Should Trademark Attorneys Use NameWarden to Find Clients?

For some reason, I’ve not seen much yet written about Namewarden, a docketing, defense, and new client finder  service for trademark lawyers, as described in founder Chris Gatewood’s bio in this post . According to the website, Namewarden’s client finder service is a monthly subscription service that provides current lists of all trademark applicants who have an office action, opposition, or required ITU filing but no listed attorney. ClientFinder provides you with full contact details for these applicants, as well as their application data for a cost of $75/month for one state up to $175/month for full 50-state coverage.

Sounds intriguing – but how does NameWarden stand up from an ethics perspective? Glad you asked – because there’s a rule for that, specifically ABA Model Rule 7.3 governing solicitation of clients. Rule 7.3(b) provides in relevant part that:

(b)  A lawyer shall not solicit professional employment by written, recorded or electronic communication or by in‑person, telephone or real-time electronic contact even when not otherwise prohibited by paragraph (a), if:

(1)  the target of the solicitation has made known to the lawyer a desire not to be solicited by the lawyer; or

(2)  the solicitation involves coercion, duress or harassment.

In addition, under Rule 7.3(b), the communication must clearly demote that it is advertising material – either on an outside envelope if by mail, or at the beginning and end of an electronic communication. The US PTO Ethics Rules  adhere to the same requirement; however, check the rules of your individual jurisdiction to determine how your state deals with solicitation of prospective clients.

So, the short answer is yes, lawyers can ethically use Namewarden’s client finder service to contact prospective clients, provided that communications are by email or snail mail (not phone, and probably not text through bars differ on whether that’s “real time” communication) and label the communications as advertising.

Bar rules aren’t the only ones that govern here. For example, a trademark attorney sending mass, unsolicited emails to prospective clients must comply with the CAN-SPAM Act which as summarized by the FTC requires business to identify the message as an ad, disclose the business’ physical location and provide a clear opt-out mechanism.

Apparently, NameWarden is concerned about the prospect of users abusing the lists that it provides. Thus, the site states that:

If you receive contact information of others through our Service, you agree to abide by all legal, regulatory, and ethical constraints governing your use of such information, including anti-spam restrictions, ethical rules applicable to your profession, and other laws, rules, and regulations. You agree that any actual or alleged failure to abide by these requirements or guidelines will not be grounds for any claim or liability by you or by any third party against us. You further agree to defend, indemnify, and hold us harmless against any claim or action relating to your use of contact information gained through the Service.

While Namewarden’s ClientFinder service, if used properly, won’t violate ethics rules, does the service make sense from a business perspective? (As I’ve written before , just because a marketing service is ethical doesn’t mean that it’s effective). I know that in the criminal defense context, many law firms procure court lists of new cases and have some success in offering representation to clients in DUI or other similar matters. To some extent, that makes sense – after all, no one asks to be arrested and as such, are unlikely to be represented.

However, I’m not so sure that’s true when it comes to trademark registration. Trademark registration is something that’s deliberative – a company that has a mark worth protecting is likely to invest in a lawyer from the outset. By contrast, when individuals who file for a trademark are unrepresented, they’ve usually made a conscious decision from the start not to hire an attorney – either because the business isn’t sufficiently mature to warrant the cost or because they simply don’t have the money.

To be sure, there’s probably a narrow category of unrepresented registrants who initiated the trademark process, received an action letter and suddenly realized that the process is more complex than anticipated and decide to retain an attorney.  However, I don’t know whether that scenario occurs with sufficient frequency to make client finder worthwhile (any trademark attorneys willing to chime in here?).

On the other side of the coin, at $75/month for a single state subscription, ClientFinder is cheap – far less costly than nearly any other non-DIY marketing out there. Thus, it couldn’t hurt to give the service a try. In addition, you don’t have to use ClientFinder as a tool to directly solicit clients. A corporate attorney could use ClientFinder to send an informational newsletter to educate unrepresented registrants on general business matters, or to invite them to a webinar on ways to leverage intellectual property for profit. By providing unrepresented applicants with valuable content, they may decide to hire you down the line if their business grows.

If anyone out there is using ClientFinder, please chime in – I’d love to hear your opinion of the service.