Articles

Leaving a Law Firm in the Internet Age Raises Trademark Issues

IP Law 360
October 17, 2006

Article

In the "old days," when a name partner left a law firm, the trademark issues were straightforward. In the Internet era, however, these issues have become more complex because law firms extensively use Web sites to promote their services and e-mail to communicate with clients and potential clients. Former partners have a strong interest in the ex-firm not using their names in the firm name as well as in the firm's domain name and corresponding e-mail addresses. On the other hand, even though the firm has changed its firm name and domain name, it wants to make sure that clients and others familiar with the firm's old domain name and e-mail addresses can easily find the firm and communicate with its lawyers. These competing interests recently collided in a federal lawsuit in Pennsylvania.

The Tillery Case

M. Kelly Tillery became a name partner in the Philadelphia firm of Leonard, Tillery & Davision in 1992, which later changed its name to Leonard, Tillery & Sciolla. After Tillery announced his resignation in April 2005, the firm renamed itself Leonard Sciolla; ordered new stationery and marketing materials; and instructed its staff not to use the old firm name on anything. It advertised its name change in a legal trade publication and sent notices announcing the new name. Tillery similarly sent "many" notices to his clients and contacts informing them of his new firm.

About a week before Tillery departed, the firm began using a new domain name—leonardsciolla.com—for its Web site and all outgoing mail. The leonardsciolla Web site was promptly edited after Tillery's departure to add the firm's new name and to delete Tillery's biography and photograph. But the firm maintained the old domain name leonardtillery.com, which at first automatically forwarded users to the firm's new leonardsciolla.com site. Shortly thereafter, the firm instead posted a single "interim" page at leonardtillery.com stating that the firm was formerly known as Leonard, Tillery & Sciolla and that Tillery is no longer associated with the firm. After a few seconds, visitors were automatically forwarded to the firm's new site.

The firm also continued to receive "@leonardtillery.com" e-mail as usual except for e-mails sent to "ktillery@leonardtillery.com." The firm initially forwarded Tillery's e-mails to him, and later senders automatically received a response from the firm stating that Tillery was no longer at this address and providing his new e-mail address.

According to Tillery's allegations in his lawsuit, the firm's continued use of the leonardtillery.com domain name constituted trademark infringement. The court denied Tillery's motion for a preliminary injunction. 2006 U.S. Dist. LEXIS 38145 (E.D. Pa. June 9, 2006).

Regarding trademark infringement, the court held that TILLERY was not a protectable mark because it lacked the secondary meaning required to establish rights in a personal name, even though the court found that Tillery was a "well-known intellectual property attorney." In particular, Tillery failed to show that he used his name except as part of law-firm names; that he had "a particularly large share of the market"; or that he made "substantial efforts to advertise his own legal services separately from the law firms." Moreover, in his last 16 months with the firm, Tillery "generated only a few new client matters" and those were mostly referrals from others. According to the court, "[e]vidently Tillery's name was not so well known that strangers sought his services." Even if Tillery could establish secondary meaning, it would likely be in his full name "M. Kelly Tillery" since he followed the "common practice" of lawyers identifying themselves by their full names.

Tillery failed to cite a single case to support the proposition that an individual lawyer or other professional working in a professional firm owned trademark rights in his own name, and the court could find none. Moreover, from a policy viewpoint, the court noted that "[t]he recognition of individual lawyers' names as trademarks without a strong showing of secondary meaning could hinder the creation of new law firms (since, unlike other businesses, law firms are traditionally identified by personal names and not fanciful trade names) and the ability of individuals to practice law in their chosen field without changing their names."

The court also looked at the parties' partnership agreement, which permitted the firm's continued use of "a withdrawn, retired or deceased" partner's name in the firm name unless the use is a "violation of the Code of Professional Responsibility or the withdrawn or expelled partner continues to practice law." Because the firm removed Tillery's name from the firm name, the issue was whether its continued use of the domain name leonardtillery.com violated the Pennsylvania Rules of Professional Conduct, which replaced the Code of Professional Responsibility. Rule 7.5 provides in part that "if otherwise lawful a firm may use as, or continue to include in, its name, the name or names of one or more . . . retired members of the firm or of a predecessor firm . . . ." The commentary to this rule states that a law firm may be designated by a "distinctive Web side address," that use of trade names are acceptable as long as they are not misleading, and that it is "misleading to use the name of a lawyer not associated with the firm or a predecessor of the firm . . . ." According to the court, it was unclear whether this commentary suggested that "'a distinctive Web site address' should be treated in the same way as a name and subjected to the same rules or that a Web site address can actually be the firm's name."

Even assuming Tillery could establish trademark rights, the court held that he failed to show a likelihood of confusion because TILLERY and leonardtillery.com were "only slightly similar"; the TILLERY mark was not strong; consumers for Tillery's services were typically high-level administrators or general counsels and thus sophisticated customers who would exercise a "great deal of care" when purchasing legal services; and there was no evidence of actual confusion or that the firm tried to "capitalize on Tillery's renown."

Tillery could not show a likelihood of confusion even when the leonardtillery.com domain name automatically forwarded Internet users to the firm's leonardsciolla.com Web site. This initial-interest confusion was not actionable because sophisticated consumers for legal services were not likely "to make a mistaken purchasing decision or to consider a different intellectual property lawyer from the one they were seeking simply because they accessed the wrong web site." This was particularly true here where both parties "made a sustained effort to communicate the parting of their ways." Moreover, any likelihood of confusion caused by this automatic redirect was "substantially eliminated" when the firm posted the interim Web page stating that the firm changed its name and Tillery left the firm.

Nor did Tillery show a likelihood of confusion regarding the firm's continued use of "@leonardtillery.com" e mail addresses. As noted above, clients or would-be clients sending e mails to ktillery@leonardtillery.com were "instantly informed that Tillery had ended his affiliation with the firm and told how to contact him."

Finally, the balancing of harms slightly favored the firm, which showed that it would suffer "some harm from the initial frustration" of clients trying unsuccessfully to contact the firm. In contrast, Tillery conceded that he did not lose any clients, that his practice had not been harmed, and that he was not aware of any instances that any client looking for him had instead retained the firm. Indeed, Tillery conceded that his clients were "pretty smart" and could find him by putting his name in a search engine. Nor did Tillery present any evidence that the firm's continued receipt of tilleryk@leonardtillery.com" e-mail could harm him since it was either forwarded to him or the senders received Tillery's new contact information. And Tillery could not explain how he was irreparably harmed when a firm staff member received a "[staffmembername]@leonardtillerycom" e-mail.

Conclusion

So what's in a name? Not as much as a former partner might like. Lawyers' surnames typically do not morph into protectable trademarks. Even in those cases where lawyers can establish proprietary rights in their surnames, the former partner must show a likelihood of consumer confusion to prevail. In the Tillery case, the firm took significant steps to publicize its new firm name and to ensure that Tillery's departure would be known to Web site visitors and to persons e-mailing the firm. It retained the old domain name simply to use it as a link to its new Web site, whose domain name mentioned "Tillery" not at all, and for inbound e-mail from persons not yet familiar with or accustomed to the firm's new domain name. The court's decision provides valuable guidance to both firms and lawyers on steps they can take to achieve an amicable "trademark" separation.

Copyright © Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. This article is for informational purposes and is not intended to constitute legal advice. This memorandum may be considered advertising under applicable state laws.