Can a New York lawyer run and advertise a trademark practice over the Internet, communicate with clients by unencrypted e-mail, and operate under a trade name?
NY State Bar Ethics Opinion 709: Running a trademark practice over the Internet
Short answer: The opinion concluded a lawyer may operate and advertise a trademark practice on the Internet, and ordinarily may use unencrypted e-mail for client confidences, subject to conflict-checking, the advertising rules, and competence duties; a lawyer may not practice law under a trade name.
Disclaimer: This is an advisory ethics opinion. Advisory opinions are not binding; they interpret the New York State Bar Association's rules of professional conduct and are persuasive authority. This summary is for research purposes only and is not legal advice. Verify current rules before acting on any specific guidance.
About this page: The plain-English summary and Q&A below were written by Ezel based on the official opinion. We do not reproduce the opinion text on this page; follow the linked source for the official text, which controls.
Plain-English summary
A lawyer proposed an Internet site for a business that would conduct trademark searches, give opinions on trademark availability, and file and prosecute trademark applications, taking orders nationwide and charging credit cards, with most client communication by unencrypted e-mail. The committee addressed practicing law online, e-mail confidentiality, Internet advertising, out-of-state clients, and trade names.
On the practice itself, the committee found no Code provision addressing law practice over the Internet and treated it as analogous to practice by telephone or fax, and therefore permissible subject to the same restrictions. It flagged several points: the court rule requiring posting a Statement of Client's Rights and Responsibilities (22 N.Y.C.R.R. 1210.1) can be satisfied by including the Statement's full text on the web site; the DR 5-105(E) duty to keep conflict records and check them before a new matter applies online, though not where the lawyer gives only general educational information without obtaining confidences or giving specific advice; the Canon 6 competence duty requires care that information gathered from Internet sites is reliable; and credit card payment is permissible if the fee is not excessive and the client's card information is protected.
On e-mail, the committee held that lawyers may ordinarily use unencrypted Internet e-mail to transmit confidential information without breaching Canon 4, because the criminalization of interception under the Electronic Communications Privacy Act (and a 1998 CPLR amendment) supports a reasonable expectation of privacy comparable to telephone and fax. It qualified that a lawyer who is on notice of a heightened risk of interception, or who handles extraordinarily sensitive information, must use a more secure means, must stay abreast of the technology, and should discuss the risks with clients and abide by their wishes.
On advertising, the committee treated an Internet site as public-media advertising permitted under DR 2-101 if not false, deceptive, or misleading; it analogized a web site to a broadcast rather than a mailing, so the lawyer must keep a copy for at least one year but need not file it with a disciplinary committee, and any ad should disclose where the lawyer is licensed so as not to mislead (DR 2-102(D)). On out-of-state clients, whether a New York-only lawyer could give legal opinions to non-residents turned on the other jurisdiction's unauthorized-practice law (DR 3-101(B)), a question of law the committee could not resolve. On trade names, the committee held DR 2-102(B) flatly bars practicing law under a trade name; a lawyer may run a separate non-law business under a trade name only if it does not constitute the practice of law and is not used to solicit legal work, and the committee noted that even trademark searches and filings become the practice of law when the lawyer brings professional legal judgment to bear.
Currency note
This opinion was issued in 1998, under New York's former Code of Professional Responsibility, which New York replaced with the Rules of Professional Conduct in 2009. Subsequent rule amendments or later opinions, including later guidance on electronic communications and technology competence, may have changed the analysis. Treat this page as historical context, not current guidance. Verify against current rules before relying on any specific rule, deadline, or requirement mentioned here.
Common questions
Q: Can a lawyer run a law practice entirely over the Internet?
A: The opinion concluded yes, treating Internet practice as analogous to telephone or fax practice, subject to the same restrictions plus conflict-checking, posting the Statement of Client's Rights on the web site, and ensuring online research sources are reliable.
Q: Can a lawyer e-mail client confidences without encryption?
A: The opinion concluded lawyers ordinarily may, because interception is criminalized and the expectation of privacy is comparable to telephone and fax; but a lawyer on notice of heightened interception risk, or handling extraordinarily sensitive material, must use a more secure means.
Q: Can a lawyer advertise on the Internet to clients in other states?
A: The opinion said yes, if the advertising is not false or misleading and discloses where the lawyer is licensed; whether the lawyer may then render legal services to out-of-state clients depends on the other jurisdiction's unauthorized-practice law, which the committee did not resolve.
Q: Can the practice operate under a trade name like "The Trademark Store"?
A: The opinion concluded no for a law practice: DR 2-102(B) bars practicing law under a trade name. A separate non-law business may use a trade name only if it does not constitute the practice of law and is not used to solicit legal work.
Background and rules framework
The opinion interpreted New York's former Code of Professional Responsibility: DR 2-101 (advertising), DR 2-102(B) and (D) (trade names and misleading identification), DR 3-101(B) (unauthorized practice in another jurisdiction), DR 4-101 (confidences and secrets), DR 5-105(E) (conflict-checking system), and Canon 6 (competence). The Model Rule analogues are Rule 1.6 (confidentiality), Rule 5.5 (unauthorized and multijurisdictional practice), Rule 7.1 (communications about a lawyer's services), and Rule 7.5 (firm names and trade names). New York replaced the Code with the Rules of Professional Conduct in 2009; the DR numbers cited here are historical.
Citations and references
Rules of Professional Conduct:
- MR 1.6 (confidentiality of information)
- MR 5.5 (unauthorized practice; multijurisdictional practice)
- MR 7.1 (communications concerning a lawyer's services)
- MR 7.5 (firm names and trade names)
- NY DR 2-101; DR 2-102(B), (D); DR 3-101(B); DR 4-101; DR 5-105(E); Canon 6
Statutes:
- Electronic Communications Privacy Act, 18 U.S.C. 2510 et seq. (interception of electronic communications)
- N.Y. C.P.L.R. 4547 (privilege not lost solely because a communication is by electronic means)
Cases:
- Shapero v. Kentucky Bar Ass'n, 486 U.S. 466 (1988), lawyer advertising to the general public
- Birbrower, Montalbano, Condon & Frank v. Superior Court, 949 P.2d 1 (Cal. 1998), out-of-state firm and unauthorized practice
- In re von Wiegen, 481 N.Y.S.2d 40 (N.Y. 1984), trade-name limits
Other opinions cited:
- N.Y. State 664 (1994): conflict-checking for legal advice given by "900" telephone service
- N.Y. State 636 (1992): a separate non-law business under a trade name ("The Will Store")
- N.Y. State 705 (1998): trademark and tax-reduction work as the practice of law
See also
- NY State Bar Op. 715: A contract lawyer working for multiple firms
- NY State Bar Op. 705: Accepting cases from a non-attorney tax reduction company
Source
- Landing page: https://nysba.org/opinion-709/