[E-trademarks] ABA ethics opinion on case hypotheticals on listservs

Wed May 8 14:58:33 EDT 2024

On the other hand, all of those applications are public record.  Anyone
with a mind to do so could go into the search system and find that X is my
client, that my client sells Y, and that the ignorant examiner wrongfully
denied us because Z.  My saying any of that here doesn't really divulge
anything confidential.  Not that we couldn't somehow slip into mentioning
things that *are* confidential, but the nature of this particular practice
(in my mind anyway) makes all of this less of a concern.

Cheers,

Sam Castree, III

*Sam Castree Law, LLC*
*3421 W. Elm St.*
*McHenry, IL 60050*
*(815) 344-6300*

On Wed, May 8, 2024 at 1:43 PM Crane, Susan via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> Yes, but given that you can search the PTO for all of an attorney’s
> pending matters, it is frequently pretty easy to determine which
> application they are discussing.  I think we all need to be more mindful of
> that reality.
>
>
>
> *Susan L. Crane*
>
> *Group Vice President, Legal*
>
> *Intellectual Property, Brands & Marketing*
>
>
>
> Wyndham Hotels & Resorts, Inc.
>
> 22 Sylvan Way
>
> Parsippany, NJ 07054
>
> *O* (973) 753-6455
>
> *M* (973) 879-3420
>
> Susan.Crane at wyndham.com
>
>
>
>
>
>
>
> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
> Of *Emil Ali via E-trademarks
> *Sent:* Wednesday, May 8, 2024 2:19 PM
> *To:* For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc:* Emil Ali <emil at mccabeali.com>
> *Subject:* Re: [E-trademarks] ABA ethics opinion on case hypotheticals on
> listservs
>
>
>
> Thanks for sharing. To be clear the “digest” which is pasted below, does
> not really do it justice. The opinion doesn’t prohibit using listservs for
> client matter, but rather reminds us not to do anything that could violate
> our 1. 6 obligations.
>
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> Thanks for sharing. To be clear the “digest” which is pasted below, does
> not really do it justice. The opinion doesn’t prohibit using listservs for
> client matter, but rather reminds us not to do anything that could violate
> our 1.6 obligations.
>
>
>
> More appropriate would be this quote from page 5:
>
>
>
> *Not all inquiries to a listserv designed to elicit information helpful to
> a representation will disclose information relating to the representation.
> In some situations, because of the nature of the lawyer’s practice, the
> relevant client or the situation involved will never become known, and
> therefore the lawyer’s anonymized inquiry cannot be identified with a
> specific client or matter. In other cases, the question may be so abstract
> and broadly applicable that it cannot be associated with a particular
> client even if others know the inquiring lawyer’s clientele. In
> circumstances such as these, a lawyer may post general questions or
> hypotheticals because there is no reasonable possibility that any listserv
> member, or anyone else with whom the post may be shared, could identify the
> specific client or matter.*
>
>
>
> *Emil J. Ali*
>
> PARTNER
> *P:* 310.596.1234  |  *C:* 202.556.3645  |  *F:* 310.649.7890
> emil at mccabeali.com
>
> [image: McCabe & Ali, LLP]
>
> 13337 South Street, Suite 555, Cerritos, CA 90703
> O: 877.633.4097  | mccabeali.com
>
>
>
>
>
> *From: *E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf
> of Katherine Markert via E-trademarks <e-trademarks at oppedahl-lists.com>
> *Date: *Wednesday, May 8, 2024 at 11:14 AM
> *To: *e-trademarks at oppedahl-lists.com <e-trademarks at oppedahl-lists.com>
> *Cc: *Katherine Markert <km at markertcominolli.com>
> *Subject: *[E-trademarks] ABA ethics opinion on case hypotheticals on
> listservs
>
> I received the below from another listservs I am on and thought it worth
> sharing to this group.
>
>
>
> “The ABA's opinions are only advisory, but since the latest ethics opinion
> is directly on point re: sharing hypothetical case information in listservs
> figured it was worth sharing. Opinion 511
> <https://urldefense.com/v3/__https:/www.americanbar.org/content/dam/aba/administrative/professional_responsibility/ethics-opinions/aba-formal-opinion-511.pdf__;!!Nf401RNTQFE14GfWW3o!kBxh4z7UkjRsbDGrNiW1huleJIrSQ4RcTrUFIwNM7SideycWufwtVCVbHExnUtvma80VO9XdT-Ub_2_zM82B1jIuLvmM_T4$>
> was handed down today.
>
>
>
> Here's the conclusion:
>
>
>
> Rule 1.6 prohibits a lawyer from posting questions or comments relating to
> a representation to a listserv, even in hypothetical or abstract form,
> without the client’s informed consent if there is a reasonable likelihood
> that the lawyer’s questions or comments will disclose information relating
> to the representation that would allow a reader then or later to infer the
> identity of the lawyer’s client or the situation involved. A lawyer may,
> however, participate in listserv discussions such as those related to legal
> news, recent decisions, or changes in the law, without a client’s informed
> consent if the lawyer’s contributions will not disclose, or be reasonably
> likely to lead to the disclosure of, information relating to a client
> representation.”
>
>
>
>
>
> *Katie Markert*
>
> Partner
>
>
>
> *Markert & Cominolli PLLC*
>
> *Phone:* 585-504-2507
>
> *Email:* km at markertcominolli.com
>
> *Web:* www.markertcominolli.com
> <https://urldefense.com/v3/__http:/www.markertcominolli.com/__;!!Nf401RNTQFE14GfWW3o!kBxh4z7UkjRsbDGrNiW1huleJIrSQ4RcTrUFIwNM7SideycWufwtVCVbHExnUtvma80VO9XdT-Ub_2_zM82B1jIuZ6pIUnk$>
>
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