What’s in a name? (Part 1)

by Jimmy Bewley | January 10, 2012

Shakespeare first asked the question, “What’s in a name?” He was referring to the smell of roses of course. If you were toask the same question of Binder & Binder—one of our steady Social Security Disability competitors—they likely will answer unique, distinct marketing, reputation, and about $300,000. Recently, Binder & Binder® sued Disability Group, Inc., in a U.S. District Court of California for trademark infringement for exploiting its name in an advertising campaign through Google AdWords.    It was an intentional, blatant attempt to profit off Binder & Binder’s name.     

(Binder v. Disability Group, Inc., Case No. CV 07-2760-GHK (Ssx), 2011 U.S. Dist. LEXIS 7037 (C.D. Cal., Jan. 25, 2011.))

 More and more, cases are popping up across the country where advertisers have acquired competitors’ names in effort to direct traffic to their own websites through purchased keywords. Legal theories abound as to whether it’s right or wrong and whether it’s actionable. Experts in the field say there’s little precedent to rely on, so a lot is still unknown. Here’s what we do know:

 Registering your law firm’s name as a federal trademark can significantly strengthen your position in preventing an adversary from profiting off your goodwill, reputation, and competitive advantage.

 Current Trademark Law

To get to where we are today, you have to go back more than 65 years. In 1946, Congress passed the Lanham Act. This legislation governs the registration of trademarks, trade names, and other identifying marks used in interstate commerce. It also outlines the framework for protection against trademark infringement. The Lanham Act gives a basic definition of a trademark as “any word, name, symbol, or device or any combination thereof” used by any person “to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others” (15 U.S.C. § 1127).

Upon filing for registration with the United States Patent & Trademark Office (USPTO), applications ultimately reach an examining attorney in approximately three months. That attorney will approve or reject the application based on whether all the legal requirements have been met. Typically, the USPTO bases its initial review on the “distinctive” nature of the mark as it relates to the applicant. “Distinctiveness” may be the most important threshold in the entire application process.