LAWYERS.COM mark generic says Federal Circuit

In In re Reed Elsevier Properties Inc, the US Court of Appeals for the Federal Circuit has, citing principles of genericness, affirmed the US Patent and Trademark Office's (USPTO) refusal to register a LAWYERS.COM mark for an online database featuring information about lawyers, the law and legal news.

Reed Elsevier (Elsevier) operates a lawyer database and legal information website at www.lawyers.com. In 1998 Elsevier submitted a trademark application for the mark LAWYERS.COM. The corresponding services included "[p]roviding access to an online database featuring information exchange in the fields of law, lawyers, legal news and legal services". The examining attorney refused registration based on genericness. Elsevier then omitted 'lawyers' from the description of services and attempted to register the mark on the Supplemental Register. Again, the examining attorney denied registration.

On appeal, the USPTO's Trademark Trial and Appeal Board affirmed the examining attorney's refusal, finding information about and from lawyers to be a "central and inextricably intertwined element" of the website's features. Furthermore, the board concluded that the relevant public, which included lawyers and laypersons seeking lawyers' services and legal information, would readily conclude that the mark described a website featuring such legal information.

Elsevier appealed, arguing that the revised description of goods was "discrete" from the omitted services (ie, "information exchange concerning lawyers"). However, the court disagreed, emphasizing that lawyers are integral to and often the focus of the legal news and services provided. With respect to the relevant public's understanding, the court highlighted the board's review of eight websites that incorporated the word 'lawyer' or 'lawyers' in their domain names and the corresponding legal content of the same.

Accordingly, the court dismissed the appeal.

Natalie A Ward, McDermott Will & Emery LLP, Washington DC