association with the law firm, his admission to the Patent Bar, and a change in location of the firm’s offices.
(3) The proper scope of distribution of the above announcement.
(1) Canon 27 of the American Bar Association, which is relevant here, prohibits every form of solicitation including indirect advertising for employment. As amended in 1951, the Canon provides:”It is not improper for a lawyer who has complied with the statutory requirements of admission to practice before the Patent Office to so use the designation ‘patent attorney’, or ‘patent lawyer’, or ‘trademark attorney’, or ‘trademark lawyer’, or any combination of those terms.While New York has not incorporated the above amendment in its Canons, this Committee heretofore rendered opinions as if the above amendment had been adopted (see N.Y.State 21, 24 and 49). Therefore, we deem the issue to be not whether, but how this specialty designation should appear on the letterhead.The designation of this specialty should appear so as to indicate that the inquirer alone is the holder of the specialty. This would be accomplished by placing the term “Patent Lawyer” or the allowed equivalent (see Canon 27) next to the inquirer’s name where it appears on the letterhead. This in effect was required in Informal Decision #571(b), 8/23/62 of the American Bar Association’s StandingCommittee on Professional Ethics, in which the following letterhead was determined to be “misleading and therefore unethical”:A&B Attorneys and Counselors at Law Patent Lawyer
where only B was a patent lawyer. This opinion stated that the substitution of the phrase “B, Patent Lawyer” would cure the defect.(2) There is nothing improper about the professional announcement contemplated which would include in one notice the inquirer’s association with the law firm, his admission to the Patent Bar, and a change in location of the firm’s offices. Of course the announcement should be simply and decorously stated.(3) The distribution of the announcement to non-lawyers should be governed by the policy cited, for example, in Informal Opinion No. 618 11/23/62 of the American Bar Association’s Standing Committee which indicates that notices of this nature:”…[M]ay be sent to former clients, and to any other person with whom the personal relations of the lawyer are such as to make it clear that they would be interested in knowing of the matters covered by the notice (but not to persons with whom the lawyer had had no professional dealings or personal relations, and to whom the card would be merely a suggestion of employment).”As to lawyers the permissible scope of distribution is broader, and distribution to lawyers “over a wide area surrounding the Capital District”, as the inquirer intends, would be proper. The New YorkCanon 46 does not limit the distribution of such notices to “local lawyers” as does Canon 46 of the American Bar Association. New York has adopted a more liberal view towards the distribution of announcements to lawyers on grounds that lawyers are not “…substantially influenced to employ other lawyers by announcements or impressed by their implications”. See Joint Opinion of the Committee on Professional Ethics of the Association of the Bar of the City of New York (N.Y. City 686) and of the New York County Lawyers Association (N.Y.County 375) issued in 1947. The committee believes that this Joint Opinion states the New York rule that announcements may be sent to lawyers both known and unknown to the sender.