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Alt Legal Connect Session Summary:Marketing Sense: Ensuring your marketing is ethics compliant

Alt Legal Team | September 13, 2021
5 min read

On Monday, September 13, Michael McCabe, Managing Partner, McCabe Ali LLP presented the session, “Marketing Sense: Ensuring your marketing is ethics compliant.” Michael, a registered patent attorney with 28 years of professional experience, who has represented hundreds of attorneys in confidential ethics investigations and in claims involving legal malpractice, discussed marketing ethics as outlined in the ABA’s model rules and the USPTO’s Rules of Professional Conduct. He also addressed common marketing pitfalls and what to do if you receive notice that your marketing is not complaint.

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Session Summary

In this session, Michael Michael explored the themes of the USPTO’s regulatory power and how it correlates with the First Amendment. Michael also discussed changes in legal advertising over the years, current advertising rules, and legal delivery services such as matchmakers and platforms. Michael mentioned that lawyers should check the status of advertising and solicitation rules in all jurisdictions in which they practice and whether there is a conflict between federal or state ethics rules. Michael then finished the session by talking about unauthorized practice of law and foreign associates who play a big role in delivery of services in the United States.

USPTO Ethics Rules

Michael started by looking at how the USPTO’s bar, ethics, and professional responsibilities rules bind lawyers who practice before the USPTO and how that may affect a lawyer who must also follow the bar rules of the jurisdiction they practice in. Michael noted that a lawyer who is disbarred by their jurisdiction may also be automatically disbarred by the USPTO.

Michael discussed the USPTO’s federal power to regulate, “The Patent and Trademark Office has its own bar and it has its own set of ethical rules and professional responsibilities, rules that bind lawyers who practice before the US Patent and Trademark office.” Michael discussed the separate rules registered attorneys must follow in addition to the state they’re registered in. The USPTO’s rules are modeled after various state bars’ ethics rules and have the authority to disbar or suspend attorneys. The USPTO plays its own independent role in regulating attorney conduct.

Attorney Advertising Rules

Michael proceeded to talk about the history of attorney advertisement and solicitation, describing that some had initially felt that attorney advertising was “dishonest, disreputable, not lawerly, and inherently misleading.” Around 1908, a code of conduct was developed by the bar which prohibited attorney advertising, becoming the standard for over 70 years.

In the 1970s, two attorneys in Arizona put an ad in the newspaper for their new law practice, Legal Clinic of Bates & O’Steen. The state bar then recommended a license suspension after the publication of the newspaper ad. The case then went to the Supreme Court of the U.S. (Bates v. Arizona, 443 U.S. 350 (1977) and held a blanket restriction on lawyer advertising saying that it was in violation of the First Amendment. The ad ban didn’t have a substantial justifying need and gave advantage to established lawyers, determining that a blanket prohibition on all content was unconstitutional. However, the Court allowed the bar to regulate false, misleading advertising. After the Bates case, there was an explosion in lawyer advertising, “It went everywhere! TV advertisements, busses became ginormous mobile billboards, billboards became ginormous lawyer advertising sites.”

In the 1980s, after the Bates decision, the American Bar Association developed a code of professional conduct, which became what is now the modern day equivalent of the ABA Model Rules of Professional Conduct. These rules are still applicable today in most jurisdictions and address advertising and solicitation rules.

The 1983 ABA Advertising Rules:

  • No false or misleading ads. ABA M.R. 7.1
  • No “giving anything of value to a person for recommending the lawyer’s services”
    • Advertising cost exception
    • Permits non-exclusive reciprocal referrals
    • May share fees with other attys with client consent and total fee reasonable.  ABA M.R. 1.5(e)
  • Ads “shall include the name and office address of” lawyer or law firm responsible for content. ABA M.R. 7.2
  • “Advertising Material” disclaimer on the “the outside of the envelope” or “at the beginning and end of any recorded or electronic communication.” ABA M.R. 7.3(c)
  • May not state or imply lawyer is “certified as a specialist in a particular field of law,” unless:
    • Appropriate certifying entity – e.g. State Bar
    • Patent and admiralty lawyers expressly called out as permitted to communicate they are “Patent Attorney” or “Proctor in Admiralty.” ABA M.R. 7.4(d)

The 1983 ABA Solicitation Rules:

  • A “targeted communication” directed to a specific person offering legal services
  • Prohibit “in-person” or “live telephone” solicitation except with another lawyer, family-friend, or prior client
  • No solicitation if it involves “coercion, duress or harassment” or if the lawyer knows the client does not wish to be solicited. ABA M.R. 7.3.

Old vs. New Ethics Rules

With the new tech tools such as online ratings, blogs, and social networking, applying the “old” ethics rules to the new means of communication led to confusion. The Association of Professional Responsibility Lawyers Report stated, “Virtual law practice and web-based delivery of legal services, as well as the public’s increased reliance on and use of the Internet and mobile technology, mandate a reexamination of how the legal profession views lawyer advertising and what can or should be effectively regulated.” The ABA then produced new model rules in 2018 to simplify its rules on advertising and solicitation:

  • No false or misleading “communications”
  • Expands permissible channels to “communicate information regarding the lawyer’s services through any media.”
  • No live person-to-person solicitation, but adds that you can solicit other lawyers, former clients or biz associates, friends, family and persons known “to be an experienced user of the type of legal services involved…”

Technology and Ethics

Michael expressed a positive attitude towards technology, but cautioned attorneys to take into account the ABA’s rules as they’re slower to update than technology. Michael commented, “[The new rules] [add] significant latitude for lawyers to solicit more and use the internet more without having  all of these necessarily cumbersome, and sometimes they don’t really work so well, disclaimer language.” Technology continues to rise at a quicker pace than the ABA can keep up with. Although technology  has been a useful tool for attorneys, Michael reminds attendees numerous times that the ABA updates their rules “very, very, slowly.” It’s important to keep in mind what the ABA’s model rules are, as well as the rules of the state the attorney is registered in.

Michael then addressed online platforms that have arisen to help clients and lawyers connect, such as matchmaking services and describes them as useful. However, in terms of ethics, Michael notes that attorneys must consider the following when using match services:

  • Prohibited from sharing fees with a non-lawyer
  • Prohibited from paying a non-lawyer for a client referral
  • Allowed to pay advertising costs.
  • Duty to protect client confidential info
  • Duty to exercise independent judgement
  • Duty to protect client property and money.

Although technology has allowed attorneys to expand their clientele, Michael warned against fake lawyers, firms, middleman type businesses, suspended attorneys, nonlawyers offering lawyer services without proper supervision, and things such as patent agents representing trademark applicants in matters before the USPTO.

Top takeaways from the session include:

  1. A registered attorney must abide by the rules set forth by the state they’re registered in and the PTO.
  2. An attorney who is disbarred from practice by the PTO may also be automatically barred from practice in the state they’re registered in.
  3. Although the ABA updates their own model rules, an attorney should also consider their own state’s model rules.
  4. Do your due diligence on who you’re working with – is the person legitimate? Are they legally able to provide the services?
  5. Foreign trademark clients must have U.S. counsel.

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