So, blame my children for the Meghan Trainor reference, but it is a catchy tune and, actually, not the worst of messages of female empowerment. Nevertheless, it fits my ramblings today too well for me to resist.
A blurb about a trademark infringement suit involving an Atlanta law firm that operates under a trade name caught my eye this week. You can read a Law360 story about it here, but know on the front end that the headline is incorrect and that the reason it is incorrect is the core of my not-fully-formed point.
The short form of the story is there is this Atlanta law firm that operates under a trade name of Trusted Counsel, technically Trusted Counsel Ashley LLC. Law firm use of trade names is not universally accepted in terms of advertising regulations, of course, as there are some states that simply do not permit their use. In Georgia, trade names can ethically be used as long as they include the name of at least one attorney in the firm (hence the “Ashley” reference) and “does not imply a connection with a government entity, with a public or charitable legal services organization or any other organization, association or institution or entity, unless there is, in fact, a connection.” Tennessee’s version of RPC 7.5(a) is simultaneously more, and less, permissive as there is no requirement that a name of a lawyer be included but a clearer provision that no trade name can be used if it would violate RPC 7.1 (i.e. be false or misleading).
The law firm, Trusted Counsel (which interestingly is the only part of the firm name apparently that has been trademarked by Trusted Counsel Ashley) has been operating since 2003. That firm has sued a much newer arrival to the Atlanta marketplace, Entrusted Counsel LLC, claiming trademark infringement, Lanham Act violations, and even cybersquatting.
Now the headline in the Law360 story was that a Georgia law firm had been sued, but even the actual lawsuit doesn’t go so far as to make that allegation (though clearly the plaintiff hopes you will draw that inference), instead the lawsuit (which you can read but not print off at this site on Scribd) asserts that the source of the infringement and the reason for confusion is that both Trusted Counsel and Entrusted Counsel provide “legal services.”
It took me fewer than 5 minutes of clicking around on the web to see that Entrusted Counsel is a consulting outfit owned/operated by someone who is not a lawyer. Now, I’m admittedly not an expert in trademark law so the fact that Entrusted Counsel isn’t a law firm and can’t practice law may not mean squat with respect to the merits of the trademark suit, but it certainly is an interesting little fact given all the recent hew and cry over the ABA resurfacing — albeit briefly and to no avail — the discussion about whether the ethics rules should be revised to permit outside, nonlawyer investment in law firms.
I can’t help wondering, if the roles were reversed, what would lawyers say if a consulting shop, owned by a nonlawyer, sued a law firm that had a similar name for trademark infringement.
Speaking of advertising regulations, the other tidbit making waves and news in legal circles this week is that New Jersey has decided to weigh in, yet again, on “accolade advertising.” Quite a few years ago, New Jersey attempted to put its arms out and hold back the tide of “superlative” or “accolade” advertising among lawyers. The effort, as it should have been, was ultimately futile.
Last month, the New Jersey Supreme Court Committee on Attorney Advertising issued a “Notice to the Bar,” to clarify just when, and how, lawyers in New Jersey are permitted to publicly discuss the fact that a third party has conferred upon them a rating or accolade of some sort. What drives the regulatory impulses to seek to impose barriers on references to such ratings or accolades is, of course, the unfortunate belief that all entities that provide ratings somehow have an underhanded, “pay to play” component. To whatever little extent anecdotal evidence can rebut such preconceived notions, I have been fortunate enough to be listed in Best Lawyers in America since 2009, to be listed as a “Super Lawyer” beginning in 2011 by MidSouth Super Lawyers, and was awarded an AV rating by Martindale Hubbell back in 2006 or so and have never paid a dime to any of those entities to run an advertisement or even to receive a plaque acknowledging my inclusion.
Are there entities that do little by way of separating wheat from chaff other than to see if a lawyer will pay for an accolade? Absolutely. But, as indicated above in what it took to figure out that Entrusted Counsel doesn’t practice law, it takes about 5 minutes at most these days to go online and figure out what the score is.
You can read the entirety of the NJ guidance here if you really want to but prepare to be frustrated and to sense the begrudging nature of the whole discussion. If you want just the short version, here is what they say a hypothetical lawyer could say in compliance with their requirements:
Jane Doe was selected to the 2016 Super Lawyers list. The Super Lawyers list is issued by Thomson Reuters. A description of the selection methodology can be found at www.superlawyers.com/about/selection_process_detail.html. No aspect of this advertisement has been approved by the Supreme Court of New Jersey.
Or, here is how it would read if that hypothetical lawyer wanted to tweet about it:
Jane Doe was selected to the 2016 Super Lawyers list. The Super Lawyers list is issued by Thomson Reuters. A description of the selection met
The “Notice to the Bar,” explains that it was issued because the committee “has received numerous grievances regarding attorney advertising of awards, honors, accolades that compare a lawyer’s services to other lawyer’s services.”
I wish the NJ committee would have just hired Ms. Trainor to answer the phones, she could have told the complaining lawyers:
You need to let it go, you need to let it go. Need to let it go. Nah to the ahh to the no, no, no.