IP Law Daily, TRADEMARK—TTAB: Thought leadership program providing global legal and business guidance held to constitute legal services, (Oct 19, 2022)

By Matthew Hersh, J.D.

The program by law firm Meyer Brown qualified as legal services even though it was not intended to resolve specific issues facing specific clients.

A trademark examiner wrongly concluded that law firm powerhouse Mayer Brown was not providing legal services under the applied-for mark 10HUNDRED when it offered to the general public a series of audiovisual presentations on “global legal and business issues” through its web portal, the Trademark Trial and Appeal Board has ruled in a non-precedential opinion. The Board, in a ruling that may be of interest to legal ethicists as well as trademark specialists, emphasized that legal services is a term that encompasses more than simply the provision of advice tailored to address specific issues of particular clients (In re Mayer Brown LLP, September 30, 2022, Shaw, T.).

The dispute arose when Mayer Brown sought registration on the Principal Register for the term 10HUNDRED, in standard characters, for services identified as “legal services; legal advisory and consultancy services,” in International Class 45. The 10Hundred program, which was developed in 2020, was described to the PTO as a program presenting “global legal and business guidance on the top 10 key issues and pivotal developments that could affect businesses during a rolling 100-day period.” (Perhaps not surprisingly, the program currently headlines issues surrounding the Ukraine crisis.) The material is offered in a variety of formats through the “10Hundred Series portal” which, according to the firm, features “thought leadership, legal updates, videos, podcasts, webcasts and live newsfeeds on global legal and business issues.”

A trademark examining attorney denied the proposed registration, finding that the proposed mark had not been used in commerce for the provision of legal services or legal advice, the category for which the mark was proposed. This appeal followed.

Provision of legal services. The Board reversed the trademark examiner, finding that the 10Hundred program did, in fact, constitute the provision of legal services or legal advice. The trademark examiner, drawing a distinction the provision of legal services or legal advice, on the one hand, and the provision of “legal information” on the other, found that the 10Hundred program fell into the latter category. In the examiner’s view, the provision of legal services or legal advice constituted services performed by an attorney for a client that provided “a detailed examination of the law as it pertains to a person’s unique circumstances.” Because this program was designed for general consumption, and not for the resolution of specific client issues, the examiner concluded, the mark was not being used for the category in which it was tendered.

The Board disagreed. The examining attorney’s limitation of the term legal services only to instances necessitating observance of an attorney-client privilege, the Board notes, “was overly narrow and restrictive, elevating form over substance.” The practice of law, the Board noted, encompasses many different aspects of client counseling, and not all of them require attorney-client privilege—indeed, licensed attorneys may well work on matters that do not, strictly speaking, comprise the practice of law. In the Board’s view, Mayer Brown provided the 10Hundred service in order to provide clients and prospective clients with useful legal information which they could us in their businesses. “Providing clients with such information before problems arise,” the Board emphasized, “is the hallmark of good counsel.” Thus, the examining attorney’s ruling was reversed.

The case is Serial No. 90044407.

Attorneys: Edward Germick for the USPTO. Michael D. Adams (Law Office of Michael David Adams, PLLC) for Mayer Brown LLP.

Companies: Mayer Brown LLP

Cases: Trademark USPTO