Senior US District Judge, Norma L Shapiro, a Pennsylvania federal judge, ruled that M. Kelly Tillery’s name was not entitled to trademark protection. Tillery had sued his former firm to eliminate all uses of his name and all mention of his court victories.

“The recognition of individual lawyers’ names as trademarks without a strong showing of secondary meaning could hinder the creation of new law firms (since, unlike other businesses, law firms are traditionally identified by personal names and not fanciful trade names) and the ability of individuals to practice law in their chosen field without changing their names,” Shapiro wrote.

Tillery, she said, “has cited no precedent granting trademark status to a lawyer’s personal name, used only in connection with his individual legal services, and the court could find none.”

Although a person’s name may serve as a trademark, Shapiro found that “they are considered ‘descriptive,’ not inherently distinctive marks, so they are treated as protectable trademarks only upon a showing of distinctiveness and secondary meaning.”

Apparently, Tillery took issue with how his old firm handled their email, new domain name, what cases they handle on their website, and even that a search for his name yielded cached versions of his former firm’s site.

Had he won this case, I can only imagine the implications for named lawyers leaving one firm and moving to another. Their website and email would constantly be in flux. And how firms can be expected to control what Google and other search engines cache is a mystery to me.

Still, it seems from the case that had Tillery had built himself up as an expert and created a personal brand for himself so that strangers knew his name, his case may have had merit.

Source: Lawyer’s Name Not Entitled to Trademark Protection

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