Last week, we wrote about Above the Law’s foray into small firm news. Apparently our title, Above The Law Goes Small Law, got TechnoLawyer feeling insecure about its trademark on the term SmallLaw. According to the take-down notice (PDF) we received today from Kristen McCallion of Fish & Richardson P.C., TechnoLawyer is
concerned that such use will diminish our client’s goodwill in its distinctive SmallLaw trademark, and cause the public to mistakenly believe that the columns to be published by Above the Law, as well as the other publications listed . . . , may be connected or affiliated in some way with, and/or endorsed or approved by, PeerViews [TechnoLawyer's parent company] . . . .
We’re a little confused as to the confusion, here.
The term SmallLaw is pretty descriptive, but if there is anything that makes SmallLaw distinctive, it is the missing space. If TechnoLawyer really thinks small law is too-easily confused with its mark, it has a long list of cease-and-desist letters to send, given Google’s search results for “small law” (from which TechnoLawyer is curiously absent).
We’re also unsure about the state of TechnoLawyer’s goodwill in the first place, given last year’s ABA Blawg 100 vote-buying fiasco.
But hey, we’re fair-minded, so we leave it to you to tell us whether our use of small law confuses you. If you are confused, we’ll change the post. If not, we’ll let TechnoLawyer make the next move.
Lawyerist is a top law practice blog, providing resources on legal marketing, law firm technology, legal careers, and law school. 
Lawyerist is the #1 law practice blog. We write about marketing, practice management, career development, and more.
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1. When you say it without the glottal stop, “SmallLaw” sounds like an obscure town in Sweden.
2. The best part about trademark disputes is you can say, “Your mark is weak, counselor. Weak, I say!”
3. Looks like your PageRank must be doing well.
SmällLaw?
Just don’t forget that the other guys don’t have to show actual confusion. But it still seems difficult to prove likelihood of confusion amongst a batch of sophisticated consumers such as we lawyers are. :)
This is ridiculous. I subscribe to both, but find Lawyerist far more relevant to my practice as a solo than I do Technolaw. They’re feeling impotent and small and a need to try to bully the competition.
Good lord, get some real work done Fish.
I’d be surprised if you get anything more than a nastygram from them, unless you annoy them (by, for example, writing somewhat provacative blog posts).
Moi? Provocative?
I know. Out of character! ;-) I also spelled provocative incorrectly.
I gotta think this blog post was more than they could have hoped for. Now at least one more person knows about their website – and considering the overlap in readers, that is only good for them.
Pat,
I can’t imagine that the Fish & Richardson associate who was paid hundreds of dollars per hour to write me the letter had social media PR in mind.
Then again, odds are good that I’m naive as to the TechnoLawyer master-plan.
Sam,
This reminds me a lot of my iFart v. Pull My Finger case.
Docs: http://www.jdsupra.com/search/searchResults.aspx?sTerm=ifart&x=0&y=0
Daily Show feature: http://houchinlaw.com/2009/07/22/a-laugh-is-worth-a-buck/
What this comes down to is the use of the mark in question. In both cases the mark in question has been used in its “merely descriptive” sense, not in the infringing nature of being used as a brand.
My client used the phrase “pull my finger” in its normal everyday sense. You’ve used “small law” in the same way – not as a brand. In trademark terms, a “brand” is an “indicator of source.”
You are not using “small law” as an indicator of source, so there’s no infringement. Additionally, the trademark in question has arguably become a generic term, or at least merely descriptive of a classification of goods and services, and thus arguably loses the distinctiveness required for protection, unless they can show that there is “secondary meaning” in the marketplace. In this case that secondary meaning would be that lawyers or law clients all know which firm someone is talking about when someone says “SmallLaw.” We don’t.
Don’t cave. If they persist, do what we did with iFart – file for declaratory judgement and start hitting “submit” on blog posts and press releases.
Finally, “SmallLaw” would qualify (IMHO) as a “Lame Name.” They should download the “No Lame Names” ebook and come up with something better.
http://nolamenames.com/
Kevin,
On many levels, I appreciate your comparison of our case to one about fart jokes.
ya, fart jokes never get old.
You should send them a response that says “pull my finger.” :-)
What a joke. This guy is legal scum.
I don’t know much about trademark law but if technolawyer wanted its mark to apply to “Small Law” with the space, wouldn’t they have trademarked “Small Law” also?
Considering how many of these cease and desist letters are getting published on line lately, you’d think their lawyers would find a way to write them that would make them look a little less petty and insecure.
It’s also important to remember that the holders of a Trademark have an affirmative duty to enforce their rights or they risk abandonment. So, sometimes a letter is mailed even if there’s an appearance of possible infringement, just to check the box that the owner did SOMETHING in this instance so that in a future instance the defendant can’t say “you didn’t do anything when lawyerist.com posted…” so you abandoned your mark.
Sorry Kevin – that’s nonsense. They could just as easily have sent an informal newsletter, or Neil could have contacted Aaron by phone. When you send a letter from a $600/hour law firm, you’re trying to send a message. Small law and smalllaw blogs unite – we will not be intimidated.
Thanks for your support, Carolyn!
I’m going to go trademark BigLaw and avenge SmallLawyers everwhere!
Like.
You should also get “S-H—T Law” … thinking back to the Above The Law discussion about a certain small law lawyer that thought it would be good for job seekers to do a little research and not send “Dear Sir or Madame” cover letters.
http://abovethelaw.com/2010/04/trying-to-go-to-a-small-firm-be-prepared-for-a-harsh-rejection/
Although I don’t think the USPTO would allow that…
You’re absolutely correct Carolyn.
I’m not CONDONING the action. I’m just trying to shed some light on what may be a motivation used to justify sending the letter, misguided as it is. I’ve counseled clients to pick up the phone instead of sending letters like this to ask for a favor if they’re upset – usually that works. Picking up the phone also avoids the risk of formal letters about silly alleged offenses always backfire – especially in the world of instant blog posts.
I completely agree it’s nonsense. There are probably several interesting discussion topics in this about the related subjects of how we can cordially meet our affirmative enforcement duties and the ethics of agreeing with a client’s misguided (assuming this wasn’t initiated by the law firm, which may be a big assumption) feelings that their rights have been infringed. Client counseling skills, etc.
What Carolyn said.
Curious as to the anticipated result of using a sledgehammer against a popular blog with lots of similarly popular blogger-readers. Perhaps we can google some similar cases … whoops … I mean “use the Google branded search engine to return relevant query answers from publicly available data on the Internet.”
I needed some humor today. Sometimes you have to just say REALLY?
Aaron, Larry & Kevin – thanks for making me smile :)
LL
Assuming I don’t get sued, I’ll continue to think this is humorous, too.
So “Small Law Firm” “Small Law Practice” “Small Law Blog” Small Law Lawyer” ok, “Small Law”not? Just trying to keep up…
I wouldn’t assume that their lawyers would concede all those other uses either.
This isn’t meant to be legal advice at all, but it’s utterly retarded for Technolawyer to go after Lawyerist’s use of “small law” in an article covering Above The Law’s “Small Law Firm” section. Just completely stupid. Are you using “Small Law” to describe your own services? No. You’re using it to describe ATL’s Small Law Firm column. God.
Ah, Fish and Richardson, bringing the lulz.
I wouldn’t back down on this one either. I think Kevin hits the nail on the head (or pulls the finger?). No brand name usage here.
Small Law, Small Law, Small Law, Small Law. Come and get me Fish & Richardson.
Hmmm, sounds like they just got their 15 minutes of fame…they can go back to being nobody’s now. Just tell them your welcome for the free publicity…and send them a nice basket of cheese to compliment their whine.
Leave it up…
oh and BigLaw is already trademarked (by the same idiots)
http://tess2.uspto.gov/bin/showfield?f=doc&state=4003:msnidb.2.2
Anywho my fiance is laughing right now over this and he is an Intellectual Property attorney.
INCOMING!
(Watch out for falling takedown notices.)
Ha!
Well I agree with the others who have stated this is hogwash, it’s just a jealous competitor.
Keep up the good work my friend! You rock, they suck.
Confirms what I already thought of TechnoLawyer and Fish…Not much on either count. If Fish were any good they would have counseled TL not to do something this stupid.
Bill, but then how would they get paid their hourly rates for writing these letters?
I wonder if they’re paid for the letters at an hourly rate or if they have a fee agreement for x number of letters until they can start billing hourly or some other arrangement.
Plus I think BigLaw and SmallLaw have been in use for many many years all over the web – including on FindLaw’s associate board system for at least 10 years. Good luck with that trademark.
While they’re at it, I’ll give them a new target for their C&D:
http://blogs.wsj.com/law/2010/02/16/while-biglaw-lays-off-smalllaw-reinvents/
Let’s see how ready they are to lawyer up and enforce their trademark.
You’d figure that TechnoLawyer would have BiggerFish to fry …
Genericide!
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