Volume II

Issue : 2: January 22, 2004

• U.S. Court of Appeals Finds Trade-mark Rights May Limit "Keyed" Internet Searches
• Canadian Race Track First to Offer Online Gambling
• Microsoft Still on the Hook in EOLAS Patent Battle
• USPTO Releases List of Top Ten Patent Recipients for 2003
• U.S. Court of Appeals Rules that "Lawoffices" is Not Entitled to Trademark Protection
• VoIP: Level 3 Files Petition Seeking Exemption - FCC Chair Opposes Application of Existing Regulation - FBI Seeks Ability to Intercept Conversions - Bangladesh Telecom Breaks Law
• Canadian Firm Required to Pay Redress for Misleading Domain Name Marketing
• Copyright Ruling Appealed by Industry Groups - CRIA Launching Lawsuits Against File Swappers
• US-Court-of-Appeals-Dismisses-Honeywells-Attempt-to-Utilize-Trademark-Protection-in-Expired-Patent-Case
• Canadian Consumer Ministers Approve E-Commerce Code

Home > Volume II > Issue 2: January 22, 2004 > U.S. Court of Appeals Rules that "Lawoffices" is Not Entitled to Trademark Protection

U.S. Court of Appeals Rules that "Lawoffices" is Not Entitled to Trademark Protection

In DeGidio v. West Group Corp., et al., the U.S. Court of Appeals for the Sixth Circuit affirmed a lower court ruling that the plaintiff, Anthony DeGuido, was not entitled to obtain trademark protection for the mark Lawoffices. DeGuido is the registered owner of the domain name "lawoffices.net", but does not own a trademark registration for that term. He had filed a trademark action in the U.S. District Court for the Northern District of Ohio alleging a number of violations by the defendants, The West Group Corporation, The Thompson Corporation, and West Licensing Corporation, who use the domain name "lawoffice.com" to market the West Legal Directory. The District Court granted summary judgment to the defendants on the basis that DeGuido's mark is descriptive and had not acquired secondary meaning.

The Court of Appeals agreed with the District Court. It stated that to be entitled to trademark protection, unregistered trademarks must be either: 1) inherently distinctive or 2) acquire distinctiveness through secondary meaning. In determining whether or not the plaintiff's mark was inherently distinctive, the Court referred to the categories of trademarks found in a spectrum of distinctiveness. Ranging in ascending order of the degree of protection afforded to the mark, the categories are: 1) generic terms, 2) descriptive, 3) suggestive, and 4) arbitrary or fanciful. The Court stated that generic terms never qualify as trademarks, descriptive terms are not inherently distinctive, and suggestive, arbitrary, and fanciful terms are always inherently distinctive.

The Court rejected the plaintiff's argument that the mark "Lawoffices" is a suggestive term and held that it is descriptive. Since the mark is descriptive, and therefore not inherently distinctive, it must have acquired secondary meaning in the marketplace if its use is to be protected at law. The plaintiff must show that in the minds of the public, the primary significance of the product feature or term is to identify the source of the product rather than the product itself. Secondary meaning can be established through evidence of: 1) direct customer testimony, 2) consumer surveys, 3) exclusivity, 4) amount and manner of advertising, 5) amount of sales and number of customers, 6) established place in the market, and 7) proof of intentional copying. The Court of Appeals found that the District Court had applied the seven-factor test correctly in determining that the plaintiff had failed to meet his burden of establishing a secondary meaning for the mark.

For a copy of the decision, visit:
http://pacer.ca6.uscourts.gov/cgi-bin/getopn.pl?OPINION=04a0019p.06