IP Law Daily, TRADEMARK—E.D. Pa.: Suit seeking cancellation of THE EDUCATION LAWYERS mark survives motion to dismiss, (Aug 15, 2024)

By Donielle Tigay Stutland, J.D.

There were open questions as to whether the mark had reached incontestability status.

A federal district court in Pennsylvania denied a motion to dismiss a lawsuit alleging trademark cancellation and unfair competition between two rival law firms. Montgomery Law LLC (“Montgomery”) brought a suit against Jacobson & John, LLP (“Jacobson”) seeking the cancellation of their registered trademark THE EDUCATION LAWYERS pursuant to 15 U.S.C. § 10641. The court rejected the trademark holder’s defense of incontestability after concluding that there were still open questions as to whether the Section 15 Affidavit filed with the USPTO affirming continued use of the mark for five consecutive years was filed erroneously. Additionally, the court found that Montgomery sufficiently alleged state and federal unfair competition claims at this stage of litigation (Montgomery Law LLC v. Jacobson & John, LLP, No. 2:24-cv-00108-JHS (E.D. Pa. Aug. 14, 2024)).

Background. Montgomery is a law firm practicing in the field of education law. It holds the online domain name educationlawyers.com and uses the words “education lawyers” to describe the legal services it offers. Jacobson is a law firm that specializes in special education law. On January 17, 2018, Jacobson applied to register the trademark THE EDUCATION LAWYERS (the “Mark”) with the United States Patent and Trademark Office (“USPTO”). On August 21, 2018, the Mark was registered under U.S. Trademark Registration No. 5545212.

After negotiations between the parties over the trademark dispute failed, Montgomery sought cancellation of the trademark by filing a petition with the Trademark Trial and Appeal Board (“TTAB”) of the USPTO. Montgomery challenged the registration of the mark THE EDUCATION LAWYERS (the term ‘LAWYERS’ disclaimed) for legal services on the Principal Register owned by Jacobson, claiming that the mark was generic or insufficiently distinctive. In response, Jacobson claimed acquired distinctiveness under Section 2(f) of the Trademark Act based on more than five years of continuous use. On November 9, 2023, following a trial, the TTAB denied Montgomery’s cancellation petition, finding that Montgomery failed to show that Jacobson’s mark was generic or highly descriptive, nor could it refute the claim of acquired distinctiveness secured through five years of continuous and substantially exclusive use.

On January 10, 2024, Montgomery filed a complaint against Jacobson challenging the TTAB’s decision and seeking to have the Jacobson’s Mark cancelled. Jacobson filed a motion to dismiss the complaint.

Incontestability. Jacobson argued that Montgomery could not challenge Jacobson’s Mark because it had reached incontestability status. Under the Lanham Act, a mark may become incontestable if it is not successfully challenged within five years of its registration.

The court explained that “[a] trademark becomes incontestable after the owner files affidavits stating that the mark has been registered, that it has been in continuous use for five consecutive years, and that there is no pending proceeding and there has been no adverse decision concerning the registrant's ownership or right to registration.” Here, Jacobson maintained that its Mark had reached incontestability status pursuant to 15 U.S.C. § 1065. On December 1, 2023, following the TTAB’s decision, Jacobson filed a Section 15 Affidavit with the USPTO affirming continued use of the Mark for five consecutive years following its registration on August 21, 2018. Jacobson argued that because it “filed the appropriate affidavit asserting the Mark has been in use for over five years since registration, the Mark became incontestable prior to [Plaintiff’s] filing of this new action.”

In contrast, Montgomery asserted that if incontestability may be challenged in a motion to dismiss, the claim to incontestability nevertheless is without merit because: “(1) Defendant’s registration of the mark fails the test for incontestability, (2) Defendant’s Section 15 Affidavit is erroneous, and (3) Defendant’s interpretation of § 1065(2) runs counter to the statutory scheme for challenges to a registration.” Specifically, Montgomery maintained that at the time Jacobson filed its Section 15 Affidavit, the Affidavit incorrectly certified the requirement in § 1065(2) that no proceeding involving the Mark existed was met.

Given Montgomery’s allegation that the TTAB maintained jurisdiction over the case and that “Defendant knew well that Plaintiff had been contesting the validity of the [Mark], by formal action, continuously since February 2020, and that there was no indication that Plaintiff would abandon the contest by failing to timely appeal the [TTAB] decision,” a question remains as to whether Jacobson’s Section 15 Affidavit was filed erroneously. The court determined there were sufficient facts alleged to show at this stage of the proceeding that Jacobson’s Mark did not reach the point of incontestability. The court denied the motion to dismiss this claim.

Unfair competition. The court next turned to Jacobson’s motion to dismiss the state and federal law unfair competition claims. Jacobson argued that the unfair competition claims must be dismissed because “Plaintiff’s Complaint is devoid of allegations concerning any false or misleading statements made by Defendant.”

The court highlighted the following elements to establish a Lanham Act claim based on a false or misleading representation about a product or service: “1) that the defendant has made false or misleading statements as to his own product [or another’s]; 2) that there is actual deception or at least a tendency to deceive a substantial portion of the intended audience; 3) that the deception is material in that it is likely to influence purchasing decisions; 4) that the advertised goods travelled in interstate commerce; and 5) that there is a likelihood of injury to the plaintiff in terms of declining sales, loss of good will, etc.” Further, the court noted that the Pennsylvania common law cause of action for unfair competition is “virtually the same” as the Lanham Act. Flynn v. Health Advoc., Inc., 169 F. App'x 99, n.3 (3d Cir. 2006). Courts have found that violation of federal unfair competition under the Lanham Act necessarily warrants a finding of unfair competition under Pennsylvania common law.

Viewing the facts most favorable to Montgomery at this stage, the court found Montgomery sufficiently alleged that Jacobson’s use of the Mark, THE EDUCATION LAWYERS, constituted an effort to deceive the public as to the origin, uniqueness, presentation, or approval of Jacobson’s services. Montgomery alleged that Jacobson used the Mark to “attempt to monopolize the field for such practitioners in eastern Pennsylvania and establish the notion of a specially qualified bar of ‘education lawyers,’ for which only [Defendant] would presumably qualify.” The court concluded that Montgomery sufficiently alleged that Jacobson’s use of the Mark was made with “the specific intention of branding its own attorneys as the only attorneys qualifying for the description ‘education lawyers’” Finding that Montgomery sufficiently alleged the elements of unfair competition under federal and state law, the court denied Jacobson’s motion to dismiss those claims.

The Case is No. 2:24-cv-00108-JHS.

Judge: Slomsky, J.

Attorneys: Joseph Montgomery (Montgomery Law Group, PLLC) for Montgomery Law LLC. Gene Markin (Stark & Stark, PC) for Jacobson & John LLP.

Companies: Montgomery Law LLC; Jacobson & John LLP

Cases: Trademark PennsylvaniaNews USPTO