Oregon State Bar Bulletin — APRIL 2008
Legal Practice Tips
Marks for Law Firms
Trademarks, That is
By Leonard D. DuBoff and Christy O. King

The vast majority of attorneys and the clients they represent have at least one thing in common; namely, they conduct their businesses using names other than their own. Whereas many business people have traditionally invested a great deal of time, money and energy in branding their businesses, attorneys have only recently begun engaging in promotions such as these.

In fact, it was not until the 1970s that attorneys were ethically permitted to advertise,1 and even today some jurisdictions continue to impose significant restrictions on lawyers’ promotional activities.2

The core of branding is the process of protecting the name under which a business is conducted and identified. The law provides a vehicle for obtaining this protection through the trademark statutes. The federal trademark statute, known as the Lanham Act, provides protection for any name, symbol, logo or combination thereof when used in commerce to identify a product or service. It is therefore apparent that a law firm’s name should be a protectable federal trademark — if the other requirements of the trademark law are present.

To have a protectable mark, a firm must adopt a name that does not sound like, look like or cause market confusion with the name of any other law firm or related business. Thus, when the law firm Suisman, Shapiro, Wool, Brennan, Gray & Greenberg, PC (generally known as Suisman Shapiro), was presented with a situation where two attorneys (descendants of the founders) left the firm and created a firm called Suisman, Shapiro, the court found that there was a likelihood of confusion and enjoined the use of the Suisman, Shapiro name by the new firm.3 The court pointed out that a firm name does not identify individual persons but, rather, identifies the law firm as a business entity and held that the plaintiff was able to prove that its name had developed secondary meaning in the minds of consumers in the local market. This is accomplished by advertising and promotional activities, as well as other public recognition and the like.

A similar situation occurred when the Midwest firm Foley & Lardner opened an office in Boston, since the Foley Hoag firm had already been established in Boston for more than 60 years. Foley Hoag registered its service mark "Foley Hoag" with the Patent and Trademark Office in 2002. Foley & Lardner had begun calling itself "Foley" about three years before the move, but when it attempted to register "Foley," the Patent and Trademark Office denied the registration as likely to cause confusion with Foley Hoag. In fact, since both firms identified themselves as "Foley," there was a great deal of actual confusion. Letters and faxes intended for one of the firms were addressed to the other. Even the Post Office could not tell the two firms apart and misdelivered their mail.

In October 2005, Foley Hoag filed suit in the U.S. District Court for the District of Massachusetts. The firms settled the dispute in August 2007, and while Foley & Lardner denied that there was any likelihood of confusion, it did agree not to use "Foley" without "Lardner" in close proximity and prominence, as well as to avoid referring to itself by the single word "Foley" in written or oral communications, unless it was used "in a context reasonably understood to be referring to Foley & Lardner." Foley & Lardner was allowed to retain the Foley.com URL.

A different result was reached when Milbank Tweed Hadley & McCloy (commonly known as "Milbank"), another prominent national law firm, brought suit for trademark infringement against a California real estate service company named Milbank Holding Corp. The court ruled in favor of the defendant, noting that the "Milbank" name was not a registered trademark. It found that the law firm was unable to prove that its name had achieved secondary meaning. In other words, members of the public did not associate the Milbank name with the national law firm. The court held that there was no likelihood of confusion, despite the fact that the law firm had a significant real estate law practice.4

The problem of secondary meaning was also significant in a case involving a prominent intellectual property lawyer named M. Kelly Tillery. Tillery filed suit in the U.S. District Court for the District of Pennsylvania against his former law firm for the firm’s use of his name.

The partnership agreement between Tillery and his firm provided that the firm could continue using Tillery’s name unless the use violated the code of professional responsibility, and Tillery would, therefore, have to prove that on trial in order to show that the firm breached the partnership agreement. The firm did change its letterhead, stationery and the like, leaving only the use of the domain name LeonardTillery.com and related email addresses to dispute. However, at the time of the lawsuit, the firm had created a new URL and was in the process of transitioning over to it. All e-mails were sent from the new domain, though the firm continued to receive e-mails at the old addresses. Also, the URL directed users to the new domain. After the suit was filed, the firm created a page with a message alerting users that Tillery was no longer affiliated with the firm before redirecting to the new site.

Tillery’s attempt to obtain a preliminary injunction was unsuccessful since the court felt that he would not likely succeed on the merits on any of the claims he alleged. Judge Shapiro explained that trademarks may be arbitrary (or fanciful), suggestive, descriptive or generic. Individual names are descriptive and, therefore, protectable only if they achieve secondary meaning. Tillery did not use his name in connection with any business or product, except as part of the name of the law firms with which he had been affiliated. Tillery did not promote his surname in connection with his legal practice; rather, he, like most people, used his first name with his last name, and the only promotion was in connection with his firm name. In fact, he had brought in only a handful of new clients in the last 16 months with the firm, and they were referred to the firm rather than to him individually.

In another case involving a law firm’s URL, the firm Thelan Reid Brown Raysman & Steiner did not file suit but, rather, took advantage of the online arbitration procedure available through WIPO, filing against a Korean businessman who had registered Thelan.com as a URL. The firm alleged that the foreign businessman was a cybersquatter and requested that WIPO turn the URL over to it. Before obtaining a decision from the arbitrator, the foreign businessman capitulated and assigned the Thelan.com URL to the law firm for no consideration.

These types of disputes are not unique to the United States. When the international law firm Paul Hastings Janofsky & Walker, LLP, applied to register its name as a trademark for legal services in Hong Kong, the application was opposed by a local law firm, Hastings & Co., which had been established in Hong Kong in 1904. The registrar permitted registration, holding that there was no reasonable likelihood of confusion, even though the international firm had moved into an office previously occupied by the Hong Kong firm.

A recent English case addressed a dispute between a solicitor practicing employment law who had obtained a trademark registration for the mark "Just Employment" and a Scottish company providing advice and representation in employment matters5 doing business under the name "Just Employment Law Limited." The court held that the solicitor’s trademark registration was invalid because the mark was merely descriptive and had not acquired distinctiveness.6

Trademark disputes between groups of lawyers are not restricted to law firms. Last year, the Association of Trial Lawyers of America (ATLA) changed its name to the American Association for Justice (AAJ). Around the same time, another group of trial lawyers created an organization called The American Trial Lawyers Association, or "TheATLA." TheATLA claims its name is descriptive and that, in any event, AAJ abandoned the ATLA mark, but AAJ disagreed and sued TheATLA for trademark infringement last fall. Another organization, the American College of Trial Lawyers, also brought suit against TheATLA for trademark infringement last year. This organization had sued AAJ 35 years ago when AAJ adopted the name American Trial Lawyers Association, resulting in the organization changing its name to the Association of Trial Lawyers of America.7

Many law firms now recognize the importance of branding and the necessity of engaging in the promotional activities that have become vital in today’s competitive market. It is clear from the Foley case that registering the firm’s name as a federal trademark has some advantages, though under the Lanham Act, mere use of a protectable name in interstate commerce is all that is necessary for common law protection of that name.8 Registration may also be appropriate for sole practitioners, though they may have greater difficulty in establishing that their names are registerable trademarks under the federal statute.9

It is therefore appropriate for law firms — which counsel their clients to take steps to protect their property — to engage in self-protection as well. The Bible counsels physicians to heal themselves, and its message is also applicable to lawyers who should be as diligent in protecting their own rights as they are in protecting their clients’ rights..

1. Bates v. State Bar of Arizona, 433 US 350 (1977).

2. See, for example, the New York Disciplinary Rules of the Code of Professional Responsibility. Note that in February 2007, a lawsuit seeking to enjoin enforcement of parts of the section of the Code limiting advertising was filed. The U.S. District Court for the Northern District of New York agreed that certain portions were an unconstitutional limitation on free speech and granted the plaintiffs’ motion for summary judgment on July 20, 2007. The ruling has been appealed.

3. Suisman, Shapiro, Wool, Brennan, Gray & Greenberg, PC v. Suisman, No. 3:04-CV-745 (JCH), 2006 WL 387289 (D. Conn. Feb. 15, 2006).

4. Milbank Tweed Hadley & McCloy, LLP v. Milbank Holding Corporation d/b/a Milbank Real Estate Services, 06-CV-187 (C.D. Cal. Feb. 23, 2007).

5. In the U.K., nonsolicitors are permitted to give legal advice on employment issues, as well as to represent clients before employment tribunals.

6. Bignell v. Just Employment Law Limited (2007) EWHC 2203 (Ch).

7. Ball v. American Trial Lawyers Assn., 14 Cal.App.3d 298, 92 Cal. Rptr. 228 (1971).

8. See Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a).

9. In a recent case before the Trademark Trial and Appeal Board (TTAB), it was reaffirmed that an individual’s name may be a registerable trademark if it has acquired secondary meaning despite the Lanham Act’s prohibition on registering a mark that is "primarily merely a surname." In re J.J. Yeley, 2007 WL 3095396 (T.T.A.B. Oct. 17, 2007). See also Michael S. Sachs, Inc. v. Cordon Art B.v., 56 U.S.P.Q. 2d 1132 (T.T.A.B. 2000). While the Yeley case dealt with a NASCAR driver, the same principles would apply to an attorney.

Leonard DuBoff is author of more than 20 books on business and intellectual property law. He is the managing principal of the DuBoff Law Group. Christy King is a member of the DuBoff Law Group and editor-in-chief of the firm’s newsletter Critical Issues.

© 2008 Leonard D. DuBoff and Christy O. King

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