TTAB Reverses "10HUNDRED" Specimen Refusal, Finding that Legal Services Include Providing Legal Information

The TTAB reversed a refusal to register the mark 10HUNDRED for "legal services; legal advisory and consultancy services," overruling the Examining Attorney's rejection of applicant's specimen of use. The Examining Attorney maintained that the specimens showed use of the mark with the provision of legal information, not with legal services. In re Mayer Brown LLP, Serial No. 90044407 (September 30, 2022) [not precedential] (Opinion by Judge Thomas Shaw).

Applicant's specimens of use mostly comprised webpages where it uses the mark 10HUNDRED to identify a program presenting "global legal and business guidance on the top 10 key issues and pivotal developments that could affect businesses during a rolling 100-day period." According to applicant, the program will feature "thought leadership, legal updates, videos, podcasts, webcasts and live newsfeeds on global legal and business issues."

The Examining Attorney contended that supplying legal information is not the provision of legal services or advice. He maintained that the information provided by Applicant under its 10HUNDRED mark "cannot be 'legal services' or 'legal advice' because if it were, it would mean that applicant violated its duty of confidentiality by publicly disclosing confidential information provided to a client."

The Board found the Examining Attorney's position to be "overly narrow and restrictive, elevating form over substance."

The practice of law encompasses many different aspects of client counseling, and not all of them require attorney-client privilege. Put another way, while it is true that non-attorneys may not practice law, licensed attorneys may work on matters that do not, strictly speaking, comprise the practice of law.

The Board found that that Applicant offers its 10HUNDRED service "in order to provide clients and prospective clients with useful legal information which they can use in their businesses. Providing clients with such information before problems arise is the hallmark of good counsel."

The Board further observed that the provision of legal information to clients or prospective clients "clearly fall[s]within the meaning of legal services, i.e., 'work performed by a lawyer for a client.'" Moreover, applicant "clearly use[s] the mark in association with services that fall within the common meaning of 'consulancy' and 'advisory.'"

And so, the Board reversed the refusal.

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TTABlogger comment: As the Board acknowledged, the line providing legal services or legal advice versus merely educating clients on legal issues is rarely clear."

Text Copyright John L. Welch 2022.