FAQs

The purpose of a trademark is to protect a recognizable symbol, design, phrase, or expression that is identified with products and services specifically related to your brand. A trademark identifies you as the source of those products and services and distinguishes you from others.

A service mark, ^SM, is used to protect a symbol, design, phrase, or expression that identifies and distinguishes you as the source of a service, rather than goods, as with a trademark, ^TM. Both marks can use the registration symbol, ®, after they are federally registered. Typically, the unique advertising campaigns associated with legal marketing will fall under the service mark category. However, this can be just semantics; the term “trademark” is used universally to refer to both service marks and trademarks.

You don’t need federal registration to establish your rights in a trademark. You can base your claim on common law rights from the actual use in commerce. However, with federal registration you enjoy:

• public notice of your claim;
• legal presumption of your ownership and exclusive rights nationwide;
• the ability to use the federal courts in defense of the mark;
• the right to use the registration symbol, ®;
• and more advantages.

The simple answer is: the person who owns and controls the symbol, design, phrase, or expression related to the nature of the goods and/or services it promotes. The trademark owner can be a person, company, or any other legal entity.

After identifying the applicant/owner, there are four basic requirements in getting started:

1. A clean search (no hits) for similar or conflicting marks
2. Active use of the proposed mark in commerce
3. First use/publication date identified
4. An example of current use

An option for filing without “current use in commerce” is available, but recommended only if strategy should dictate.

That’s simple: defending and enforcing your intellectual property rights. Trademark law states that if you repeatedly fail to defend your mark, you will lose your rights on that mark. Bottom line, prior to filing an application, defending your trademark should be considered as part of your overall strategy. If you are not prepared to defend your trademark, then I would recommend you forgo the application and save both time and money. A defenseless trademark has no value.

First, it’s important to remember that the United States Patent and Trademark Office (USPTO) is the official agency for registration. They do not conduct policing actions or assist you with enforcing your trademark rights. That said, the basic premise of a trademark complaint revolves around confusion. Are two or more marks likely to cause confusion in a public forum, so that consumers would mistakenly believe goods or services come from the same source? It’s likely there will be little or no consensus between parties on this question, which can lead to the beginnings of a potential infringement claim.

Some marks are easier to protect and defend than others. A strong mark—one that lends itself to proper protection under trademark law—possesses unique and distinctive qualities. These are sometimes called “fanciful” or “arbitrary” marks.

Fanciful marks involve selecting creative or unusual names, often using words that are created and readily not found in the dictionary, such as “Google.” Arbitrary marks connect names or words that are not usually connected, like Apple for computers. Generic and descriptive words are the most difficult to register and protect.

While there’s no set answer, it typically takes 12-16 months to complete the trademark process, from application to registration. The length of time depends on the mark selected, the basis and support given for registration, and the thoroughness and correctness of the application. If the application is not completed and handled properly, delays while responding to USPTO requests will likely follow.

No. However, navigating the federal trademark registration system efficiently and effectively can be daunting. With or without a lawyer, applicants must follow all rules and requirements of the trademark statutes in seeking registration. But, that’s just the beginning. With a lawyer you get guidance and support before, during, and after registration. From the initial strategy, to surveillance and policing, to stopping potential infringers, having a lawyer on your side for the entire journey can help make your intellectual assets more valuable, not to mention save you from costly legal problems in the future.

In most states, advertising rules are typically found in Section 7 of the “Rules of Professional Conduct,” with the exception of a few states like California. Among ethics lawyers, advertising rules are often affectionately called “The Magic 7s”. They can be found very quickly on websites such as the American Bar Association, FindLaw, and other legal industry informational sites.

Unfortunately, there are no federal bar rules that cover all 50 states. If there were, it would make advertising nationally a lot easier. While national in nature, the American Bar Association’s “Model Rules for Professional Conduct” serve as inspiration for states when developing their own advertising rules, but they have no jurisdiction.

Since every state regulates lawyer advertising independently and differently, you need someone familiar with all jurisdictions to guide you through a maze of contradictions. It can be difficult to achieve 100 percent compliance across all jurisdictions, but we can help you position yourself on a much safer tract.

If you want to advertise your firm nationally but you’re not sure how to satisfy ethical guidelines, give James Bewley Law a call at (615) 296-1066 or fill out a free contact request form. We can help you bring your creative advertising ideas to a national audience while maintaining compliance with your state’s advertising rules.

This has probably been the most frequently asked question we’ve received over the past couple years. Unfortunately, there is no absolute answer; it depends. There may be ways you can participate ethically in lead generation if you avoid the potential pitfalls.

Complying with ethical guidelines for lead generation takes due diligence on your part. You should examine your state’s bar rules on the subject (if there are any). Many jurisdictions are slow to adopt rules that keep up with the ever-changing landscape of legal marketing. If that’s the case in your state, beware of what’s not said in the rules when it comes to buying leads. Without stated guidance, many times compliance is based on an open-ended interpretation.

You should investigate how the company generates its leads. When considering hiring a lead generation company, ask them:

• How do they charge for leads?
• Where do they get their leads?
• How do they get their leads?
• Are they involved in qualifying their leads?
• Do they comply with your state’s rules on attorney advertising?
• Do they have legal opinions for all jurisdictions based on their model, and will they share those with you?

Watch out for any company that uses the words “referral service,” unless they are actually a bar-approved service. Avoid those that look like an endorsement or recommendation of your services. The most conventional route is to choose a company based on a fixed advertising fee model, which eliminates any suspicion of fee-splitting issues.

No. Many times this is where unforeseen traps lay when it comes to compliance issues. Disclaimers can be divided into two categories: “mandatory” and “content.” Mandatory disclaimers include what is absolutely required for compliance for all ads in a particular jurisdiction. Content disclaimers cover items it would be wise to include based on the copy or subject of an ad.

For example, it may not be mandatory to include “prior results do not guarantee similar outcomes” in your disclaimer, but without it, the content of your ad can teeter on the verge of promising results, or at the very least, may be interpreted as misleading.

The moral of the story is “mandatory” means just that—mandatory for compliance—but you shouldn’t forget all the nuances associated with the labels of “misrepresented” and “misleading” communication usually found in the beginning of each state’s set of advertising rules. While ambiguous in nature, without proper disclaimer language, content can be scrutinized and labeled misleading, and compliance issues may soon follow.

Law firms sometimes refuse to use certain disclaimers for fear it will drive away potential clients. To that, within limits, Jimmy says, “bull chips.” No doubt there is a point where enough is enough when it comes to legal disclaimers, especially when they come and go quickly in 30 seconds.

At James Bewley Law, we encourage clients to be aggressive with their ads—not aggressive in avoiding disclaimers because they’re afraid of harming their results. Jimmy believes most people are desensitized when it comes to disclaimers, in the legal marketing arena and other industries as well. The greater concern should be your compliance to your state’s advertising rules. We support your desire to be aggressive with advertising, but maintain a “better safe than sorry” mentality when it comes to using disclaimer language.

Actually, there are two. One is a rule proposed a couple years ago—the state to go unmentioned—that as of yet has not been adopted. The proposal prohibits television ads from containing video— they are only allowed to print words on the screen that are spoken by an announcer, who must deliver the message in a “non-dramatic” tone with no music. And oh, by the way, the announcer or voice talent cannot be the actual lawyer the advertisement promotes. We’re not sure what benefit or protective measure for the public was being attempted, but surely someone had an idea.

Another strange rule is a recent opinion from Florida dealing with a social media platform. This particular platform is more business-focused (you can guess which one it is) and offers a person or firm two profile categories related to their professional experience. One category is labeled “Top Skills and Expertise” and the other “Specialties.” The opinion says that practice area language added under “Top Skills and Expertise” does not violate the rule concerning disclaiming certifications, but posting the same under the category of “Specialties,” without having a specialty, does. Perhaps they are saying there could be a perceived difference between “expertise” versus “specialties” by the general public, but Jimmy feels this ruling is “clear as mud.”

Not in all jurisdictions. Rules governing websites and social media vary from state to state. Bars tend to adapt slowly to changing trends and technology, so some states may not mention social media, websites, or blogs in their rules. Under the “better safe than sorry” theory mentioned above, you should apply and follow advertising rules if the platform falls within a conservative interpretation of what can be considered advertising. If your state’s rules don’t mention these platforms directly, you should apply the broadcast rules and modify as you deem necessary.

If your state classifies websites or similar online presences as “information upon request,” consider it a gift. In those instances, your Web presence is not classified as advertising at all. The general rule for social media is “if it’s truly social, it’s not advertising,” and the advertising rules do not apply. That line can be blurry. If the content concerns any interpretation that would lead someone to believe it’s a message for professional employment by the lawyer or for the lawyer, it’s likely to be considered advertising.

It depends on the submission procedures, if any, for your particular state. Approval and submission processes vary by jurisdiction, but often follow one of three orders:

1. You submit your ad for approval at the same time it goes live.
2. You submit your ad for approval within a certain number of days after it goes live.
3. You submit your ad before it goes live and receive an opinion from the bar.

Regardless of the format and time frame for submission, use the process you have been given to your advantage. Typically, in jurisdictions that offer simultaneous submission, or allow you to submit your ad for approval within a certain number of days after its launch, you should go for it and skip pre-approval, unless you have serious doubts about the compliance of your ad. You will know soon enough whether compliance issues exist and you can adapt to whatever needs to be changed.

Keep in mind that in jurisdictions where the bar’s opinion is required (or is the safe bet), that opinion will not help you avoid complaints. It will, however, give you the backing of the bar if complaints arise and they have given you a favorable opinion.

Yes. In the 1977 court decision Bates v. State Bar of Arizona, lawyer advertising was deemed a form of commercial speech and entitled to various degrees of First Amendment protection. Prior to this decision, to say there were restraints on legal advertising would be putting it mildly. It was more like an all-out ban justified mainly as a restriction to save the integrity of the profession. In our opinion, that’s a weak reason for suppressing information that may prove beneficial to consumers and the overall public good.

While lawyers enjoy many advertising freedoms, there are still many restrictions that must be followed. Avoid anything that could be interpreted as “false”, “deceptive” or “misleading.” Sounds simple, but sometimes in the quest to be aggressive in a competitive marketplace, firms cross the line—or at least come dangerously close. Use the tools available and use them to their fullest potential—just don’t misinterpret protected speech as carte blanche to say anything you would like.

It would be easy to name Florida, Louisiana, and Texas as stand-outs for the toughest advertising rules:

• Florida has been actively pursuing and imposing restrictions for more than 20 years, and they’re good at it.
• Louisiana is the new kid on the block, following Florida’s toughest restrictions and adding their own nuances.
• Texas has a massive amount of content that covers the most esoteric situations with very restrictive parameters.

There are a few more you could add to the list, but in some ways it’s not a fair assessment. Do they have strict rules? Yes. Are they active and aggressive in enforcing the rules? Yes. Is it difficult to maneuver around potential traps and pitfalls? Not necessarily.

Tough jurisdictions like these are not the most dangerous to deal with. When bars are active and stay on top of changes in media and technology, they practically give you a road map to compliance. (That doesn’t mean you’ll like the restrictions, but at least you’ll know how to navigate safely alongside or around them.) States that lag behind on technology insight and changes, that leave old, ambiguous rules in place without clear direction, or that are passive and lack consistent enforcement can be the toughest jurisdictions in which to market legal services safely.