For Better or Worse, Lawyers Are Integral to Information Exchange About Legal Services

In Re Reed Elsevier Properties Inc., [06-1309](April 12, 2007)[MAYER, Schall, Bryson] The Federal Circuit affirmed the TTAB's decision denying Reed Elsevier registration of the mark LAWYERS.COM, because the term was generic.
BRIEF: The PTO may not register marks that are merely descriptive and incapable of designating source. LOF: Whether a mark is generic is a question of fact. The Federal Circuit noted that the PTO has the burden of proving genericness, and can do so with any competent source including purchaser testimony, consumer surveys, dictionary definitions, trade journals, newspapers, and other publications. The Federal Circuit found it abundantly clear that LAWYERS.com is generic for the services in Reed Elsevier's application. The Federal Circuit rejected the argument that the term was not generic of the narrowed description of services, which was still law related, finding for better or worse, "lawyers are necessarily an integral part of the information exchange about legal services."