Intellectual Property Law

As evidence that the term ?lawyers? is generic, at least from a trademark perspective, the Trademark Trial and Appeal Board (?TTAB?) recently affirmed the Trademark Office?s refusal to register the mark LAWYERS.COM on the ground that the mark is generic and thus not eligible for registration. In a lengthy opinion, the TTAB rejected numerous arguments advanced by the owner of the mark, Reed Elsevier Properties Inc., as to why the LAWYERS.COM mark is not generic and agreed with the Examiner that the mark should not appear on either the Principal Register or the Supplemental Register.

The application seeking registration of LAWYERS.COM initially described the services covered by the mark as ?providing access to an online interactive database featuring information exchange in the fields of lawyers, law, legal news, and legal services.? After several preliminary rejections by the Examiner, amendments to the description ? including deletion of the reference to ?lawyers? ? requests to register the mark on the Supplemental Register and arguments made to the Examiner, the Examiner issued a final rejection. The applicant appealed to the TTAB.

In determining whether the LAWYERS.COM mark is generic, the TTAB identified the critical issue to be ?whether the record shows that members of the relevant public primarily use or understand the term sought to be registered to refer to the genus of goods or services in question.? The TTAB accepted the Examiner?s characterization of the genus of the services identified as ?providing information about lawyers and, in fact, is offered for the express purpose of assisting the individual in selecting a lawyer.? It also concluded that members of the relevant public would understand applicant?s web site as providing information about lawyers. Accordingly, since the TTAB found that members of the relevant public would understand the term LAWYERS.COM to refer to the genus of the services in question, it concluded that the mark is generic and affirmed the Examiner?s rejection of the mark for registration.

Assuming the applicant applies to the Federal Circuit, what do you think the court will do? Should the mark LAWYERS.COM be registered?

Today's Blogger:  Bob Sloss