9
Jan/03

Don't Ever Do This


A lawfirm may not advise a client on its rights vis-a-vis another client (without the second client’s waiver).  When evaluating trademark search report, a lawyer should not evaluate marks owned by other clients of the firm (although given that these reports contains several hundred hits, it is logistically difficult for a lawyer, even one with a fairly good computerized conflict checking system, to not inadvertently evaluate a mark owned by a client). 

One problem this presents is that the lawyer feels that he/she is doing the client a disservice by not commenting on a potentially dangerous hit.  He/she ought to say in the opinion letter something along the lines of “Ref. 43 is owned by another client and we cannot evaluate whether or nor there is a potential likelihood of confusion .  .”

However,  if Ref. 43 is a serious show-stoper, the lawyer might worry about the client not bothering to get a second opinion and walking into a mine-field.  You could call up the client and say “You ought to get a second opinion on Ref. 43, I mean you really really ought to get a second opinion and I’m just going to put this opinion letter on the side until you do”

The posters on the INTA listserv were having fun agonzing over the metaphysical parade of horribles arising from such cute practices.  HOWEVER I don’t think anyone on the list was ready for one admission today:

I also caution against discussing the SearchClient’s interest with a fellow attorney whose is primarily responsible and/or “possessive” of PriorClient, even within the same firm. I had the unpleasant experience of mentioning a possible conflict to such an attorney, only to watch him immediately call “his” client and advise them of the SearchClient’s interest and use (both clients were existing clients with related, but not identical businesses and had different contact attorneys). This call was before a full analysis could be done of the search report and without a chance to consider or discuss the conflict of interest.

My jaw figuratively dropped when I read this.  If you find yourself in the position of attorney one and this happens, advise the management of your firm and retain personal outside counsel.  If you find yourself in the position of attorney two and you thought it was ok to disclose the confidential information of one of one of your firm’s clients to another of your clients, go to your firm’s library and read the whole book on professional responsibility, write the word “fiduciary duty” 100 times, and retain outside counsel.  If you are hiring partner when something like this happens, review your hiring practices (and tell your firm that it should retain outside counsel).

Then there’s the issue of admitting this on the INTA listserv.

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