Trademark Protection Isn't Available for 'Merely Descriptive' Marks
Here is an example of a poor judgment with regard to spending money on legal fees. In a nutshell, a popular legal blogsite Lawyerist.com filed suit to invalidate two trademarks registered by another popular legal site, Technolawyer. The trademarks in question are "BigLaw," and "SmallLaw," which Technolawyer uses as nicknames to classify AmLaw 100 law firms at large, versus small and medium firms that don't have offices in 17 countries worldwide.
The issue is that trademark law—which is set forth in the Lanham Act of 1946 (Title 15 of the United States Code)—does not afford exclusive protection for marks (terms, phrases, etc.) that are merely descriptive, which, arguably is the case with BigLaw and SmallLaw. When a mark is deemed merely descriptive, the mark's owner can only get protection of that mark if it has acquired secondary meaning. Secondary meaning "denotes an association in the mind of the consumer between the trade dress or name of a product and a particular producer.”
In the lawsuit, Lawyerist claims that at least seven other legal websites use the terms BigLaw and SmallLaw, and if that's the case, it would seem that the marks are not worthy of trademark protection. Having said that, this is a situation in which you should weigh the pros and cons of making a federal case out of something. Why? Because it's expensive, and because there isn't much upside if you win. If the court invalidates Technolawyer's trademarks, there isn't a recognizable monetary benefit available to Lawyerist. And on top of that, they will spend hundreds of thousands in legal fees to achieve that result.
Lawyerist seeks the following relief:
a. A declaration that Lawyerist’s use of the phrase―small law‖ and the terms SmallLaw and BigLaw does not infringe on PeerViews’s trademarks;
b. Cancellation of the trademarks SmallLaw and BigLaw;
c. Costs of litigation and reasonable attorney fees; and
d. Such other and further relief as this Court deems just and proper.
NB: Just because Lawyerist asked for the court to award them attorneys' fees doesn't mean they'll get it. This is a situation where just because you can do something, that doesn't mean that you should. If I were counsel for Lawyerist, I would probably have advised them to sit tight, and wait to see whether Technolawyer files an infringement suit against them. (I don't subscribe to the old adage that it's always better to be a plaintiff than a defendant.) My position could be different if I were only interested in generating revenue for my law practice. The irony is that you would think that a bunch of attorneys would be insightful enough to figure this all out on their own.