Precedential No. 7: Law Firm owns BIRTH JUSTICE logo, not the Associate who Conceived the Brand

In a dubiously precedential ruling, the Board sustained a law firm's opposition to registration of the composite mark shown below, for "legal services, namely, providing legal consultation and research services, and litigation assistance and strategy services relating to birth injury," ruling that Applicant Emily Grace Thomas, who conceived the mark before employment by the firm, was not the owner of the mark. Olsman, MacKenzie, Peacock & Wallace, P.C. v. Emily Grace Thomas, Opposition No. 91272167 (September 10, 2026) [precedential] (Opinion by Judge Lawrence T. Stanley, Jr.).

It took the Board 15 pages to set out the factual background for its decision. The ruling broke no new legal ground, and so its precedential value seems to be minimal, at best.

The Board began by refusing to consider Applicant Thomas's implied license defense because it was neither pleaded nor tried by consent. [Will Ms. Thomas seek review by way of civil action, where she can raise this additional issue? -ed.].

The Board began by observing that "[o]nly the owner of a mark may file an application to register it under Section 1(a) of the Trademark Act. 15 U.S.C. § 1051(a)(1)." The question for the Board was "whether Applicant, in her individual capacity, owned the Birth Justice Logo for the identified services as of the December 16, 2020 application filing date."

Thomas conceived the "brand" in January 2018 and registered the birthjustice.com domain, prior to her employment by opposer in February 2019. "It is well settled that merely designing or inventing a symbol does not create trademark rights. See Hole In 1 Drinks, 2020 WL 859853, at *10; see also J. Thomas McCarthy, 2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 16:11 (5th ed. June 2026 Update). "Nor does registering a domain name, standing alone, confer trademark rights. See Brookfield Commc’ns, Inc. v. W. Coast Ent. Corp., 174 F.3d 1036, 1052 (9th Cir. 1999). 

Thomas did not dispute that she was an employee, an "associate attorney," of opposer. "Generally, 'the mere suggestion by … an employee during or before entering employment that the employer market its product under a particular designation cannot bestow any proprietary right in said trademark upon the employee.' Scranton Plastic Laminating, Inc. v. Mason, No. 91053914, 1975 WL 21259, at *9 (TTAB 1975)." There was no written or oral agreement between the parties regarding ownership of the mark.

Relying on the RESTATEMENT (THIRD) OF AGENCY, the Board had "no doubt" that Thomas was acting within the scope of her employment "when she participated in the development of the Birth Justice Logo and subsequently used the logo."

Opposer is a law firm, and promotional work for a law firm is squarely within the scope of an attorney’s employment. The development of a mark to promote the firm’s legal services in the birth-injury field is exactly that—promotional work for the firm, and Applicant was hired for her birth‑injury expertise. She arrived at the firm with a concept for a logo, but the logo had not been finalized, let alone ever used in connection with any goods or services. Applicant and others at the Olsman firm, in conjunction with a graphic design firm retained and paid-for by Opposer, took Applicant’s idea for a logo and developed that idea into a final logo design that Applicant and the firm used to promote Applicant’s practice-area specialty at the Olsman firm. It was natural and appropriate for Applicant to provide design input. Indeed, this is consistent with the input the Olsman firm sought from Applicant on birth-injury marketing matters generally.

Because the Birth Justice Logo was created and used within the scope of Thomas’s employment, "there is a presumption that any use of the Birth Justice Logo “‘during [the relevant] period .... was done so [by Applicant] as [an employee of] opposer, on behalf of opposer, and in furtherance of opposer’s business; and any goodwill created by such use inured to opposer’s benefit.’” DowntownDC Bus. Improvement Dist., 2024 WL 4449409, at *15 (quoting Scranton Plastic Laminating, 1975 WL 21259, at *9).

The Board concluded that Thoms failed to rebut opposer’s prima facie case, and so it sustained the opposition.

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TTABlogger comment: The Board noted that "Applicant appears to have performed exceptionally well as an attorney at the Olsman firm, including obtaining 'two of the biggest settlements in the history of the Olsman firm[,]' which resulted in Opposer 'receiv[ing] compensation from these two cases far in excess of any of the funds they may have fronted Applicant for her cases.'"

Text Copyright John L. Welch 2026.