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Attorneys

Departing Partners: Is Their Name a Protected Trademark

May 8 2007

Departing Partners: Is Their Name a Protected Trademark

By: Dale C. Campbell

There always has been a few simple things to do when a named partner leaves a law firm: change the name of the firm, stationery and business cards, and send a notice to clients. Today, additional tasks include changing web page domain names, email addresses, and websites. Is that enough? One intellectual property attorney in Pennsylvania thought not and filed suit against his former firm alleging violation of federal and state unfair competition and trademark law and the federal Anti-Cybersquatting Consumer Protection Act, among other causes of action.

The plaintiff, and departing partner, was M. Kelly Tillery (“Tillery”). Tillery brought his suit against his former law firm, now renamed Leonard & Sciolla (the “Firm”). Tillery was once a named partner of the Firm. The Firm changed its name, letterhead, business cards, and advertisement. The Firm also changed its domain name to remove reference to Tillery and edited its website to remove Tillery’s name and delete the link to his resumé. Nevertheless, Tillery sued, claiming he had a protectable trademark in his name and that the Firm infringed his trademark because the Firm retained the old domain name “leonardtillery.com.” Even though the Firm changed its domain name to “leonardsciolla.com,” it continued to maintain the domain name “leonardtillery.com,” but created a link redirecting users from that domain name to the new website with the new domain name. Tillery argued that continuing to utilize the domain name “leonardtillery.com” constituted a violation of his trademark rights. The source code of the Firm’s website still contained Tillery’s name, including in old press releases as well as cashed web pages stored by Google included his name and photographs.

Tillery brought a motion for preliminary injunction. The United States District Court, Eastern District of Pennsylvania denied the preliminary injunction on the grounds that Tillery did not prove a likelihood success, but addressed several issues of interest to practicing attorneys. (Tillery v. Leonard & Sciolla, 437 F.Supp.2d 312.)

Personal names can become protected trademarks, but are considered “descriptive” and, as such, the owner must be able to establish a showing of distinctiveness and secondary meaning. A name acquires secondary meaning “‘when the name and the business become synonymous in the public mind’ and secondary meaning ‘submerges the primary meaning of the name of the word identifying a purpose, in favor of its meaning as a word identifying that business.’” (Tillery, supra, 437 F.Supp.2d at 321, citing to McCarthy on Trademarks, 13.3.)

Tillery failed to satisfy his burden in connection with the motion for preliminary injunction. The evidence established that Tillery only used his name in conjunction with the names of his partners and never used his name alone to market his services. Tillery also had not submitted any survey evidence to establish evidence of secondary meaning. Tillery did not cite, and the court could not find, any authority granting trademark protection to a lawyer’s name used solely in connection with the provision of legal services.

The Court, in further analyzing Tillery’s claims of trademark protection, conducted the analysis required by Checkport Systems v. Checkpoint Software Tech., 269 F.3d 270, 280 (Third Cir., 2001) to analyze the likelihood of confusion. These factors are similar to the factors described by the Ninth Circuit in AMF Incorporated v. Sleekcraft Boats, 599 F.2d 341, 348-49 (Ninth Cir., 1979). The Court’s analysis of those factors further established that Tillery did not have a likelihood of success.

The Court further determined that Tillery had failed to establish any irreparable harm. In fact, in the balancing of the equities, the Court found that the Firm’s continued maintenance of the domain name “leonardtillery.com” as well as redirecting any emails sent to its employees at that same extension would burden the Firm far greater than any burden upon Tillery. Tillery could not explain how he was harmed when an employee of the Firm received an email addressed to that person ending with “@leonardtillery.com.”

The Court’s decision in Tillery v. Leonard & Sciolla provides guidance to law firms in the ever-changing area of law firm management concerning appropriate steps to take upon the departure of a named partner and what, if any, residual rights it may have in its past use of domain names and email extensions. The California Rules of Professional Conduct address the issues related to the use of a former partner’s name in the firm name, but are silent as to the more modern uses in connection with websites and domain names. Care should be taken to promptly evaluate these issues upon the departure of a named partner.