Friday, September 25, 2009

TTAB Finds "E-LEX" Merely Descriptive of Litigation Support Services

Finding that "e" means electronic or Internet-based, and that "lex" means law, the Board affirmed a refusal to register the mark E-LEX for "litigation support services for attorneys provided via an electronic network with court-specific consultation on the rules and implementation of procedures for filing electronically." In re The Lex Group VA, Serial No. 76665046 (August 28, 2009) [not precedential].

Applicant Lex Group feebly argued that "neither the applied-for service nor the intended customer base is 'law'" and that none of the definitions offered by Examining Attorney David E. Tooley, Jr. "included any mention of electronic filing, submission assistance, or rule compliance...." Moreover, Applicant urged that "[t]he applied-for services are not solely electronic; rather, there is a human element to the filing services."

The Board relied on dictionary definitions and Internet excerpts to conclude that "[t]he letter 'e-' would inform prospective consumers its services are provided electronically through the internet. Also, inasmuch as its services are directed to attorneys for litigation support services, the term 'lex' would describe the fact that applicant is providing a type of legal or law-related services."

And so the Board affirmed the refusal to register.

TTABlog comment: I don't agree with this decision. [Who cares? - ed.] I just don't think that LEX is descriptive of these services. It's too vague. It's too Latin. Do others need to use the term LEX or e-Lex to describe these services? I think not. To paraphrase Dickens, "If this is the lex, then the lex is a ass." Or something like that.

Text Copyright John L. Welch 2009.


At 8:04 AM, Anonymous Anonymous said...

I agree with you that this decision is wrong. The USPTO has been trying to expand the scope of the 2(e)(1) refusal basis for several years. This and the Mediterranean Melt case are just the most recent efforts. I think that an amendment of the Lanham act may be necessary to specify the refusal basis more precisely.

At 12:21 PM, Blogger Sanjiv Sarwate said...

This is a really bizarre decision. I don't see anyone going straight from E-LEX to understanding anything about the nature of the services other than that they're electronic.

At 12:37 PM, Anonymous Jessica Levy said...

I agree as well. Even assuming (which is not a given) that the relevant public, i.e., attorneys, understands the meaning of "lex," I still think mental gymnastics are required to reach an understanding of the nature of the services designated by the mark. Not to mention, of course, that the PTO is massively inconsistent with its 2(e)(1) refusals.

At 3:04 PM, Blogger Catherine said...

I couldn't agree more. E-LEX strikes me as a classic suggestive mark as applied to legal services. "Lex" has many other possible meanings (lexicon, Lexington ...) And a quick Google(R) search reveals that lex has a common meaning in computer science, which appears to be much more commonly used than the meaning "law". A very bad decision (but a good opportunity to quote Mr. Bumble)

At 3:39 PM, Anonymous Terry Fox said...

So, I'm an attorney, never heard of e-lex. I can't tell from the mark if it's a legal office time tracker, a case law research tool, a court docketing system, a large firm case manager, billing system, or any other electronically organized process that people involved in legal work might use. So where is the immediate knowledge of the ingredients, qualities, or characteristics of the goods ... with which it is used, that I was supposed to get from 'e-lex', if the mark is merely descriptive??


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