Friday, April 13, 2007

CAFC Affirms TTAB Decision: "LAWYERS.COM" Refused as Generic

The United Stated Court of Appeals for the Federal Circuit has affirmed the TTAB's December 16, 2005 decision (TTABlogged here) upholding a genericness refusal of LAWYERS.COM for "providing an online interactive database featuring information exchange in the fields of law, legal news and legal services." In re Reed Elsevier Properties, Inc., 82 USPQ2d 1378 (Fed. Cir. 2007) [precedential]. website

The Board found the genus of services to be "a web site with a database of information covering the identified topics of law, legal news and legal services and .... a central and inextricably intertwined element of that genus is information about lawyers and information from lawyers." Appellant Reed argued that the Board improperly considered all of the services offered at the website in defining the genus of services at issue, instead of just focusing on those identified in the application. During prosecution, Reed had deleted the word "lawyers" from its recitation of services, and it contended it was not seeking to register LAWYERS.COM for "selling lawyers or offering services of lawyers," but only for "information exchange concerning legal services." The CAFC, however, observed that "for better or worse, lawyers are necessarily an integral part of the information exchange about legal services."

The CAFC ruled that the Board had appropriately reviewed Reed's website to inform its understanding of "information exchange about legal services." The Board did not incorporate "non-claimed services" in the genus that it defined. Identify and finding lawyers is part of the information exchange, as Reed's own website makes clear. The same is true about information exchange about the law and legal news. "Information exchange about lawyers is not at all discrete from information about the law, legal news, and legal services." As the Board found, they are "inextricably intertwined." Therefore, the Board's genus determination was proper.

In determining what the relevant public would understand LAWYERS.COM to mean, it was proper for the Board to consider eight other websites with "" in their domain names, and to discuss those websites "in order to illuminate what services the relevant public would understand a website operating under Reed's mark to provide." Those websites provided "substantial evidence to support the board's finding."

Text Copyright John L. Welch 2007.


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