Evaluating the Unauthorized Practice of Law When Running a Nationwide / Multijurisdictional Trademark Practice

Image of Trademark Attorney with map of the world behind him

In today’s world, most trademark attorneys’ practice is nationwide. They have clients located in other states. They have to litigate in other states. When a trademark attorney has a multijurisdictional practice, it can create problems when it comes to the rules prohibiting the unauthorized practice of law. In this blog post, I’ll identify some of the rules to be aware of and how they can come into play for trademark attorneys.

The Relevant Rules Regarding the Unauthorized Practice of Law

When assessing the unauthorized practice of law (“UPL”), there are usually three legal sources that need to be evaulated:

  1. state statutes and rules prohibiting the unauthorized practice of law
  2. each state’s definition of “practice of law”
  3. each state’s rules of professional conduct.

Each of these sources is briefly discussed below.

The Statutes Prohibiting UPL

Each state usually has a statute that prohibits the unauthorized practice of law. The American Bar Association (“ABA”) has compiled a list of those state statutes, which can be accessed here: Statutes and Rules Limiting Multijurisdictional Law Practice.

You’ll have to review each state’s statutes and rules for specifics. But generally, these statutes prohibit a person from practicing law or holding himself or herself out as being able to practice law in the relevant state without being licensed by the State Bar. Most of these statutes also provide that a violation constitutes a misdemeanor and/or is punishable by contempt.

The Definitions of Practice of Law

In order to ensure that you’re not engaging in the unauthorized practice of law, you need to know what constitutes the “practice of law.” Each state has defined the “practice of law”—either by statute or by case law. So some of the statutes and rules listed in the ABA link in the preceding section may also define “practice of law” for some states, but not for all. Therefore, the ABA has also compiled a list of state definitions for the “practice of law,” which can be accessed here: State Definitions of the Practice of Law.

The difficulty of providing a specific and all-inclusive definition of the “practice of law” has been acknowledged by legal scholars, courts, and legislatures. But if you peruse the definitions in the link, the practice of law is generally defined to include acting in a representative capacity in court proceedings and other legal proceedings, preparing legal instruments and contracts, and providing legal advice and counsel.

The Rules of Professional Conduct

Lastly, each state’s rules of professional conduct also prohibit the unauthorized practice of law. In this regard, every state except for California has adopted some form of the Model Rules of Professional Conduct. Even setting California aside, the rules of professional conduct vary by state because many states have modified or amended the Model Rules rather than adopting them wholesale. As you’ve probably guessed by now, the ABA has links to each state’s rules of professional conduct, which can be accessed here: Every State’s Rules of Professional Conduct.

With regard to the unauthorized practice of law (and the multijurisdictional practice of law), the relevant Model Rule is Rule 5-5.  The corresponding California rule is Rule 1-300 of the Rules of Professional Conduct.

Generally speaking, these rules of professional conduct address one or more of the following matters relating to the unauthorized practice of law and multijurisdictional practice:

  • Violating Another State’s Rules. Prohibiting a lawyer from practicing law in another jurisdiction in violation of that jurisdiction’s rules
  • Limiting a Continuous Presence to a State’s Licensed Attorneys. Prohibiting a lawyer who is not licensed in the state from setting up an office/presence in the state or holding himself out to the public as able to practice law in the state
  • Temporary Legal Services by Out of State Attorneys. Specifying the conditions under which a lawyer admitted in another jurisdiciton can provide legal services on a temporary basis in the state (e.g., using and involving local counsel for the legal services, legal services related to a court case, legal services related to ADR, and legal services reasonably related to a lawyer’s practice in another jurisdiction).
  • Exceptions Allowing a Presence to Out of State Attorneys. Specifying the exceptions under which a lawyer not admitted in the state can haee an office or continous presence (e.g., providing legal service to an employer or services authorized by federal law).

No Special Privileges for Trademark Attorneys

Why do patent attorneys (heck, even patent agents) get all the federal love? Why do respected, hard-working trademark attorneys remain the black sheep of the IP world? It is what it is.

Hey Patent Attorneys and Agents, Here’s Your Federal Authorization

In Sperry v. Florida, the U.S. Supreme Court held that Florida could not enjoin a nonlawyer registered to practice before the United States Patent and Trademark Office (“USPTO”) from prosecuting patent applications in Florida. Sperry v. Florida, 373 U.S. 379, 384 (1963). The decision was based on the federal statute and USPTO rules specifically authorizing such practice before the USPTO. Specifically, 35 U.S.C. § 31 permitted the USPTO to authorize nonlawyers to prosecute patents at the USPTO.  The USPTO, in turn, authorized such practice via 37 CFR § 1.31. Therefore, the Supremacy Clause prohibited Florida from denying the nonlawyer the ability to prosecute patent applications before the USPTO even though it would otherwise constitute the unauthorized practice of law under Florida law. Interestingly, in coming to its conclusion, the U.S. Supreme Court compared the right of patent attorneys and agents to prosecute patents before the USPTO with the right of trademark attorneys, noting that the trademark regulations—unlike the patent regulations—did not authorize what would otherwise constitute the unauthorized practice under state law.

Under Model Rule 5.5(d)(2), an attorney admitted in another state can set up an office or “systematic and continuous” presence to practice law if the services are “authorized by federal or other law or rule to provide in this jurisdiction.”  Therefore, the Sperry federal authorization—at least with respect to patent attorneys (because the Model Rules don’t apply to nonlawyers)—is reflected in Model Rule 5-5(d)(2):

(d) A lawyer admitted in another United States jurisdiction or in a foreign jurisdiction, and not disbarred or suspended from practice in any jurisdiction or the equivalent thereof, or a person otherwise lawfully practicing as an in-house counsel under the laws of a foreign jurisdiction, may provide legal services through an office or other systematic and continuous presence in this jurisdiction that:

(2) are services that the lawyer is authorized by federal or other law or rule to provide in this jurisdiction.

So No Special Federal Authorization for Trademark Attorneys?

But unlike the provisions applicable to patent attorneys and as noted in Sperry, the rules governing the practice of trademark law are starkly different. Part 2 of Title 37 of the Code of Federal Regulations governs the Rules of Practice in Trademark Cases (§§ 2.1 – 2.209). Section 2.11 provides for the representation of trademark applicants before the USPTO: “Representation before the Office is governed by § 11.14 of this chapter. The Office cannot aid in the selection of an attorney.” Section 11.14, in turn, reads as follows:

§ 11.14 Individuals who may practice before the Office in trademark and other non-patent matters.

(a) Attorneys. Any individual who is an attorney as defined in § 11.1 may represent others before the Office in trademark and other non-patent matters. An attorney is not required to apply for registration or recognition to practice before the Office in trademark and other non-patent matters. Registration as a patent practitioner does not itself entitle an individual to practice before the Office in trademark matters

(b) Non-lawyers. Individuals who are not attorneys are not recognized to practice before the Office in trademark and other non-patent matters, except that individuals not attorneys who were recognized to practice before the Office in trademark matters under this chapter prior to January 1, 1957, will be recognized as agents to continue practice before the Office in trademark matters. Except as provided in the preceding sentence, registration as a patent agent does not itself entitle an individual to practice before the Office in trademark matters.

(c) Foreigners. Any foreign attorney or agent not a resident of the United States who shall file a written application for reciprocal recognition under paragraph (f) of this section and prove to the satisfaction of the OED Director that he or she is registered or in good standing before the patent or trademark office of the country in which he or she resides and practices and is possessed of good moral character and reputation, may be recognized for the limited purpose of representing parties located in such country before the Office in the presentation and prosecution of trademark matters, provided: the patent or trademark office of such country allows substantially reciprocal privileges to those permitted to practice in trademark matters before the Office. Recognition under this paragraph shall continue only during the period that the conditions specified in this paragraph obtain.

(d) Recognition of any individual under this section shall not be construed as sanctioning or authorizing the performance of any act regarded in the jurisdiction where performed as the unauthorized practice of law.

(e) No individual other than those specified in paragraphs (a), (b), and (c) of this section will be permitted to practice before the Office in trademark matters on behalf of a client. Any individual may appear in a trademark or other non-patent matter in his or her own behalf. Any individual may appear in a trademark matter for:

(1) A firm of which he or she is a member,

(2) A partnership of which he or she is a partner, or

(3) A corporation or association of which he or she is an officer and which he or she is authorized to represent, if such firm, partnership, corporation, or association is a party to a trademark proceeding pending before the Office.

(f) Application for reciprocal recognition. An individual seeking reciprocal recognition under paragraph (c) of this section, in addition to providing evidence satisfying the provisions of paragraph (c) of this section, shall apply in writing to the OED Director for reciprocal recognition, and shall pay the application fee required by § 1.21(a)(1)(i) of this subchapter.

The key provision of § 11.14 is the one that I’ve bolded and italicized. In short, § 11.14(d) is specifically stating that § 11.14 does not affect or alter the evaluation of the unauthorized practice of law in a particular state or jurisdiction.

Scenarios

Given what I’ve laid out above regarding the unauthorized practice of law, let’s take a look at some of the common scenarios in which a trademark attorney will be providing trademark legal services to his or her client. In each of these scenarios, I am assuming that you are a licensed attorney in your home state but not licensed out-of-state.

Providing Trademark Legal Services From Your Home State to In-State Clients

Obviously, there’s no issue with this. Every state permits an attorney licensed in that state to practice law and provide legal advice to clients located in that state. This one is a no-brainer.

Providing Trademark Legal Advice From Your Home State to Out-of-State Clients Regarding Federal Trademark Law

So you’re sitting in your office in your home state in which you are licensed to practice law and you are providing legal advice by phone or email to a client located in another state regarding federal trademark law. Is this the unauthorized practice of law? It’s 2017 and you probably think that by now there is a clear answer to this question. You’re wrong. It’s not clear. The only thing that is clear is that almost every attorney engages in this sort of practice believing that it is acceptable under the rules.

The answer really turns on whether this constitutes practicing law in the jurisdiction where your out-of-state client is located. And like this Philadelphia Bar Association Ethics Opinion, the answer you get is usually a punt—telling you to go look at the other jurisdiction’s laws and rules and figure it out for yourself. But if you have that kind of practice, are you really going to analyze and legally opine on the laws of each and every state in which you have an out-of-state client? Nope. And that’s why most trademark attorneys don’t give this scenario a second thought.

However, it is actually possible that the relevant decision-maker in another state (state bar, court) might consider this practicing law if they take a hyper-rigid view regarding what constitutes practicing in their jurisdiction (i.e., a virtual presence by way of phone or email). For example, on page 11 of this California State Bar Review Opinion, an attorney’s argument that she was providing advice to out-of-state clients solely on matters of federal law was rejected.

On the other hand, other jurisdictions like Virginia apparently do not consider this the unauthorized practice of law. In Virginia UPL Opinion 201, the Virginia State Bar concluded as follows:

[A] foreign attorney may advise and prepare legal documents for a Virginia client in Virginia on such matters, assuming that the foreign attorney is admitted to practice before that federal court. [2] Such advice and document preparation may be provided only to the extent that the federal matter is not impacted by Virginia law and if Virginia legal issues are not involved. UPL Op. 158 (1996). A non-Virginia licensed attorney may also be authorized by federal law to represent persons before a federal administrative agency and may therefore give advice to and prepare legal instruments for such clients in the regular course and within the scope of practice authorized by such federal agency. UPR 9-102.

Other states have also come to this conclusion. Illinois State Bar Association Opinion 13-08.

Providing Trademark Legal Advice From Your Home State Regarding Non-Federal, Out-of-State Trademark Law

If providing legal advice to out-of-state clients exclusively on matters of federal trademark law is dicey (as discussed in the preceding section), you can rest assured that providing legal advice to out-of-state clients regarding out-of-state trademark law is substantially dicier (yes, dicier is a word). With two out-of-state checkboxes checked if you will (i.e., out-of-state client and out-of-state law), this is likely to constitute the unauthorized practice of law in another jurisdiction. For example, the Virginia State Bar has specifically concluded that this would constitute the unauthorized practice of law. Virginia UPL Opinion 158.

Litigating a Trademark Case in Federal Court Located Out-of-State

This one is OK too as long as you comply with the rules. All federal district courts have a procedure for getting admitted to practice pro hac vice (translated as “this time only” or “for this occasion”). The procedure involves associating with local counsel who is in good standing and licensed in the relevant state and filing a pro hac vice application with the relevant federal court. Once your pro hac vice application has been granted, you are good to go.

For states that have adopted the Model Rules, this is reflected in Model Rule 5-5(c)(2):

(c) A lawyer admitted in another United States jurisdiction, and not disbarred or suspended from practice in any jurisdiction, may provide legal services on a temporary basis in this jurisdiction that:

(2) are in or reasonably related to a pending or potential proceeding before a tribunal in this or another jurisdiction, if the lawyer, or a person the lawyer is assisting, is authorized by law or order to appear in such proceeding or reasonably expects to be so authorized

By way of complying with a particular federal district court’s pro hac vice rules, you would be “authorized by law” to appear in the federal court case under 5-5(c)(2).

Litigating a Trademark Case in State Court Located Out-of-State

Some states allow this and some don’t. For example, California has Rule 9.40 and Rule 9.47 of the California Rules of Court that allows attorneys to litigate a state court case in California, provided the attorney meets the qualifications and conditions of the rule. This includes associating with an attorney licensed in California. If the state in which you are located doesn’t provide for a state equivalent to the federal pro hac vice procedure, then you’re out of luck.

Relocating to Out-of-State as In-House Trademark Counsel

In states that have adopted Model Rule 5-5(d)(1) or some form of that rule, a trademark attorney can practice law for an employer and its organizational affiliates, as long as that attorney is licensed in another state. Rule 5-5(d)(1) reads as follows:

(d) A lawyer admitted in another United States jurisdiction or in a foreign jurisdiction, and not disbarred or suspended from practice in any jurisdiction or the equivalent thereof, or a person otherwise lawfully practicing as an in-house counsel under the laws of a foreign jurisdiction, may provide legal services through an office or other systematic and continuous presence in this jurisdiction that:

(1) are provided to the lawyer’s employer or its organizational affiliates, are not services for which the forum requires pro hac vice admission; and when performed by a foreign lawyer and requires advice on the law of this or another U.S. jurisdiction or of the United States, such advice shall be based upon the advice of a lawyer who is duly licensed and authorized by the jurisdiction to provide such advice; or

California, which has not adopted the Model Rules, addresses some multijurisdictional practice matters in its California Rules of Court. The specific issue of an out-of-state attorney serving as in-house counsel in California addresses this issue in Rule 9.46 of the California Rules of Court. The rule allows an out-of-state attorney to practice law as in-house counsel for a qualifying institution, but does require, among other things, that the attorney register with the California State Bar (not take the Bar Exam, just register). Not every company will qualify as a “Qualifying Institution,” however. The company must employee at least 10 full time employees in California, as well as at least one attorney who is a member of the California State Bar.

So although you will need to check each state’s specific requirements for out-of-state attorneys serving as in-house counsel, this arrangement is generally allowed. However, some jurisdictions, like California and New Jersey, require registration with the state bar. And you’ll also want to make sure that you comply with any limitations or restrictions that the relevant state has placed on practicing under the in-house counsel exception.

Relocating Out-of-State and Providing Trademark Legal Services

If you relocate to a different state in which you are not licensed and provide trademark services, you are almost certainly engaging in the unauthorized practice of law. This is true even if you are only providing services before the USPTO or limiting your legal advice to federal trademark law. Although the Model Rules do allow a lawyer to provide legal services in a jurisdiction in which he or she is not licensed when authorized by federal law, there is simply no law or rule that currently allows an attorney to do this. In fact, as we previously discussed, 37 CFR § 11.14(d), which governs trademark attorneys practicing before the USPTO, specifically states that it does not sanction or authorize conduct that would otherwise be the unauthorized practice of law. Therefore, you’d be running afoul of the very basic rule prohibiting an attorney from practicing law in a jurisdiction in which he or she is not licensed.

Relocating to a Different Country and Providing Trademark Legal Services

This one is interesting. California and the Model Rules prohibit practicing law in another jurisdiction in violation of that jurisdiction’s rules. Using California as an example, what if you are licensed to practice law in California, move to a different country, and continue to provide legal advice to clients in California regarding California law or federal trademark law Apparently, this will depend on the law of the country you’ve moved to. Many countries do not have laws that would specifically prohibit this type of scenario. Therefore, it seems that, if the country you’ve moved to does not prohibit such practice, it will not be a violation of your home U.S. state’s ethical and legal rules regarding the unauthorized practice of law.

But you should also be aware that some state bars have residency and bona fide office requirements in order to maintain a license to practice law in the state. Kimbro, Practicing Law Without an Office Address (Dayton Law Review 2011).

Conclusion

Contrary to what some think, there are no special multijurisdictional practice of law rules for trademark attorneys providing legal services related to federal trademark law. Trademark attorneys providing trademark legal services are subject to the standard unauthorized practice of law analysis employed be each state or other relevant jurisdiction. So if your trademark practice is national or multijurisdictional in nature, confirm that you’re not running afoul of the relevant jurisdiction’s unauthorized practice of law statutes and ethical rules.

About the Author

Bruno Tarabichi