Court finds lawyers too generic

Lawyers.com, that is

If at first you don't succeed, try, try again. That's what one company did. But one company's protracted attempt to obtain federal trademark registration for LAWYERS.COM seems to have come to an end. In the case of In re Reed Elsevier Properties, Inc., the Federal Circuit Court of Appeals has found that the mark is too generic to warrant protection.

The complaint

Reed Elsevier Properties, Inc. runs the www.lawyers.com Web site. The home page includes links to "find a lawyer," "ask a lawyer," "contact a lawyer" and "research legal information." The site also provides "legal news headlines," information about legal practice areas and community message boards.

Reed first used its mark in commerce in 1998, and soon thereafter filed a trademark application to register LAWYERS.COM for services identified as "providing access to an online interactive database featuring information exchange in the fields of law, lawyers, legal news and legal services." The trademark examiner refused registration because the mark was generic.

Reed amended its application to seek registration on the Supplemental Register, deleting the term "lawyers" from its recitation of services on its application. The supplemental register (the Patent and Trademark Office's secondary trademark register) allows for registration of certain marks that aren't eligible for registration on the principal register, but are capable of distinguishing an applicant's goods or services. The examiner issued a final refusal on the basis of genericness. Reed then took its claim to the Trademark Trial and Appeal Board (TTAB).

The TTAB found the genus of the services provided under LAWYERS.COM to be a Web site with a database of information covering the identified topics of law, legal news and legal services. A central intertwined element of the genus is information about lawyers and information from lawyers.

It concluded that the relevant public would understand LAWYERS.COM to denote a commercial Web site giving access to and information about lawyers. So the TTAB upheld the refusal. Reed appealed the denial to the Federal Circuit.

The pleading

The Federal Circuit explained that the genericness inquiry involves a two-part test:

1. What is the genus of goods or services at issue?
2. Is the term sought to be registered understood by the relevant public primarily to refer to that genus of goods or services?

Reed had two principal arguments before the court:

1. Services considered. Reed claimed the TTAB shouldn't have considered all of the services offered on the Web site, but only those on the amended recitation of services. Reed asserted that the services recited in its application (information concerning the law, legal news and legal services) were discrete from those excluded during prosecution (information concerning lawyers). But the court observed that Reed had argued before the TTAB that it sought to register the mark for an information exchange concerning legal services, not for selling lawyers or offering lawyers' services.

2. Inextricably intertwined. Reed also disputed the TTAB's conclusion that information from and about attorneys was "inextricably intertwined" with the site's services. But - for better or worse - lawyers are necessarily an integral part of the information exchange about legal services. Review of the site made clear that an integral, if not the paramount, aspect of information about legal services concerned identifying and helping people to select lawyers. The court cited the "search for lawyers" and "find a lawyer" functions on the pages providing information about legal services and practice areas. Further, the services related to legal news focused on lawyers, with stories about lawyers and their work, and articles such as "Do I really need a lawyer?" and "Selecting a lawyer."

Thus, contrary to Reed's argument, the information exchange about lawyers isn't discrete from the information exchange about the law, legal news and legal services. The court affirmed that they are indeed inextricably intertwined. So in the end, the court found both contentions without merit.

The verdict is in

Businesses that seek to obtain trademark registration for potentially generic domain names like LAWYERS.COM should consult an attorney to maximize their chances of success. In the end, having a catchy mark does no good if it doesn't qualify for trademark protection.