Authored By Haviland Macy Marie Kebler Esq. & Samantha Pendley
In December 2017, Morgan & Morgan applied for a Federal Trademark Application with the United States Patent and Trademark Office (“USPTO”) for the #LAW word mark. This Application has sparked a five (5) year battle with the USPTO over the registrability of the #LAW. Known as what may be the largest injury law firm in the United States, Morgan & Morgan was founded in 1988 and is headquartered in Orlando, Florida. The firm has expanded to over eight hundred (800) attorneys and has become fairly well known for somewhat sensational advertising. Many of these advertisements include a contact phone number with #LAW.
In the Trademark Application, the Firm claimed acquired distinctiveness under the Trademark Manual of Examining Procedures Section 2(f) Rules providing evidence that consumers would automatically establish a relationship between the #LAW word mark and the source, Morgan & Morgan. Within eight (8) months, the USPTO’s Examining Attorney issued a Non-Final Office Action refusing Registration of the #LAW word mark stating that it is merely descriptive of the Legal Services and that their evidence of acquired distinctiveness was not sufficient. Morgan & Morgan in turn provided additional evidence and arguments attempting to overcome the Refusal.
In total, the USPTO issued six (6) Office Actions between 2017 and 2022, further refusing the #LAW word mark from registering as a Federal Trademark. Unwilling to surrender, Morgan & Morgan appealed to the Trademark Trial and Appeal Board (the “Board”) in hopes that fresh eyes would agree with their acquired distinctiveness claims. Unfortunately, after Briefs were submitted, the Board released a Precedential Decision on November 09, 2022 ultimately affirming the Refusal that the #LAW word mark fails to function as a Trademark, noting that the # did not add significantly to the Mark, and ending the battle for Registration with the USPTO.
However, the fight for the #LAW Mark has continued. within two months of the Board’s Decision, denying that Morgan & Morgan may own exclusive rights to the #LAW, Morgan & Morgan filed a Complaint on January 11, 2023 in the United States District Court for the Middle District of Florida. The Complaint is filed against the USPTO and Kathi Vidal in her capacity as the USPTO’s Director praying for relief in the form of the reversal of the Board’s Decision and otherwise awarding them as the Court deems just and proper.
The complaint includes evidence of resources expended in advertising the #LAW word mark as a phone number and not just a social media hashtag. The lawsuit has been assigned to Judge Anne C. Conway and Magistrate Judge David A. Baker and is one to keep eye on closely, especially for understanding the registrability of hashtags with the USPTO.