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The vast majority of attorneys and the clients they represent have at least one thing in common; namely, they conduct their business using names other than their own. But whereas many business people have traditionally invested a great deal of time money and energy in branding their business attorneys only recently have begun engaging in such advertising activities. In fact it was not until the 1970s that attorneys were ethically permitted to advertise, and even today some jurisdictions continue to impose significant restrictions on lawyers promotional activities.

The core of branding is the process of protecting the name under which a business is conducted and identified. The law provides a vehicle for obtaining this protection through the trademark statutes. The federal trademark statute known as the Lanham Act provides protection for any name, symbol, logo, or combination thereof when used in commerce to identify a product or service. It is therefore apparent that a law firm’s name should be a protectible federal trademark if the other requirements of trademark law are met.

To have a protectible mark a firm must adopt a name that does not sound like or cause market confusion with the name of any other law firm or related business. Thus when the law firm Suisman, Shapiro, Wool, Bernnan, and Gray & Greenberg, PC (generally known as Suisman Shapiro) was presented with a situation where two attorneys left the firm and created a firm called Suisman, Shapiro; the court found that there was a likelihood of confusion and enjoined the use of the name Suisman Shapiro by the new firm. The court pointed out that a firm name does not identify individual person but rather identifies the law firm as business entity and held that the plaintiff was able to prove that its name had developed secondary meaning in the minds of consumers in the local market. This can be accomplished by advertising and promotional activities as well as by other public recognition.

A similar situation occurred when the Midwest firm Foley and Lardner opened an office in Boston, since the Foley Hoag firm had already been established in Boston for more than sixty years. Foley Hoag registered its service mark Foley Hoag with the Patent and Trademark Office in 2002.Foley and Lardner had begun calling itself “Foley” about three years before the move but when it attempted to register “Foley” the Patent and Trademark Office denied the resignation as likely to cause confusion with Foley Hoag. In fact both the firms identified themselves as “Foley” there was a great deal of actual confusion. Letters and faxes intended for one of the firms were addressed to the other. Even the Post Office could not tell the two firms apart and misdelivered their mail.

In Oct 2005 Foley Hoag filed suit in the District of Massachusetts. The Firms settled the dispute in August 2007 and while Foley and Lardner denied that there was any likelihood of confusion it did agree not to use “Foley” without “Lardner” in close proximity and prominence as well as to avoid referring to itself by the single word Foley in written or oral communications unless it was used in a context reasonably understood to be referring to Foley and Lardner. Foley and Lardner was allowed to retain the foley.com URL.

The problem of Secondary meaning also was significant in a case involving a prominent intellectual property lawyer named M. Kelly Tillery. Tillery filed a suit against his former law firm for the firm’s use of his name. The partnership agreement between Tillery and his firm provided that the firm continue using Tillery’s name unless the use violated the code of professional responsibility and Tillery would therefore have to prove that on trial in order to show that the firm breached the partnership agreement. The firm did change its letterhead, stationery and the like leaving only the use of the domain name leonardtillery.com and related

Email addresses in dispute. However at the time of the law suit the firm had created a new URL and was in the process of transitioning to it. All emails were sent from the new domain, although the firm continued to receive emails at the old addresses. Also the URL directed users to the new domain. After the suit was filed the firm created a page with a message alerting users that Tillery was no longer affiliated with the firm before redirecting them to the new site.

Tillery’s attempt to obtain a preliminary injunction was unsuccessful as the court felt he would not likely succeed on the merits on any claims he asserted. Judge Norma explained that trademarks may be arbitrary or fanciful, suggestive, descriptive or generic. Individual names are descriptive and therefore protectible only if they achieve secondary meaning.

Tillery did not use his name in connection with any business or product except as part of the name of the law firms with which he had been affiliated. Tillery did not promote his surname in connection with his firm name. In fact he had brought in only a handful of new clients in the last sixteen months with the firm, and they were referred to the firm rather than to him individually.  [TILLERY Vs LEONARDO & SCIOLLA]

A similar conclusion was reached in a case involving a cyber squatting claim by Seattle Law firm The Christen Law Firm against its Website development vendor, Chameleon Data. When the law firm disputed certain of the vendor’s charges and failed to pay them, Chameleon transferred to itself ownership of the four domains that had been managed by Chameleon but owned by the firm. The court dismissed the cyber squatting claims, holding that the domain names at issue were either generic or descriptive and that the firm had not established that they had achieved secondary meaning.

A recent English case addressed a dispute between a solicitors practicing employment law who had obtained a trademark registration for the mark “Just Employment” and a Scottish company providing advice and representation in employment matters doing business under the name “Just employment Law Limited”. The court held that the Solicitor’s trademark registration was invalid because the mark was merely descriptive and had not acquired distinctiveness. [BIGNELL Vs JUST EMPLOYMENT LAW LIMITED]

Many law firms now recognize the importance of branding and the necessity of engaging in the promotional activities that have become vital in today’s competitive market. It is clear from the Foley case that registering the firm’s name as federal trademark has some advantages although under the Lanham Act mere use of a protectible name in interstate commerce is all that is necessary for common law protection of that name. Registration also may be appropriate for solo practitioners although they may have greater difficulty in establishing that their names are registerable trademarks.