Trademark Protection for Lawyers

It's been a while since we discussed lawyer names on the Wordlab blog in a post titled Dewey, Cheatham & Howe, where we wrote:

Law firms that take a unique surname of a founder, and add an s to that name, create a brand built upon the law firm's tradition, and establish an identity that is distinctive yet consistent with how the firm is often well-known in the profession and the community: Torys, and Gowlings, and Mallesons, and Blakes for examples.

Business-minded lawyers name their law firms with their customers in mind--not to assuage the partners--and thereby protect their investments in the business. Better to have a partnership interest in a law firm with a strong brand than to have one's own name listed with many other partners on a "shingle" few customers can remember. The classic parody of traditional law firm naming is Jerry Seinfeld trying desperately to remember the name of the firm where the beautiful lawyer, Vanessa, works; repeating the mantra "Simon, Bennett, Robbins, Oppenheim & Taft" over and over.

Smart lawyers approach law firm naming from a customer-facing point of view, rather than a partnership perspective. Many leading law firms are building lasting brands with great individual names with respect to their own legal traditions, such as Skadden, and Osler, and Venable, and Stroock, each with a memorable domain name and a remarkable website.

Noteworthy amongst the Nifty Fifty recognized by Internet Marketing Attorney is Morrison & Foerster, better known by the moniker MoFo, with an award-winning website that communicates the distinctive and memorable brand of this outstanding law firm.

Incidental to those branding concerns, the legal issues of lawyer names as trademarks have come up in a few lawsuits between lawyers recently.

In an article on Law.com, we learned of the recent case where an individual attorney sued his former partners to prevent them from continuing to use his name in connection with the firm. Senior U.S. District Judge Norma L. Shapiro found that prominent intellectual property attorney M. Kelly Tillery was not entitled to an injunction, and not likely to succeed at trial, in a dispute with his former firm that would have forced the firm to completely eliminate all uses of the departing lawyer's name and all mention of his court victories.

Specifically, Shapiro found that Tillery's name is not entitled to trademark protection because it has not acquired any "secondary meaning."

"The recognition of individual lawyers' names as trademarks without a strong showing of secondary meaning could hinder the creation of new law firms (since, unlike other businesses, law firms are traditionally identified by personal names and not fanciful trade names) and the ability of individuals to practice law in their chosen field without changing their names," Shapiro wrote.

Tillery, she said, "has cited no precedent granting trademark status to a lawyer's personal name, used only in connection with his individual legal services, and the court could find none."

Although a person's name may serve as a trademark, Shapiro found that "they are considered 'descriptive,' not inherently distinctive marks, so they are treated as protectable trademarks only upon a showing of distinctiveness and secondary meaning."

Tillery, she said, failed to meet the test for showing that his name deserves trademark protection.

"Although Tillery has used 'Tillery' as his personal last name all his life, it does not appear from the record that it was ever used in connection with a business or a product except as part of the name of law firms with which he was associated since his third year of practice, i.e., Leonard Tillery & Davison and then Leonard Tillery & Sciolla," Shapiro wrote.

"There is no evidence that he commanded a particularly large share of the market, or that he made substantial efforts to advertise his own legal services separately from the law firms'," Shapiro wrote.

In short, he failed to have a blawg to establish his name as a trademark apart from his personal name used by the law firm to offer their legal services.