Throughout my career of over ten years experience in trademark law and advising entrepreneurs, tech startups, and small businesses on intellectual property protection, I have seen many California lawyers who advertise themselves as a Trademark Specialist.
Brand owners looking for an experienced California Trademark Attorney should be wary of ads from law firms in California who represented themselves as a trademark specialist. Under Rule 1-400 of the California Rules of Professional Conduct, no attorney in California may advertise that he or she is a “certified specialist” unless the member holds a current certificate as a specialist issued by the Board of Legal Specialization.
The California Board of Legal Specialization does not issue a certificate for trademark specialists or other areas of intellectual property law, such as patent law, copyright law, and entertainment law.
Some areas of law where California does permit lawyers to call themselves “specialists” include, for example, Admiralty and Maritime Law, Bankruptcy Law, and Family Law, but not intellectual property law, trademark specialist certification, copyright law, or patent law. As such, a lawyer representing himself as a “trademark specialist” or “intellectual property specialist” is not necessarily more qualified than an attorney who represents herself as a “trademark expert”, or who’s “core expertise” is in intellectual property protection law for technology startups.
Technology startups seeking competent counsel in the fields of trademark law, copyright protection, patent filings, and confidentiality agreements, have many choices when hiring an expert law firm in these areas of practice. Entrepreneurs are advised to interview several attorneys or law firms, ask about their legal fees, field of expertise, and overall vet different attorneys and select the lawyer who best fits their legal needs and company principles. To prepare, read blogs such as 7 Questions to Ask Before Hiring a Business or Intellectual Property Lawyer. Ultimately, one factor that should not weigh in the businesses decision of whether or not to hire a certain trademark or technology startup attorney in California is if they call themselves a specialist. In fact, this should be a red flag given the Rules of Professional Conduct that govern attorneys in California.
Author: David N. Sharifi, Esq. is a Los Angeles based intellectual property attorney and technology startup consultant with focuses in entertainment law, emerging technologies, trademark protection, and “the internet of things”. David was recognized as one of the Top 30 Most Influential Attorneys in Digital Media and E-Commerce Law by the Los Angeles Business Journal in 2014. Office: Ph: 310-751-0181; david@latml.com.
Disclaimer: The content above is a discussion of legal issues and general information; it does not constitute legal advice and should not be used as such without seeking professional legal counsel. Reading the content above does not create an attorney-client relationship. All trademarks are the property of L.A. Tech & Media Law Firm or their respective owners. Copyright 2018. All rights reserved.
