In re Reed Elsevier Properties

Citation: In re Reed Elsevier Props. Inc., 482 F.3d 1376, 82 U.S.P.Q.2d (BNA) 1378 (Fed. Cir. 2007)(full-text).

Factual Background
Appellant Reed Elsevier Properties Inc. ("Reed"), through its Martindale-Hubbell division, operates the website www.lawyers.com. The website’s home page displays links and features allowing a user to “find a lawyer”, “ask a lawyer”, “contact a lawyer”, and “research legal information.” There are also links on the website to articles such as “do I really need a lawyer?”

Reed first used its mark LAWYERS.COM in commerce on July 30, 1998, and filed an application soon thereafter to register LAWYERS.COM for services identified as providing access to an online interactive database featuring information exchange in the fields of law, lawyers, legal news, and legal services.

After evaluating the corporation’s evidence purporting to establish that its mark had acquired distinctiveness, the examining attorney refused registration on the ground that LAWYERS.COM was generic and unable to be registered. Reed responded by deleting the word “lawyer” from its application and appealed to the Trademark Trial and Appeal Board. The Board affirmed the examining attorney’s refusal because given the congruency between the genus of services that Reed sought to identify with its mark and the nature of the relevant public’s understanding of the services its mark evokes, the board found LAWYERS.COM generic.

Appellate Court Proceedings
Under the Lanham Act, the Patent and Trademark Office cannot register marks that are merely descriptive and incapable of designating source. The genericness inquiry is made according to a two-part test:


 * 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?

The PTO bears the burden of proving a mark is generic. The appellate court found that contrary to Reed’s contention, information exchange about lawyers was not at all discrete from information exchange about the law, legal news, and legal services, as defined by the corporation’s website. As the Board found and substantial evidence supported, they were inextricably intertwined. The Board’s genus determination was proper and the decision of the Board was affirmed.