West Group wins in fight over online LAWOFFICES

In DeGidio v West Group Corporation, the US Court of Appeals for the Sixth Circuit has ruled that the plaintiff registrant of the domain name 'lawoffices.net' had no trademark rights in LAWOFFICES because it was descriptive and without secondary meaning. Therefore, the defendant legal publisher had not violated trademark law when it adopted and used the domain name 'lawoffice.com'.

Anthony DeGidio, a lawyer, filed a complaint against West Group for false designation of origin, federal trademark dilution, misappropriation, unauthorized use and trademark infringement. DeGidio owns the domain name 'lawoffices.net' used as, among other things, a website directory for attorneys and legal information. West adopted the domain name 'lawoffice.com' for its legal directory, which provides legal information online. In response to the complaint, West moved for summary judgment.

To survive a motion for summary judgment and prevail, DeGidio had to establish that LAWOFFICES was a valid and legally protectable service mark under Section 43(a) of the Lanham Act. DeGidio argued that his domain name used in connection with his services was either (i) suggestive, or (ii) a descriptive mark with acquired distinctiveness.

The US District Court for the Northern District of Ohio disagreed, holding LAWOFFICES to be descriptive without secondary meaning and not suggestive of online legal information database services. It therefore granted West's motion for summary judgment.

On appeal, DeGidio argued that LAWOFFICES was suggestive and not merely descriptive of an online database of attorneys and legal information because there was no "physical law office that provides those services". In rejecting this argument, the Sixth Circuit said that although there was no physical law office where clients can actually go for these services, this did not change the meaning of the term 'law office'. The court agreed with the district court that LAWOFFICES was descriptive and without secondary meaning, and affirmed its decision.

Brian Banner, Banner & Witcoff Ltd, Washington DC