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Domain Name LAWYERS.COM Is “Inextricably Intertwined” with Featured Services and Is Generic and Not Registerable

April 12, 2007

Decision icon Decision

Last Month at the Federal Circuit - May 2007

Judges: Mayer (author), Schall, Bryson

[Appealed from: TTAB]

In In re Reed Elsevier Properties Inc., No. 06-1309 (Fed. Cir. Apr. 12, 2007), the Federal Circuit affirmed the TTAB’s decision to deny Reed Elsevier Properties Inc.’s (“Reed”) registration of the mark LAWYERS.COM on the ground that the mark was generic.

Through its Martindale-Hubbell division, Reed operates the Web site that features information on finding and contacting lawyers, as well as legal news headlines, information on legal practice areas, and message boards where Web site users can ask or answer legal questions.

Soon after Reed first used the LAWYERS.COM mark in commerce on July 30, 1998, it applied to register the mark for Class 42 services, identified as “[p]roviding access to an online interactive database featuring information exchange in the fields of law, lawyers, legal news, and legal services.” Slip op. at 2. The examining attorney refused registration of the mark based on the ground that the mark was generic and not registerable. Reed responded by removing “lawyers” from the description of the application and sought registration on the supplemental register. The examining attorney issued a final refusal based on genericness. Reed appealed to the TTAB.

The TTAB agreed with the examining attorney’s determination. The TTAB found that the genus of services Reed provided in connection with its Web site was “inextricably intertwined” with information about lawyers and information from lawyers. Id. The TTAB also found that members of the public would readily understand the mark LAWYERS.COM to identify a Web site about lawyers and how to access lawyers. Thus, given the related nature of the services that Reed sought to identify with its mark and the relevant public’s understanding of the services the mark evoked, the TTAB affirmed the examining attorney’s refusal based on genericness. Reed appealed.

The Court affirmed the TTAB’s decision, finding that the mark LAWYERS.COM was generic. In doing so, the Court applied a two-part inquiry: “First, what is the genus of goods or services at issue? Second, is the term sought to be registered . . . understood by the relevant public primarily to refer to that genus of goods or services?” Id. at 3 (citation omitted). The Court rejected Reed’s argument that the TTAB improperly considered all of the services offered on the Web site in connection with the mark instead of only focusing on the services identified in the application, and held that by necessity, lawyers are an integral part of the information exchange about and from lawyers, as well as the law and legal news. Thus, contrary to Reed’s argument that information about lawyers and providing information to assist in contacting lawyers was discrete from information about the law, legal news, and legal services, the Court upheld the TTAB’s finding that the services offered by the Web site and lawyers were “inextricably intertwined,” and that its genus determination was proper. Moreover, the Court concluded that it was proper that the TTAB reviewed all the content on the Web site to understand the meaning of the phrase “information exchange about legal services” in Reed’s application.

Because of the interrelatedness between the mark and the services provided on the Web site, the Court also held that the TTAB correctly held that consumers would identify the mark with a Web site providing information and access to lawyers. Moreover, the Court determined that it was appropriate for the TTAB to consider eight other Web sites that also used the term “” in its domain name to understand what services the public would perceive Reed as providing on the Web site. Accordingly, the Court affirmed the TTAB’s holding and refused registration of the LAWYERS.COM mark on the ground that the mark was generic.