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[Wiscagent]

Agent_2x, please set up your "Sunshine Law" firm.

It's been too long since Sperry v. Florida, we could use a new test case to clarify this point of law.

[DogDayPM 9er9er9er]

Agent_2x, please set up your "Sunshine Law" firm.

Really wanted to set up a "Moonshine Law Firm", but I'm not licensed in TN (or is it KY?). 

Always get that bourbon vs. whiskey contretemps mixed up, too.

[DogDayPM 9er9er9er]

P.S. to the OP, of course you're going to do what you're going to do, but hopefully you only get a month's supply of letterhead, etc. printed up at a time. 

Once they become wastepaper, there's only so many versions of paper airplanes even an engineer can come up with.

[Kaitlin]

But here's another issue:  don't the same arguments against using "law" in a business name also apply to lawyers who don't practice the entire spectrum of law?  For example, someone may see "Bob's Law Firm, Inc." in the phone book and call them up to see if they have someone who will prosecute a patent application for them.  Let's say "Bob" and his associates have done nothing but divorce settlements for the last 50 years.  Doesn't Bob have a similar obligation to tell the caller that he's not competent to practice patent law?  Has the caller really been "mislead" in this scenario?

Yes, Bob is obligated to tell the caller he's not competent to practice patent law, and no the firms name has not mislead the caller that the firm has a patent attorney because the name doesn't say or imply such. However, using the term 'law' in bob's firms name does imply that there are people in bob's law firm that are authorized to practice law in bob's state.

Another reason the situation is not analogous: Lawyers are trained to be generalists, eventual practice to the contrary notwithstanding.  To be admitted to a state bar you need to know about contracts, torts, agency, estates, and many other areas of law.  So, even if you do not actively practice in those areas and have forgotten the specifics, you have still been trained to spot legal issues and know when the job you're doing is likely to involve an area of law for which you need to consult another attorney.

[agent_2x]

Okay, people, there's no reason to immediately resort to sarcasm.  I'm just trying to better understand where agents stand in the legal framework.  This isn't a clear-cut case; neither the PTO attorneys nor the bar assn of my state gave me a definitive answer, so I'm simply exploring other sources.

[DogDayPM 9er9er9er]

Okay, people, there's no reason to immediately resort to sarcasm. 

Come now; statute of limitations for sarcasm is 7 days; I think the sarcasm didn't start here until the 8th day.   

I think it's mostly in fun (mine were all intended to be, in any event). 

But I still think you're going to get hammered IF the bar assn in your state takes notice. 

That is of course a "a big if" (in more ways than one).  But all that would be required for them to take notice is for one of your neighboring law firms with old-fashioned notions to send in a complaint.  Then, even if you win in the end, what has it cost you?  Hopefully not more than a little advertising and letterhead cost.

http://www.babble.com/CS/blogs/droolicious/archive/2008/02/01/7-days-of-getting-crafty-simple-origami-airplanes.aspx

[physicsnerd]

Ya, I just go back to the risk.  Even if you're successful it could cost you months of time and thousands of dollars.  I also agree with one of the above points discussing the "generalist" aspect of normal law.

As a patent agent you are not allowed to practice law.  But you are qualified to practice a portion of patent law.  By simply saying "law" and not qualifying it more thoroughly the fact finder may very easily find that statement misleading.   One thing they'll likely look to is how simple it would have been for you to qualify it more clearly.  Since it would be relatively easy for you to do that and then you choose not to could possibly indicate intent.  Further, the mere fact that you are having this conversation shows your intent.  Its not about whether an informed person would be misled.  You have to put yourself in the shoes of the uninformed client.  A court would likely find that the use of the word "Law" in the setting you are suggesting would lead people to believe its a law firm capable of practicing other types of law. 

This does have material consequences too.  Say for example someone who has invention comes to you for advice.  They ask you whether or not you think its a good idea to patent the invention.  Depending on the specifics of the conversation you might not even be able to answer that question.  No matter what your answer you are advising, either impliedly or expressly, on the issue of trade secret law. 

So the truth is you would only want to represent savvy individuals who know they want a patent in the first place.  And those individuals are probably going to know that patent agents can practice portions of patent law.  So, in reality indicating that you're an agent and not an attorney isn't going to hurt you.  From the Bar's perspective if it is hurting you not to use your proposed title then those clients that you would pick up by using your title are probably by definition being misled.

To get a better feeling for it you need to ask yourself why you're wanting to use your version.  Its because you hope to pick up some of those customers who might be unaware that an agent can prosecute and draft patent applications.  But anyone who falls in that class is unlikely to then know that a patent agent can't practice trade secret law.  Well, if a person doesn't know that then you really can't represent them anyway, as you couldn't advise them in the first place as to whether a patent was better for them than protecting their idea with state trade secret law.

Anyway, again, my advice is just "play it safe."

[Scotto]

I can see where using the word "Law" can prove trouble-some. One would attract more market potential in the form of the general laymen, but is it really that involving to tell them you can only process patent prosecution and not any form of litigation within or outside this area of law? Only when the number of contacts of the aforementioned outnumber the legitimate ones should one start thinking that something is amiss. At that point though, it would be good business sense to modify the business name in order clarify the intent.

P.S. to the OP, of course you're going to do what you're going to do, but hopefully you only get a month's supply of letterhead, etc. printed up at a time. 

Once they become wastepaper, there's only so many versions of paper airplanes even an engineer can come up with.

Do you mind if I use a derivative of this quote in my signature. Jolly good comment!

[DogDayPM 9er9er9er]

Do you mind if I use a derivative of this quote in my signature. Jolly good comment!

Thanks, and I don't mind, but do you realize it has retroactive effect?  That is, all of your old posts will now show up with the quote.  It's a bit like 1983 and "We have always been at war with Oceania" because application of new signature wipes out any older signature, for all posts.

Also, feel free to use the line without attribution, since in looking at the result you can see that using the "Quote From" portion may be confusing.  Looks almost as if you're quoting something from a post in the thread in which you're responding.

[patbar0809]

Just curious, what about an out-of-state patent attorney? How would their situation (marketability aside) be different until admitted to a jurisdiction's bar? What about the practicalities of an out-of-state patent attorney setting up "Sunshine Law" vs. a patent agent doing it, and the use of "law" by either of these with neither being admitted to practice (state) "law" within a given jurisdiction (pro hac vice aside)?

[DogDayPM 9er9er9er]

Just curious, what about an out-of-state patent attorney? How would their situation (marketability aside) be different until admitted to a jurisdiction's bar? What about the practicalities of an out-of-state patent attorney setting up "Sunshine Law" vs. a patent agent doing it, and the use of "law" by either of these with neither being admitted to practice (state) "law" within a given jurisdiction (pro hac vice aside)?

Good point and I see it as an analogous situation.  If I moved to sunny Florida where I'm not barred and wanted to hang a shingle and offer prep/pros work to the public, it would say something along the lines of Sunshine Patent Services, not Sunshine Law.  In sunny Florida, I may be tanned and happy but I am not an attorney at law - I'm a patent agent who happens to be a law school grad.

If my shingle said Sunshine Law, I would expect someone to complain sooner or later, and I'd get out the wood burning kit, flip the shingle over, and change the name.

[agent_2x]

okay, okay.  god you people are relentless 
"Sunshine Law" has been expressly abandoned.  You convinced me.

Physicsnerd said something though that I want to hear others' opinions on:  "They ask you whether or not you think its a good idea to patent the invention.  Depending on the specifics of the conversation you might not even be able to answer that question.  No matter what your answer you are advising, either impliedly or expressly, on the issue of trade secret law."

This is a subtlety I've never thought of - so thank you.  I suppose you're right, an agent would have to reply by saying whether it's a "good idea" to patent it is up to them, but once they've made the decision to go ahead then I (as the agent) could provide an assessment of patentability. 

Agent_2x
Principal, Moonshine Lex

[DogDayPM 9er9er9er]

okay, okay.  god you people are relentless  ....

.... an agent would have to reply by saying whether it's a "good idea" to patent it is up to them, but once they've made the decision to go ahead then I (as the agent) could provide an assessment of patentability. 

Hah, you defame me by putting me in with a group of mugs who have no relents.  I have tents full of relents.

As to your last comment - I think you could put the patentability assessment before or after, as long as they weren't tossing in the TS-laden question as in, "well, if you don't think we should hold it secret, check and see if it might be patentable".

FWIW, I also hadn't thought of `nerd's twist on the intersection of TS law and whether "you think it's a good idea to patent it".  Offhand, my gut says that's not a high probability-of-danger hypo (maybe only because I didn't think of it!), but it's still an interesting thought.

[ChrisWhewell]

Hello,

I'm interested in starting a solo practice and I'd like to use the word "law" as part of the name, e.g.,   "Sunshine Law".  (A fictitious example, of course.)
Here's the rub: I'm an agent, not an attorney.  Agents "practice law" as per a 1963 Supreme Court decision, but can anyone tell me whether this might be considered false/misleading, or have any examples of agents practicing under a business name including the word "law"?

Thank you!

Just call it "Joe's Brother-in Law" if your wife has a brother named Joe.

I've contemplated changing mine to:   "Billmore, Oures, and Adam, PC" .   Would that be mis-leading ?  Maybe not, if I lived up to it.   

In all seriousness, I see the word "law" by iteself as being too broad, encompassing contract and other state law.   I'd go with what's permissible, or else work on changing the canons.  It can be done.