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Find a Lawyer Ruled Too Generic to Trademark

A company seeking to register the "" mark received some bad news out of the Federal Circuit recently. The court upheld the Patent and Trademark Office's determination that the mark was too generic in relation to the kinds of services offered on the website, and affirmed the PTO's denial of the registration.

Reed Elsevier Properties, Inc. operates the website through its Martindale-Hubbell division. The site offers many kinds of legal information, including tools to find or contact lawyers. The site also contains legal news and message boards for discussing legal questions.

PTO's Rejection and Reasoning

The PTO, examining Reed Elsevier's initial application, rejected Reed's proffered evidence purporting to show that the "" name had acquired distinctiveness. The examining attorney then denied registration because the term was generic. The company renewed its applications, this time deleting any reference to the word "lawyer," or to any service for researching or locating a lawyer, but to no avail. The examining attorney again rejected the application on the grounds that the mark was generic, and the PTO's Trademark Trial and Appeal Board affirmed the attorney's refusal.

The Board determined that the genus of the services Reed provided was a legal information website, and further held that the offer of information from and about lawyers was an "inextricably intertwined element" of that service, despite Reed's attempts to remove that aspect of the site from its application. Because the public would understand the term "" to refer to a website with information from and about lawyers, the Board ruled, the genus of services that Reed wished to associate with its mark was too congruent to the public understanding, therefore rendering the mark generic.

The Federal Circuit Weighs In

Before the Federal Circuit, Reed argued that the Board erred by considering all of the services offered on the site, instead of concentrating on the services identified in its second application, which eliminated all reference to lawyers. Reed also maintained that the Board's supposition that information from and about lawyers was "inextricable intertwined" with the services on the website was not supported by substantial evidence.

The court ruled that, contrary to Reed's assertions, the Board properly examined the site for context, and did not incorporate non-claimed services into its genus determination. The court found, based on viewing the site, that the paramount aspect of the claimed "information exchange about legal services" concerned finding and selecting lawyers. The same held true for the claim of information exchange about the law and legal news since, according to the court, lawyers will almost certainly be a focus of any such exchange.

The court also noted that the Board examined other websites with "lawyer" or "lawyers" in the title to determine what services the relevant public would understand a website functioning under the "" mark to offer. Under previous decisions, these websites were competent sources and provided substantial evidence in support of the Board's conclusions.

In summation, the court reiterated that information about lawyers and information about the law, legal news and legal services are not discrete elements in the context of the site, despite Reed's best efforts to separate them in its application. Since the services offered on the site and the public's expectations of what kinds of services a site under the "" mark would offer were nearly identical, the mark's registration failed.

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