South-Western Legal Studies in Business

Common Terms in Domain Name Are Generic for Trademark Purposes
Description

Appeals court held that the owner of the website www.lawyers.com could not trademark lawyers.com as a service mark because that term was in common use and referred to many providers of assorted legal services.

Topic Intellectual Property
Key Words

Service Mark, Generic, Test, Domain Name

C A S E   S U M M A R Y
Facts

Reed operates the website www.lawyers.com. It first used the mark in 1998 and applied to register lawyers.com as a service mark. The examining attorney at the Trademark Board refused to register the mark because it is generic. Reed appealed and the Board affirmed, agreeing that it was generic. Reed appealed that decision.

Decision

Affirmed. Under the Lanham Act, an appeals court may review a determination of whether a mark is generic or not. The test for that is first, the genus of goods or services at issue and, second, whether the terms sought to be registered is understood by the relevant public primarily to refer to that genus of goods or services. Reed attempted to limit the use of its mark to certain services offered on its website, but that does not work. Many websites contain lawyer.com or lawyers.com in their domain names. Given its common use, Reed could not capture it.

Citation

In re Reed Elsevier Properties Inc., ---F.3d--- (2007 WL 1086403, Fed. Cir., 2007)

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