Here are some musings about US Trademarks for law firms. Since 2016, a Los Angeles law firm has had a registered trademark on the phrase "The Accident Guys," for "Attorney services, namely, representation of clients in personal injury matters." They had to disclaim the word "accident," which means they do not claim that word, except as part of the whole trademark. "The Accident Guys" seems like a powerful, very catchy advertising slogan. This trademark made it onto the Principal Register. I'm surprised it wasn't refused on the basis of being "descriptive." I think they got lucky with the Examiner who was assigned to their case. The Examiner did make them disclaim "accident," to help them get the registration. More power to them!
There are plenty of registered trademarks on "----- Patent Law." To name a few: RHD Patent Law, Lang Patent Law, Green Patent Law, Diament Patent Law, etc. On the other hand, "Buckley Patent Law" was refused for being "primarily merely a surname" and for conflicting with a different trademark on "Buckley." The applicant did not even bother to respond to the Office Action.
A lawyer named William Lang applied for a trademark on "Lang Patent Law," which was rejected as "merely a surname." He responded to the Office Action, asking to switch to the Supplemental Register.
An application for "DWI Trial Lawyers" was refused for being "merely descriptive." The Office Action explained that the applicant could amend to the Supplemental Register. The applicant did not respond, so the application went dead.
"Owens & Mulherin Trial Lawyers" successfully landed on the Principal Register by disclaiming the words "Trial Lawyers," and avoiding the "primarily a surname" rejection, possibly by registering the owner as a professional corporation, rather than as individuals. Or possibly by luck of the draw in getting an easy-going trademark examiner.
The trademark examiners seem to have a great deal of discretion. Some trademark examiners work as if their job is to prevent trademarks from getting registered, while others seem to see their job as helping applicants get their trademarks registered. When we see an Examiner suggesting to the applicant that their trademark could be registered on the Supplemental Register or offering to disclaim words that must be disclaimed, we are looking at a helpful Examiner who takes their job seriously as a proponent of US Commerce.
Trademark prosecution is tricky and is not a do-it-yourself project. Responding to Office Actions makes or breaks the application. If you don't respond, the application goes dead. Going through the Trademark database, I have seen a lot of applications that would have been successful if only the applicant or their lawyer had responded to the Office Actions. I see a lot of supposed trademark lawyers who simply don't respond. Maybe they are not being paid for a reply or maybe they don't know what they are doing.
A strong, registered trademark is a very valuable asset to a law firm. Choosing a strong trademark and getting it registered is a fine art. About 50% of trademark applications are rejected or go dead. It's most helpful to choose the proposed trademark very carefully, analyze it for conformity to the trademark rules, and do a solid search. Before the application even is submitted, the trademark lawyer will have done significant, complex work.
Photo by Erik Mclean on Unsplash