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.

<a href="">Are You Confused by the Phrase "Small Law"?</a>


  1. Steven Appelget says:

    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.

  2. 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. :)

  3. Patricia Buss says:

    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.

  4. JBS says:

    Good lord, get some real work done Fish.

  5. Larry Port says:

    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).

  6. Kevin Houchin says:


    This reminds me a lot of my iFart v. Pull My Finger case.
    Daily Show feature:

    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.

  7. bill says:

    What a joke. This guy is legal scum.

  8. 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.

  9. 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 posted…” so you abandoned your mark.

  10. 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.

    • Sam Glover says:

      Thanks for your support, Carolyn!

      I’m going to go trademark BigLaw and avenge SmallLawyers everwhere!

    • 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.

    • Mike Moore says:

      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.”

  11. I needed some humor today. Sometimes you have to just say REALLY?
    Aaron, Larry & Kevin – thanks for making me smile :)


  12. So “Small Law Firm” “Small Law Practice” “Small Law Blog” Small Law Lawyer” ok, “Small Law”not? Just trying to keep up…

  13. William Chuang says:

    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.

  14. Ben Bunker says:

    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.

  15. Chrissy says:

    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)

    Anywho my fiance is laughing right now over this and he is an Intellectual Property attorney.

  16. Bill Simms says:

    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.

  17. Walter Mitty says:

    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.

  18. VT says:

    While they’re at it, I’ll give them a new target for their C&D:

    Let’s see how ready they are to lawyer up and enforce their trademark.

  19. Mark Cohen says:

    You’d figure that TechnoLawyer would have BiggerFish to fry …

  20. Woody Wainright says:

    With litigation-mode conduct like this, It would appear that Neil J. Squillante is looking to downsize TechnoLawyer’s subscription base.

    Brilliant move!

  21. Melissa says:

    I wonder if F&R is billing TechnoLawyer by the hour as it reads these comments.

  22. GULC IP says:

    Love the pre-emptive survey of non-confusion. Way to CYA.

  23. Timothy D. Belcher says:

    I love BS letters from big defense firms. Keep up the good work!

    PS I just removed technolawyer from my rss feed

  24. PO says:

    Next, they will trade mark “small mindedness”, and similar, to reduce criticism.

  25. jrtjrt says:

    Of course you must do whatever Fish&Richardson lawyers tell you to do. These IP experts would NEVER prostitute themselves or engage in overreaching behavior. I’m sure you are familiar with famous trademarks such as KODAK, CAMEL and XEROX. Well, the arbitrary trademark smallaw for small law firm advisory services is an obvious cantidate to join this select company of trademarks. Especially since this highly distinctive trademark has been in use for such a long, long time- since 2009! And over 1 million, excuse me ten thousand, lawyers have some familarity with the term smalllaw.
    But your gravest sin, and the one for which you must immediately repent, is that you exercised your FIRST AMENDMENT right to engage in non commerical reporting on a matter of interst to lawyers. Especially small firm lawyers.
    Please be aware, as I’m sure the IP experts will tell you, that in any clash involving vitally important commercial rights to highly inventive terms like smalllaw and some trivial assertions of the First Amendment, then vital commercial interests, must, of necessity, prevail.
    So how can you properly repent? Sorry to tell you this but too much harm has been done. Not only must you remove the link to the ABOVE THE LAW article, you must also change the name of your blog site. I leave it to you to decide your new name. Perhaps you might consider FISHERIST

  26. Jim Burke says:

    I have to say this strikes fear into my heart. I have occasionally used the phrase “small firm” on my site and in promotional materials, and I have done it in a context where it’s obvious that I’m talking about small law firms. I now see that some readers might have read the word “law” into the phrase “small firm,” become hopelessly confused, and what’s worse, caused me to breach a trademark. I sure hope not. I can’t afford a multi–hundred-thousand-dollar legal battle over this. Maybe if mounts a vigorous defense to repel this attack, the owners of SmallLaw won’t notice my unintended infringements. Get in there and fight, guys.

    On another aspect of this, I just ran a google search for “small law” and the top result was an ABA page on small law firms. Looks like the ABA is going to have to clean up who knows how many pages of copy. No doubt they got the same letter that received.

  27. mom says:

    Adjective vs noun? Not at all the same thing. Can’t expect anybody who uses a name like TechnoLawyer to have any sense of grammar, I suppose.

  28. Larry Port says:

    At the risk of being tarred and feathered by the mob, I feel compelled to mention that I’ve met Neil and he’s a fundamentally good guy. Not the best idea to send a C&D, but he threw great parties at LegalTech NY.

  29. Alexis Neely says:

    I’m confused – where is TechnoLawyer using the Small Law brand and what are they really worried about here? I’m hoping that the lawyer who sent this letter from Fish and Richardson is just a friend not charging for this silliness. If they really want to protect their trademark, maybe they should begin using it. And this would be a great time now that there is all this buzz!

  30. Ryan says:

    To prevail on a TM infringement claim, they need to show: Priority; and Likelihood of Confusion. Get a license from someone who has priority over them, and send them a Cease and Desist letter right back. I believe Carolyn Elefant has superior/prior rights in the mark.

    • Aaron Street says:

      Ryan, but that implies that the term is even capable of being trademarked. I’m no expert, but this sure seems like a “descriptive” mark to me.

      • Since it’s a registered trademark, there is a “presumption of validity” (at least at the time of registration) giving the plaintiff both the presumption of priority and the presumption that the mark is distinctive enough to be protectable. This mark has not been in use for 5 years after registration, so the presumption has not yet become “incontestable,” but the presumption of validity still applies. The presumption of validity shifts the burden of proof to the defendant to invalidate the mark rather than the burden being on the plaintiff to prove that rights had vested through priority of use in commerce and the minimum level of distinctiveness required for protectabilitty.

      • Granted, I don’t think the USPTO should have seen this as distinctive enough for protection, nor even a priority of use, but they did and the registration issued. Accordingly, the burden shifts and the starting point is an assumption that the plaintiff has enforceable rights.

        In this case, the first defense is that you’re not using the mark. Second, that your use is not in the sense of a trademark (indicator of source), but rather in the merely descriptive everyday use of the terms. Third, that the mark has become generic. Fourth, that the mark should never have been granted registration in the first place due to lack of distinctiveness and priority.

        • Oh, and Fifth, there’s no likelihood of confusion as to the source of the goods & services, endorsement, affiliation, yadda yadda yadda… given all the 14 or so factors that go into that analysis, which I won’t look up or bore you with here. :-)

          • john richard says:

            If this were a law school exam you would have points taken off for too quickly applying legal rules without recognizing the underlying principles that(in theory) justify those rules. If I right an article about how PC WORLD magazine has decided to focus on IBM brand computers, that is conduct TOTALLY outside the realm of trademark law. Presumptions of validity blah blah blah don’t apply UNTIL I engage in the commercial use of a symbol.
            The ONLY letter that the smalllaw folks might have written to Lawyerist would have been a request to identify the term smalllaw as the property of Peer Views in the article. To repeat, writing an article describing a third parties use of a term is not trademark use.

            And of course the IP experts are aware of this. So when they are approached by an upset client they explain that it is improper to overreach. The letter is never written. Proper rules of competiton are honored. And the legal profession is not diminished by yet more well deserved criticism.
            One can dream

        • Sharra says:

          Could you please post this comment over at ATL, Kevin? Things are already getting ridiculous over there.

  31. What this shows by TechnoLawyer is that it is clueless on how to drive in this new social media driven economy. Here’s a tip for TechnoLawyer, free of charge:

    When someone else is kicking your butt in the marketplace, the proper response is to learn from the competition by improving your game and delivering a better product … not by hiding behind a law firm to try and keep them from competing with you at all!

  32. Aaron Street says:

    It appears that what this is really about is that TechnoLawyer is upset that we don’t write about them much on Lawyerist:

    “We believe Lawyerist’s actions reflect on good versus bad Internet citizenship, not just trademark law. For
    example, we have linked to 292 Lawyerist articles in our BlawgWorld publication since January 2009,
    including two links in yesterday’s issue. By contrast, Lawyerist has never linked to TechnoLawyer. Not even
    in yesterday’s article, which was about TechnoLawyer.”

  33. Hollis Hanover says:

    Steve Small (Kansas City)calls his firm Small Law Office. For a miserly fee he will sue them into raving madness.

  34. thenambypamby says:

    Who was the genius that granted them this trademark?

  35. Bruce colwin says:

    “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).”

    I’m not qualified to speak to the merits of the case, but doubt whether effective SEO practices should have any impact on rights to the mark, which the above statement from the article seems to imply.

    • Sam Glover says:

      Regardless of the implication you mention, I do find it odd that we got a takedown letter, but TechnoLawyer has apparently ignored near-constant infringement of its trademarks by pretty much every other legal blog on the planet. Like Above the Law’s tweet today, making use of TechnoLawyer’s “BigLaw” trademark.

      • Bruce Colwin says:

        Perhaps they also realized the point you made about their absence from Google search results when you query their mark and wanted to improve their ranking by generating a lot of blog mentions! (I’ll keep an eye out to see if you start using LegalMinds®!)

        BTW, for what it’s worth … my opinion is that it’s ridiculous the trademark was even issued.

        But long as they don’t start

  36. Fish & Richardson probably were the lawyers who told this guy that “SmallLaw” could be trademarked, then he paid them thousands for the privilege of “owning” a generic term which has been bandied about in the common parlance for the last fifty years. Now he’s going to try and protect his mark, right? And the Fish-heads are going to send out their silly “you’re diminishing my client’s goodwill” letter in the hopes that you will simply cave.

    You should definitely not cave. “SmallLaw” is not protectable any more than “Face” is.

  37. the trademark troll says:

    I posted this on my blogsite earlier today.


    Ah the good old days before the Internet. A brand owner could engage in foolish behavior and only a few folks might know of it. But the Internet has changed everything. Now when you do something foolish it goes viral. And you get to look foolish before many thousands. Or millions.

    Just ask the folks at the TechnoLawyer blog. They claim “ownership” of the term smalllaw as a trademark. Recently another blog directed to lawyers, THE LAWYERIST, wrote a benign article about yet a third blog (stay with me here) ABOVE THE LAW, that has decided to expand its coverage to include smaller law firms. In the article THE LAWYERIST used terms like solo-small law or small law not big law in attempting to describe the nature and extent of the ABOVE THE LAW coverage.

    In the old days, a brand owner like TechnoLawyer, whem faced with a perceived editorial misuse of a trademark, would simply ask for attribution. That is, the brand owner might say something like ” The term smalllaw is a registered trademark of____” If you use this term could you please use it properly and acknowledge our ownership”.

    But no. The owners of the registered trademark smalllaw decided to bring out the big guns. ( Hulk Hogan take note). They hired the well known NYC law firm of Fish&Richardson to send an over the top take down letter to THE LAWYERIST.
    Did THE LAWYERIST go quietly into the night? Did they yield to the pressure from bigiplaw? Of course not. They immediately recognized the pr free pass they had been handed.

    THE LAWYERIST blog is currently conducting an informal likelihood of confusion survey. It is asking readers to vote on whether it should yield to the demands of Technolawyer. As of yesterday the vote was 81% no. There were some 65 comments, almost all negative, directed at Technolawyer and its lawyers.

    But let me shift gears. Often, those immersed in cutting edge technology criticize an overwhelmed, undermanned US Patent Office for mistakenly granting overly broad patents that are then used as a club by the luck lottery winner- I mean patent holder. These overly broad patents are eventually overturned. But the time and money involved is a severe drag on innovation.

    The analogy is not perfect.But the shoe does fit reasonably well. Terms like biglaw and small law (or smallllaw) have been part of the cultural legal vocabulary for many years. In the face of this common usage, Technolawyer’s parent company has sought to federally register the terms biglaw and smallaw as trademarks . I would bet a ham sandwich that neither of these terms would survive a serious challenge. But that has not stopped Technolawyer from hoping to win their own lottery. In the bad old days they might have been able to conduct this campaign quietly. But those days are long gone.

    Side note to INTA and AIPLA- re your testimony to Congress. Please see the above. And the many, many, many, many examples of abuse that are a simple Google search from the light of day. It reminds me of the comment heard after a horrific drug related crime. Those living in the neighborhood are often heard to say ” The only people that can’t find drugs around here are the police”.

  38. What a crock. SmallLaw is merely descriptive, if it even functions as a trademark. The examiner rejected it twice for failing to do so. However, after a “Request for Reconsideration,” with no supporting documentation, the mark went through for publication.

    As a manager of a firm in smallaw, as opposed to biglaw, I think that I have standing to move to cancel this registration. Anyone feel the same way?

  39. Erik Pelton says:

    Isn’t the real issue here that – asides from ‘SmallLaw’ being arguably weak – Layerist’s use of the term was not as a trademark or service mark? ‘Small Law” was not used to indicate the source of any product or service. It was used in a post title (with other words) and in the text of the post. The c & d letter states that the use was “to identify on-line publications in the field of legal news and legal practice”, but I disagree. [Personal opinion; not legal advice!]

  40. Thomas Hutto says:

    I think the real damage to their trademark comes with the association with Above the Law.

  41. BL1Y says:

    We discussed this issue on the latest Blind Drunk Justice, and we’re with you guys. Small Law is too generic a term to be trademarked.

    We want to help, and we figure the best way to do that is to dilute the mark as much as possible, by using “small law” whenever we can.

    For instance, suing over the Small Law trademark is totally a small law thing to do.

  42. Karen Grube says:

    I’m sorry, but I don’t find copyright or tradename infringement in the least bit humorous. Drop “Small Law” immediately. You know better than to think that your decision about giving up that phrase in your blog can possibly have anything to do with what your readers think. The so-called “confusion” with the name merely has to be intended to cause confusion, whether it does in reality or not. I strongly believe your exploitation of TechnoLawyers cease and desist order to stop using their “SmallLaw” name and infringe on their “SmallLaw” newsletter makes it clear that this was intentional. But just to be clear about this, I will never stop by your site again for any reason. Why would I? You clearly have little respect for the law.

  43. Bruce Colwin says:

    Interesting, Karen. Just curious if you’re the same Karen Grube that sent an open letter to Sergey Brin vowing “I’ll never use Google again as my search engine” because of what was written on their corporate blog?

    • Bruce Colwin says:

      BTW, here’s what was written on the Google blog that Karen took such offense to …

      Our position on California’s No on 8 campaign

      9/26/2008 03:23:00 PM
      As an Internet company, Google is an active participant in policy debates surrounding information access, technology and energy. Because our company has a great diversity of people and opinions — Democrats and Republicans, conservatives and liberals, all religions and no religion, straight and gay — we do not generally take a position on issues outside of our field, especially not social issues. So when Proposition 8 appeared on the California ballot, it was an unlikely question for Google to take an official company position on.

      However, while there are many objections to this proposition — further government encroachment on personal lives, ambiguously written text — it is the chilling and discriminatory effect of the proposition on many of our employees that brings Google to publicly oppose Proposition 8. While we respect the strongly-held beliefs that people have on both sides of this argument, we see this fundamentally as an issue of equality. We hope that California voters will vote no on Proposition 8 — we should not eliminate anyone’s fundamental rights, whatever their sexuality, to marry the person they love.

      Posted by Sergey Brin, Co-founder & President, Technology

  44. Bruce Colwin says:

    Oops, I guess if she’s never using Google or visiting this blog again, she’ll never see that comment – or engage in any constructive discussion regarding her interpretation of the issue.

  45. BL1Y says:

    Don’t worry about Karen. Because of the Small Law nontroversy, I’ve started reading Lawyerist more. I will try to make up for her lost traffic. And really, never visiting a site again because they had a little fun with trademarks? That’s such a small law thing to do.

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