ETHICS OPINION 418: trade-marks in foreign jurisdictions

NUMBER 418 DECEMBER 1952

Question. An attorney desires to take an active part in a company which will register trade-marks in foreign jurisdictions. The need for such a company is said to be manifest from the fact that if a trade-mark is not registered in Mexico, then any Mexican national can use the name for a similar product in that country. Presumably, the New York enterprise would urge businessmen to protect their rights by properly filing in foreign jurisdictions, and the company would undertake the ministerial task of filing the proper papers in the proper public offices.

Is there anything unethical about an attorney’s active association in the business end of such an enterprise assuming; that it would take one-tenth of his time; that it would take fifty percent of his time?

Answer. The functions of the company with which the lawyer intends to become associated are very close to the practice of the law and would constitute the practice of the law if the services were performed by a lawyer.

We disapprove of the association of the attorney with the enterprise for the reasons set forth in Opinion 57 of the Ethics Committee of the American Bar Association from which the following is quoted:

It is not necessarily improper for an attorney to engage in a business.

Some businesses in which laymen engage are so closely associated with the practice of law that their solicitation of business may readily become a means of indirect solicitation of business for any lawyer that is associated with them. (Opinions 31 and 35.)

 

See also Opinion 322 of the Committee on Professional Ethics of the New York County Lawyers’ Association.

 

The percentage of the lawyer s time spent with the company is immaterial.