Ezel / Ethics Opinions / OHBPC
OHBPC December 11, 2020

Can an Ohio lawyer or law firm register and use a service mark like 'The Appeals Pro' in advertising and on letterhead?

Short answer: The opinion concludes a lawyer or firm may register and use a service mark in communications and advertising, but only in conjunction with the firm's formal legal name and never as a substitute for the firm name. The mark cannot be false, misleading, or nonverifiable, and a lawyer may not use 'pro' or 'pros' in a mark, even if certified as a specialist.

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This page answers the general question as of 2020. Ezel answers yours: whether it's allowed on your facts, under the current Ohio Rules of Professional Conduct, with citations.

Currency note: this opinion is from 2020
Subsequent statutory amendments, court decisions, or later opinions or rule amendments may have changed the analysis. Treat this page as historical context, not current legal advice. Verify current law before relying on any specific rule, deadline, or remedy mentioned here.
Disclaimer: Advisory only. Not binding precedent.
About this page: The plain-English summary, reader guidance, and Q&A below were written by Ezel based on the official ethics opinion. The original opinion (linked on this page as a PDF) is the authoritative source for any reliance.
View original ethics opinion (PDF)

Plain-English summary

The Board addressed whether a lawyer or firm may use a registered service mark such as "The Residential Real Estate Pro" or "The Appeals Pro" in advertising and on letterhead, and whether such a mark may communicate a practice concentration or a recognized specialization. The opinion distinguishes a service mark, which identifies the services a business provides (R.C. §1329.54(B)), from a trade name, which identifies the business itself (R.C. §1329.01(A)(1)).

The opinion concludes that using a properly registered service mark in lawyer communications or advertising is generally permitted, but a service mark must not be used as a substitute for a firm name otherwise permitted under Prof.Cond.R. 7.5, and must always be used in conjunction with the firm's formal legal name so the communicating lawyer or firm is properly identified (Prof.Cond.R. 7.2(c)). For example, "Guardian Law, LLC" may use the mark "Protecting the Unprotected" only alongside, not instead of, the firm name.

As with trade names, a service mark cannot be false, misleading, or nonverifiable under Prof.Cond.R. 7.1. Marks implying results ("We Never Lose," "Insuring Your Victory"), or implying a connection to a government agency, expediency, or a nonprofit or charity, are inherently misleading. On specialization, Prof.Cond.R. 7.4 bars implying or stating a specialization unless the lawyer is certified by the Supreme Court Commission on Certification of Attorneys as Specialists. Following its analysis of the term "expert" in Adv. Op. 2005-06, the Board concludes that "pro" or "pros" implies specialization and is prohibited under Prof.Cond.R. 7.4(e) even where the lawyer is certified, and may also be misleading or nonverifiable. A lawyer may, however, register a service mark conveying that the practice is concentrated in or limited to a field, such as "The Home Buyer's Lawyer" or "Columbus Probate Lawyers."

In practice

Under this opinion, a registered service mark is treated as advertising about the lawyer's services, not as a firm name. The opinion holds that the mark must accompany the firm's formal legal name in written or oral communications and may not replace the firm name permitted under Prof.Cond.R. 7.5. Per the opinion, the mark must comply with Prof.Cond.R. 7.1, so marks implying guaranteed results, expediency, or a government, nonprofit, or charitable connection are inherently misleading, and the terms "pro" or "pros" are barred under Prof.Cond.R. 7.4(e) regardless of certification. A mark conveying a concentration or limitation in a field of law (without claiming specialization) is permitted.

Common questions

Q: Can a firm use a registered service mark in its advertising?

A: Yes. The opinion concludes a properly registered service mark is generally permitted in communications and advertising, provided it complies with Prof.Cond.R. 7.1.

Q: Can the service mark replace the firm name?

A: No. The opinion concludes a service mark may not substitute for a firm name permitted under Prof.Cond.R. 7.5 and must always be used in conjunction with the firm's formal legal name (Prof.Cond.R. 7.2(c)).

Q: Can a lawyer use "Pro" in a service mark if certified as a specialist?

A: No. The opinion concludes "pro" or "pros" implies specialization and is prohibited under Prof.Cond.R. 7.4(e) even for a certified specialist, and may also be misleading.

Q: Can a service mark describe the lawyer's field of practice?

A: Yes. The opinion concludes a mark may convey that the practice is concentrated in or limited to a field, such as "The Home Buyer's Lawyer" or "Columbus Probate Lawyers."

Background and rules framework

The opinion interprets Ohio Prof.Cond.R. 7.1 (false or misleading communications; Model Rule 7.1), 7.2 (advertising and the requirement to identify the communicating lawyer; Model Rule 7.2), 7.4 (communication of fields of practice and specialization; Model Rule 7.4), and 7.5 (firm names; Model Rule 7.5), and applies the statutory definitions of service mark and trade name in R.C. §1329.54(B) and §1329.01(A)(1).

Citations and references

Rules of Professional Conduct:

  • Ohio Prof.Cond.R. 7.1 and cmts. [2], [3] (Model Rule 7.1)
  • Ohio Prof.Cond.R. 7.2(c) and cmt. [2]; 7.5 (Model Rules 7.2, 7.5)
  • Ohio Prof.Cond.R. 7.4(a), (e) (Model Rule 7.4)

Statutes:

  • R.C. §1329.54(B) (service mark); R.C. §1329.01(A)(1) (trade name)

Cases:

  • Zauderer v. Office of Disciplinary Counsel, 471 U.S. 626 (1985), false or misleading lawyer advertising is not constitutionally protected

Other opinions cited:

  • Ohio BPC Adv. Op. 2005-06: use of the term "expert" in lawyer advertising

See also

Source

Original opinion text

Reproduced from the official source for research purposes. The linked source is authoritative.

OPINION 2020-12
Issued December 11, 2020

                    Lawyer or Law Firm Use of Service Mark

SYLLABUS: A lawyer or law firm may register and use a service mark in
communications and advertising. A service mark used by a lawyer or law firm cannot
be false, misleading, or nonverifiable. A service mark that implies certain results,
expediency, or a connection to a governmental, nonprofit, or charitable organization is
inherently false or misleading. A lawyer may not use the terms “pros” or “pro” in a
registered service mark regardless of whether the lawyer has been certified as a specialist
in an area of law. A lawyer or law firm may register and use a service mark to convey a
limitation or concentration in a particular field of law. A lawyer or law firm may only
use a service mark in written or oral communications in conjunction with the formal legal
name of the law firm.

This nonbinding advisory opinion is issued by the Ohio Board of Professional Conduct
in response to a prospective or hypothetical question regarding the application of
ethics rules applicable to Ohio judges and lawyers. The Ohio Board of Professional
Conduct is solely responsible for the content of this advisory opinion, and the advice
contained in this opinion does not reflect and should not be construed as reflecting the
opinion of the Supreme Court of Ohio. Questions regarding this advisory opinion
should be directed to the staff of the Ohio Board of Professional Conduct.
65 SOUTH FRONT STREET, 5TH FLOOR, COLUMBUS, OH 43215-3431
Telephone: 614.387.9370 Fax: 614.387.9379
www.bpc.ohio.gov

HON. JOHN W. WISE RICHARD A. DOVE
CHAIR DIRECTOR
PATRICIA A. WISE D. ALLAN ASBURY
VICE- CHAIR SENIOR COUNSEL
KRISTI R. MCANAUL
COUNSEL

                                   OPINION 2020-12
                               Issued December 11, 2020

                     Lawyer or Law Firm Use of Service Mark

SYLLABUS: A lawyer or law firm may register and use a service mark in
communications and advertising. A service mark used by a lawyer or law firm cannot
be false, misleading, or nonverifiable. A service mark that implies certain results,
expediency, or a connection to a governmental, nonprofit, or charitable organization is
inherently false or misleading. A lawyer may not use the terms “pros” or “pro” in a
registered service mark regardless of whether the lawyer has been certified as a specialist
in an area of law. A lawyer or law firm may register and use a service mark to convey a
limitation or concentration in a particular field of law. A lawyer or law firm may only
use a service mark in written or oral communications in conjunction with the formal legal
name of the law firm.

QUESTION PRESENTED:

   1) Whether a lawyer or a law firm may use a service mark such as “The
      Residential Real Estate Pro” or “The Appeals Pro” in advertising and
      letterhead in conjunction with a firm name that complies with the Rules of
      Professional Conduct if the service mark is properly registered.

   2) Whether a lawyer or law firm may use a service mark such as “The Residential
      Real Estate Pro,” “The Bankruptcy Pro” or the “The Federal Taxation Pro,” to
      communicate the fact that the lawyer concentrates his or her practice in a
      particular field of law when the lawyer has not been certified as a specialist in
      the are of law identified by the service mark.

Op. 2020-12 2

   3) Whether a lawyer is permitted to identify an area of the law for which the
      lawyer has been certified as a specialist by a service mark such as “The
      Residential Real Estate Pro,” “The Bankruptcy Pro” or “The Federal Taxation
      Pro,” in advertising material or on firm letterhead.

APPLICABLE RULES: Prof.Cond.R. 7.1, 7.2, 7.4, 7.5

OPINION: The Rules of Professional Conduct do not expressly reference the use by a
lawyer or law firm of a service mark. A service mark is defined by R.C. §1329.54(B) as
“any word, name, symbol, device, or combination of any word, name, symbol, or device,
that is adopted and used by a person to identify and distinguish the services of that
person, including a unique service, from the services of other persons and to indicate the
source of the services, even if that source is unknown.” In contrast, and for purposes of
the subsequent analysis, R.C. §1329.01(A)(1) defines a “trade name” as a “name used in
business or trade to designate the business of the user and to which the user asserts a
right to exclusive use.” In short, trade names identify businesses, and service marks
identify the service or services a business provides. For example, a law firm decides to
adopt the trade name “Guardian Law, LLC” and later registers the service mark
“Protecting the Unprotected.”

Permissible Use of Service Mark

   The use of a properly registered service mark by a lawyer or law firm in lawyer

communications or advertising is generally permitted under the Rules of Professional
Conduct. Because a “service mark,” by statutory definition, is different from a “trade
name,” the Board advises that a service mark not be used as a substitution for a law firm
name ordinarily permitted under Prof.Cond.R. 7.5 (permitting a lawyer or law firm to
use a trade name or a name that includes the name or surname(s) of one or more lawyers
in the firm.) In the previous example, it would be improper for the law firm “Guardian
Law, LLC” to begin using the service mark “Protecting the Unprotected” in lieu of its
formal law firm name. The Board further advises that a lawyer’s or law firm’s use of
service mark must always be used in conjunction with the formal legal name of the law
firm in written or oral communications in order to properly identify the lawyer or law
firm making the communication. Prof.Cond.R. 7.2(c). For example, the name of the law
firm “Guardian Law, LLC” must appear in any oral or written communications whenever
the service mark “Protecting the Unprotected” is used.
Op. 2020-12 3

False, Misleading, or Nonverifiable Service Marks

   The advertising of a lawyer’s services is specifically permitted by Prof.Cond.R. 7.2.

Prof.Cond.R. 7.2 permits public dissemination of information by a lawyer that might
invite the attention of those seeking legal assistance. Id., cmt. [2]. Information that may
be publicly disseminated through advertising includes, but is not limited to a lawyer’s
name, firm name, address, email address, website, and the kinds of services the lawyer
will undertake. Id. A service mark is a type of information about the kinds of services a
lawyer may provide to a prospective client. Phrases such as “The Legal Edge” or “The
Legal Advantage” are examples of permissible service marks that could be registered
with the state as long as they comply with Prof.Cond,R. 7.1.

   When using a registered service mark, a lawyer must avoid communications about

the lawyer, the law firm, or his or her legal services, that are false, misleading, or
nonverifiable. Prof.Cond.R.7.1. False or misleading communications by lawyers through
advertising are not constitutionally protected. Zauderer v. Office of Disciplinary Counsel,
471 U.S. 626, 105 S.Ct. 2265 (1985). Because a service mark may contain one word, a
combination of words, a symbol, or device, it may be considered misleading if it contains
a material misrepresentation of fact or omits a fact necessary to make the service mark,
considered as a whole, not materially misleading. Prof.Cond.R. 7.1, cmt. [2]. A service
mark may also be considered misleading if a substantial likelihood exists that it will lead
a prospective client to formulate a specific conclusion about the lawyer or the lawyer’s
services for which there is no reasonable factual foundation. Id. For example, a service
mark that implies results, such as “We Never Lose” or “Insuring Your Victory,” would
be considered misleading because it could lead a reasonable person or a prospective client
to form an unjustified expectation that certain results can be obtained from the lawyer or
firm. Id., cmt.[3]. In addition, service marks that imply a connection to a governmental
agency, expediency, or a connection to an existing nonprofit or charitable organization,
are inherently false or misleading and implicate Prof.Cond.R. 7.1.

Communicating Lawyer Specialization Through a Service Mark

   A lawyer may not imply or state a specialization in an area of law unless the lawyer

is certified as a specialist in a field of law recognized by the Supreme Court Commission
on Certification of Attorneys as Specialists. Prof.Cond.R. 7.4. In Adv. Op. 2005-06, the
Op. 2020-12 4

Board concluded that it was improper under former DR- 2-105 for lawyers to use the term
“expert” in lawyer advertising, even if the lawyer seeking to use the term qualified under
the exception in the former rule to communicate a recognized specialization in an area of
the law. Analyzing the former rule, the Board concluded that lawyers certified as
specialists were “not authorized to make claims that they are ‘experts.’”

   Prof.Cond.R. 7.4(e) expressly permits a lawyer certified as a specialist to state that

he or she is a “specialist,” but is silent as to the use of other similar terms. Because
Prof.Cond.R. 7.4 substantially conforms to former DR 2-105, the Board sees no reason to
deviate from its prior holding concerning the use of the term “expert” and concludes that
the use of the term “pros” or “pro” by a lawyer or law firm through the use service mark
implies that the lawyer or firm specializes in an area of law and is prohibited by
Prof.Cond.R. 7.4(e). In addition, the use of the terms “pros” or “pro” may also be
misleading or nonverifiable. Prof.Cond.R. 7.1. Consequently, the Board concludes that
a lawyer or law firm may not use the term “pros” or “pro” in a service mark even in
instances where the lawyer has been certified as a specialist. A lawyer may, however,
register and use a service mark to convey that his or her practice consists in large part or
is limited to a field or fields of law, e.g., “The Home Buyer’s Lawyer” or “Columbus
Probate Lawyers.” See Prof.Cond.R. 7.4(a).

CONCLUSION: Registered service marks may be used by lawyers or law firms, but
cannot be used in the place of a law firm name otherwise permitted by Prof.Cond.R. 7.5.
Service marks constitute a form of communication or advertisement by a lawyer that
cannot be false, misleading, or nonverifiable. Service marks that imply results,
expediency, or a connection to a government agency, nonprofit, or charitable
organization are inherently misleading and implicate Prof.Cond.R. 7.1. A service mark
should only be used in conjunction with the formal legal name of a law firm. A lawyer
or law firm may not use a service mark that uses the terms “pros” or “pro,” even in
instances where a lawyer is certified as a specialist by the Supreme Court Commission on
Certification of Attorneys as Specialists. A lawyer or law firm may register and use a
service mark to convey a limitation or concentration in a particular field of law

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