The Truth Be Told, “Lawyers” are GenericApril 13, 2007

The truth is finally out — "Lawyers" are generic. Really, "" is generic. In a case before the Federal Circuit, the Court affirmed the holding of the Trademark Trial and Appeal Board (TTAB) which denied registration of the mark LAWYERS.COM for providing an online interactive database featuring information exchange in the fields of law, legal news, and legal services as a generic mark.

More details after the jump.

Reed Elsevier Properties Inc. ("Reed") appealed the decision of the TTAB denying registration of its LAWYERS.COM mark. In its trademark application, Reed described the services offered under the mark as "providing access to an online interactive database featuring information exchange in the fields of law, lawyers, legal news, and legal services" in Class 42. Reed first used its mark in commerce on July 30, 1998, and filed an application soon thereafter. After evaluating Reed's evidence that its mark had acquired distinctiveness, the examining attorney refused registration on the ground that LAWYERS.COM was generic and unregistrable. Reed responded by deleting the word "lawyer" from its application and sought registration on the supplemental registration. The examining attorney again issued a refusal on the same ground. The TTAB affirmed the rejection.

In affirming the decision of the TTAB, the Court used the two-part test of H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987 (Fed. Cir. 1986) to determine whether the mark was generic. This genericness inquiry is, first, what is the genus of goods or services at issue and, second, is the term sought to be registered understood by the relevant public primarily to refer to that genus of goods or services?

The Federal Circuit found that the TTAB's genus determination was proper, as well as the TTAB's determination that the public would readily identify the mark as a site providing access to and information about lawyers. Based on a review of the website, the services were defined as:

a web site with a database of information covering the identified topics of law, legal news and legal services and that a central and inextricably intertwined element of that genus is information about lawyers and information from lawyers.

This was supported by substantial evidence based on a review of the website, as the site clearly offers links to "find a lawyer" or "search for lawyers" in several places. As stated by the court, "as Reed and Martindale-Hubbard [sic, Hubbell] should know, for better or worse, lawyers are necessarily an integral part of the information exchange about legal services."

Reed did not dispute the TTAB's finding that the public "would readily understand the term to identify a commercial web site providing access to and information about lawyers," but instead argued that the claimed services, information about the law, legal news, and legal services, was different from information about lawyers and how to locate them. For the same reasons already described, the court rejected this position as well. In the end, the court affirmed the finding that was generic, and registration was refused.

To read the full opinion in In re Reed Elsevier Properties Inc., click here.

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