Can a New York lawyer in a trademark cancellation case share a client's online petition and post a survey on social media without violating the trial-publicity rule?

Plain-English summary

A lawyer defended a client in a cancellation proceeding before the U.S. Trademark Trial and Appeal Board (TTAB). The client created an online petition framing the dispute as a family business versus a big corporation and asking readers to sign to show there is no likelihood of confusion between the marks. The lawyer asked whether he may distribute a link to the petition on Facebook and Twitter (merely noting it exists) and whether he may post a survey asking readers whether two marks are confusingly similar. The lawyer did not say how he intended to use the petition or survey results.

The opinion analyzes Rule 3.6(a), which bars a lawyer in a matter from making an extrajudicial statement the lawyer knows or reasonably should know will be publicly disseminated and will have a substantial likelihood of materially prejudicing the adjudication. The first component is met: a TTAB cancellation is an administrative adjudicative "matter." On the second, distributing the link makes the petition's statements the lawyer's own, even though the client created it; the survey may or may not contain "statements" depending on whether it uses neutral or leading questions. On the third, the rule's presumptive lists in Rule 3.6(b) and (c) give no answer here, because Rule 3.6(b)'s presumptive prohibitions apply only to jury-triable or incarceration-risk matters, and a TTAB proceeding is neither.

The opinion then weighs the open-ended factors bearing on likely prejudice: the nature of the proceeding (nonjury proceedings before specialized judges are far less susceptible to extrajudicial speech, citing Comment [6] and the Restatement), the content of the statements, the likelihood the statements reach the factfinder, timing, motive, and whether the information is otherwise public. It concludes the dominant factor is that the TTAB is an administrative tribunal of specialized trademark judges, which counts heavily in favor of permitting the communications. The opinion cautions there could be a different answer if the lawyer knew the client sought to use the petition to pressure the judges or had other information indicating likely prejudice, in which case the lawyer should not participate. It also flags that if the lawyer intends to use the survey as evidence, separate questions about admissibility arise, and notes there may be legal constraints (such as TTAB rules) beyond the committee's scope.

In practice

The opinion holds that, under the New York rules as they stood at the time, a lawyer may share a client's online petition and post a survey on social media in a nonjury administrative proceeding unless there is a substantial likelihood of materially prejudicing the adjudication. Per the opinion, the nonjury, specialized nature of the TTAB weighs heavily against prejudice, but the lawyer must not participate if he knows the client aims to pressure the tribunal or has other facts indicating likely prejudice. The opinion notes that distributing the client's petition makes its statements the lawyer's own, and that the lawyer should review TTAB rules and other law before acting.

Common questions

Q: Can a lawyer share a client's case-related online petition on social media?

A: The opinion concludes yes, unless the statements have a substantial likelihood of materially prejudicing the proceeding; distributing the link makes the petition's statements the lawyer's own under Rule 3.6.

Q: Does the rule's presumption of prejudice apply to a TTAB case?

A: No. The opinion explains that Rule 3.6(b)'s presumptive prohibitions apply only to jury-triable or incarceration-risk matters, and a trademark cancellation is neither, so no presumption resolves the question.

Q: Why does the nonjury nature of the TTAB matter so much?

A: Per the opinion and Comment [6] to Rule 3.6, specialized administrative judges are expected to be far less affected by extrajudicial speech than juries, so prejudice is unlikely except in extreme situations.

Q: When should the lawyer refrain?

A: The opinion says the lawyer should not participate if he knows the client is trying to use the petition to pressure the trademark judges, or has other information indicating a substantial likelihood of material prejudice.

Background and rules framework

The opinion interprets New York Rule 3.6 (trial publicity, the analog of Model Rule 3.6), including the presumptive categories in Rule 3.6(b) and (c) and the open-ended factors discussed in Comment [6]. It applies Rule 1.0(l)'s definition of "matter" to confirm an administrative proceeding is covered.

Citations and references

Rules of Professional Conduct:

• MR 3.6 / NY Rule 3.6(a)-(c) (trial publicity; substantial likelihood of material prejudice; Comment [6])
• NY Rule 1.0(l) (definition of "matter" includes administrative proceedings)

Cases:

• Gentile v. State Bar of Nevada, 501 U.S. 1030 (1991), upholding the "substantial likelihood of material prejudice" standard; relevance of timing, motive, and public availability
• Hirschkop v. Snead, 594 F.2d 356 (4th Cir. 1979), overbroad restriction on lawyer speech before administrative tribunals

See also

• NY State Bar Op. 982: obligation to disclose potential fraud on a tribunal
• NY State Bar Op. 1009: press releases and tweets in shareholder litigation

Source

• Landing page: https://nysba.org/ethics-opinion-977/