Trademark Descriptiveness and Law Firm Trademarks in New Mexico
New Mexico law firms seem to have increasingly sought to protect their names or other trademarks recently. Traditionally, firm names have been boring, consisting mainly of the last names of partners. Lately firms have begun to realize that a good trademark can help drive business to their firm. I thought it would be interesting to take a look at some of the trademarks used by New Mexico law firms and how they use trademark descriptiveness to their advantage.
Sutin, Thayer & Brown
One local firm that serves as a good example is Sutin, Thayer & Brown. As far as its name goes, this firm is squarely within the traditional camp. It registered a trademark for its name in 2007, which prevents other firms from using this or a confusingly similar name.
At the same time, it also registered a mark for “SUTIN FIRM.” This mark gives the firm more leeway to change its full name. But it was not without problems. The mark was initially rejected for being primarily a surname. This is essentially a form of trademark descriptiveness. As a general rule, surnames are not registrable because we believe people should be able to use their own last names. The Sutin Firm was able to overcome this by stating that the mark had obtained secondary meaning. Because Judge Sutin passed away many years earlier (and was not a U.S. President, another limitation for obtaining a trademark), the firm did not need his consent to register the mark.
In 2014, the firm obtained a registration for “YOUR LEGAL TEAM IN NEW MEXICO.” While most law firms were unlikely to copy the first two marks, this mark covers a phrase that other firms might be likely to use. Although this mark appears to fall under trademark descriptiveness, the PTO allowed it with only a disclaimer of “New Mexico.” Thus, Sutin may be able to prevent other law firms using phrases confusingly similar to “YOUR LEGAL TEAM IN NEW MEXICO.”
Sutin’s most recent filing is for “New Mexico’s Business Lawyers.” Like “YOUR LEGAL TEAM IN NEW MEXICO,” this is a fairly descriptive mark for legal services. Generally speaking, a mark that is descriptive is not allowed to register, since it would deprive others of the ability to accurately describe their goods or services. Recognizing this, Sutin applied for this mark on what is called the “supplemental register.” Marks on the supplemental register are entitled to fewer rights. A supplemental registration allows the registrant to use the (r) symbol and can prevent the USPTO from allowing registrations of confusingly similar marks in the future. But it does not come with a presumption of federal trademark rights. If Sutin desires to sue for infringement, it will need to prove its state or common law trademark rights.
Sutin has implemented a solid trademark strategy. It has avoided applying for design marks, which are generally narrower (and less strong) than word marks. It has protected its name, and it has protected some borderline-descriptive phrases that may help its marketing and search efforts.
Albuquerque Business Law
Another local firm, Albuquerque Business Law, has taken a different approach. It appears to have one registration for a logo containing the words “Albuquerque Business Law” and “Attorneys and Counselors at Law.” Both of these phrases, of course, are descriptive for legal services. As a result, the firm was required to disclaim them, meaning that it cannot assert a right to the phrase “Albuquerque Business Law” or “Attorneys and Counselors at Law”. If it could, other local firms would not be able to accurately describe their services.
How then were they able to obtain a registration? Because the mark is not just for the words. It is for the logo, which contains graphical elements in addition to the words. Often applicants are able to register marks with highly descriptive phrases by disclaiming all of the words, as Albuquerque Business Law has done here. The downfall to this approach is that the protection is narrower than the protection afforded to word marks (such as those owned by the Sutin Firm).
Trademark descriptiveness limits trademark value, and descriptive terms have limited value themselves. But, on the other hand, they may have great search engine value. So, while the Sutin Firm’s trademark strategy appears stronger, Albuquerque Business Law (at least as of this writing) appears to rank much better on google searches for business lawyers in Albuquerque or New Mexico. The potential advantages of a good descriptive domain and business name should not be overlooked.
Legal Solutions of New Mexico
Another example of this is an application for “Legal Solutions of New Mexico” that was recently filed. Once again, the words in this mark are descriptive for legal services. When an examiner is eventually assigned to this mark, he or she is likely to require disclaimers of some or all of the words. However, because the application is for a logo with significant design elements, this mark may be registrable.
A long-running and still unresolved issue that is relevant to this mark is the question of whether authorization is required to use the Zia symbol.
Law 4 Small Business
Of course, I’d be remiss if I didn’t discuss Law 4 Small Business. Currently, L4SB has one registered mark covering its “L4SB” square logo, and an application related to the phrase “A Little Law Now Can Save a Lot Later.” L4SB has deliberately avoided the traditional “last name” model, choosing instead to select adopt branding that promotes its marketing strategy and that will not need to be changed when owners change over time.
The downside of this strategy, from a trademark perspective, is that the name “Law 4 Small Business” is viewed as somewhat descriptive and therefore ineligible for trademark registration unless L4SB can prove secondary meaning. This represents a compromise by the founder, trying to strike a balance between google searching and protection of its mark. Interestingly, another factor influencing the name was the domain name, L4SB.com. This domain name was previously owned by an outfit called “Linux 4 Small Business,” which apparently went out of business a few years prior to the founding of Law 4 Small Business, and let the domain fall back into the pool of available domain names. By utilizing this domain name, Law 4 Small Business was able to capitalize on the “domain authority” that was generated by its previous use for “small business,” giving Law 4 Small Business a significant boost in google searches related to small business.
L4SB has also applied for trademarks for “L4SB” as well as its logo that includes the words “Law 4 Small Business.” This strategy will provide protection for much of the L4SB brand elements, although it would benefit from a name that wasn’t somewhat descriptive.
Distinctive Marks Versus Trademark Descriptiveness
There is a tension between distinctive marks, which are stronger, and descriptive marks, which may perform better from a search or marketing perspective. As a group, law firms have (perhaps ironically) been somewhat slow to adopt distinctive marks. This can be contrasted from the likes of Google, Amazon and Kodak whose names are very famous yet are not descriptive for what they do. These represent strong trademarks, not just because of their market strength, but because their marks are considered arbitrary as it relates to describing their products and services.
The strength of (and ability to register) a trademark depends on whether it is generic, descriptive, suggestive or arbitrary. The first two are considered descriptive and not capable of being protected. The last two are considered distinctive, with arbitrary marks considered the strongest. We wrote a blog article trying to explain this, entitled, Trademarks: Delay can cost you …. If you want an opinion on your mark, consider our Trademark Assessment service for a low, flat-rate price.