Rutgers School of Law, OAL case ACPE286

97 N.J.L.J. 457
June 20, 1974

ADVISORY COMMITTEE ON PROFESSIONAL ETHICS

Appointed by the New Jersey Supreme Court

OPINION 286

P.A. - Withdrawing Partner
"Of Counsel"- "Patent Attorney"

    Attorney A formed a professional corporation with attorney B (a patent attorney). B has been offered a salaried position as house counsel to a corporation, but the terns of his employment would permit him to conduct a private practice. The several questions posed by the inquirer may be consolidated. It appears that B would be available for consultation to A, but that any private practice B might otherwise conduct would be from his corporate office or from his home. We are asked under these circumstances:
    1.    May the professional corporation continue to use the name "A and B, P.A., a Professional Corporation"?

    2.     May the professional corporation continue to use the same name, but designate B as being "of counsel"?

    3.     If the name must be changed and limited to A's name, may B's name appear on the office sign and stationery as being "of counsel"?

    At the outset, it must be noted that New Jersey Court Rule 1:21-1(A)(a)(2) requires professional corporations to comply with and be subject to all the rules governing the practice of law by attorneys. Accordingly, the applicable Disciplinary Rules must be observed, the act of incorporation notwithstanding.
    The pertinent part of DR 2-102(B) provides:

        A lawyer in private practice shall not practice under a trade name, a name that is milling as to the identity of the lawyer or lawyers practicing under such name, or a firm name continuing names other than those of one or more of the lawyers in the firm.

    New Jersey Supreme Court Advisory Committee on Professional Ethics, Opinion 105, 90 N.J.L.J. 53 (1967), states that a firm may not use a partnership name when in fact no partnership exists. The essence of the opinion is that attorneys may not hold themselves out as partners when the work of the attorneys is not done in the partnership form. The facts showed each attorney designated the other "of counsel" and in certain matters retained income separately, and individually paid his own overhead expenses. This included practicing from different offices. However, on "jointly handled matters" there was to be a division of the fees.
    None of the facts presented in this inquiry serve to distinguish it from the facts in Opinion 105, supra. The partnership will no longer exist and under the circumstances it would be a misrepresentation to indicate otherwise to the public.
    A collateral question arises concerning the firm name. R. 1:21-lA(c) states that: "The corporate name of the professional corporation shall contain only the full or last names of one or more of its shareholders,... ."
    The only exceptions to this rule and DR 2-102(B) are with respect to deceased or retired members of the firm Opinion 198 of the New Jersey Supreme Court's Advisory Committee on Professional Ethics, 94 N.J.L.J. 209 (1971), interprets "retired" to exclude those members of the bar who continue to practice law in New Jersey. It is apparent that "retired" means exactly what it says - a cessation of the active practice of law. Thus, if a member of a professional corporation continues to practice law outside the firm, the professional corporation may no longer use his name.
    The third issue presented concerns the retention of the attorney who is leaving the firm as "of counsel," and using his name with his patent specialty designation on A's letterhead and the shingle.
    A.B.A. Comm. on Professional Ethics, Informal Opinion 678 (1963) states in part that:
        It is the impression of this Committee that the term "of counsel,"shown on a firm's letterhead or shingle, is customarily used to indicate a former partner who is on a retirement or semi-retirement basis, or one who has retired from another partnership or the general private practice or from some public position, who remains or becomes available to the firm for consultation and advice, either generally or in a particular field.

    DR 2-102(A)(4) states in part that:

A lawyer may be designated "Of Counsel" on a letterhead if he has a continuing relationship with a lawyer or law firm, other than as a partner or associate.

As to the problem of the shingle, DR 2-102(A)(3) permits:

A sign on or near the door or on the window of the office or on the grounds in front of the building in which the office is located and in the building directory identifying the law.

In Drinker, Legal Ethics 138 (1953), it is stated that the propriety of a sign is subject to the test of whether:

    ... the sign is intended and calculated to enable persons looking for lawyer, already selected, to find him, or to attract the attention of persons who might be looking for a lawyer, although not for him.

    DR 2-102(A)(3) is subject to 2-105(1) which allows a lawyer admitted to practice before the United States Patent Office to use the designation Patent Attorney or Patent Lawyer.
    This Committee is reluctant to sanction measures which may be misleading to the public or which might border upon unethical advertising. While DR 2-102(A)(4) does permit the use of the term "of counsel" on the letterhead when an attorney has a continuing relationship with the law firm, the relationship here seems too tenuous. A.B.A. Comm. on Professional Ethics, Informal Opinion 678 (1963) notes that the term "of counsel" is customarily used to indicate a former partner who is on a retirement or semi-retirement basis, or one who has retired from another partnership or the general private practice or from some public position, and remains remains or becomes available to the firm for consultation and advice, either generally or in a particular field. In this instance, attorney B has not retired from private practice or public employment. In addition, it is clear that the vast majority of his legal activities beyond his duties as house counsel to the corporation will be accomplished through his own private practice rather than through A's practice. It is questionable whether his availability for consultation is materially different from his availability to other private attorneys who seek his expertise as a patent attorney.

In view of the foregoing, the Committee concludes that it would be improper upon these facts for the letterhead of A to indicate to the withdrawing partner is "of counsel" and that he is a "patent attorney."

* * *

This archive is a service of Rutgers University School of Law - Camden