So last week, I received my first ever cease and desist letter.
This one came from FisherBroyles, an Atlanta-based law firm, ordering my law firm (erroneously referred to as “CE” in the letter) to “cease and desist from any further willful and unauthorized use of the mark “LAW FIRM 2.0.” Fisher Broyles attached a screenshot from my website which offhandedly references the term Law Firm 2.0 — not as a tagline or branding convention but descriptively — to connote a modern, forward-thinking and interactive law firm, just as the phrase traditionally has been, and continues to be used.
My use of the phrase Law Firm 2.0 wasn’t an attempt to copy FisherBroyles. In fact, it’s been part of my website long before I ever knew of FisherBroyles’ use. The Wayback Machine places my website use at least as far back as August 9, 2009 -; (I believe that I’ve used the term to describe my firm even longer but can’t locate further documentation). My website’s use of the phrase Law Firm 2.0 pre-dates FisherBroyles’ service mark registration application – and while according to the application, Fisher Broyles first used “Law Firm 2.0” mark in commerce in September 2008, I’ve not been able to find any legacy websites or other advertising material showing FisherBroyles’ use of Law Firm 2.0 mark prior to 2009 (that’s not to say the materials aren’t out there- at a minimum they were attached in the trademark application which I can’t access. It’s just that I’ve not been able to find any other evidence on line of FisherBroyles’ use of the law firm 2.0 mark prior to 2009 – which makes me wonder how widespread FisherBroyles’ use was at the time it filed its service mark application).
In any event, based on all of this, I informed FisherBroyles that I would not remove the phrase Law Firm 2.0 from my website. At a minimum, my firm’s use of the phrase Law Firm 2.0 pre-dates the Fisher Broyles’ trademark application, and was used in a descriptively, as shorthand for my firm’s forward-looking, technology-driven practices rather than as a tagline or a branding phrase. Moreover, any effort by Fisher Broyles to enforce its service mark against my use would fail because there is no likelihood of confusion under the oft-applied Polaroid factors, as discussed below:
- Strength of the FisherBroyles trademark – The strength of a trademark is determined in part by where it falls on the distinctiveness spectrum, which ranges from fanciful (most distinctive) to generic (least). Given that the phrase Law Firm 2.0 is widely used as a shorthand to describe a modern law firm practice, Law Firm 2.0 isn’t particularly distinctive or strong.
- Degree of similarity between the two marks at issue Although both FisherBroyles and my firm use the same phrase “Law Firm 2.0,” Fisher Broyles uses it as a tagline, whereas for my firm, it’s simply descriptive of my practice.
- Similarity of the goods and services at issue Both FisherBroyles and my firm offer legal services, but that’s where the similarity ends. Since its inception, the Law Offices of Carolyn Elefant has focused on a wide range of energy related issues and is widely recognized in the energy sector, Fisher Broyles does not even have an energy practice
- Evidence of actual confusion None that I can find. If you search Google for “Law Firm 2.0,” Fisher Broyles comes up on the first page, along with a host of other blogs and articles discussing the law firm 2.0 phenomenon. My firm doesn’t come up until the second page. Moreover, if someone searching for “Law Firm 2.0” services, it’s more likely that they’d be seeking an internet lawyer and since I don’t practice in that area, I’d direct them elsewhere anyway.
- Purchaser sophistication Both FisherBroyles and my firm serve businesses and entrepreneurs (in different industries), not consumers. Our clients are savvy purchasers and are unlikely to confuse my firm with Fisher Broyles based on the mention of the term “Law Firm 2.0”
- Quality of the defendant’s goods or services I don’t know much about Fisher Broyles’ services, but the quality of my firm’s services is pretty darn good.
- Whether the defendant’s attempt to register the trademark was in good faith As I said, I’ve been using the term “law firm 2.0” descriptively for seven years. I had no idea that it was Fisher Broyles’ service mark when I started using the phrase (because it wasn’t) and I have no intention of poaching Fisher Broyles’ business because my firm simply doesn’t have the same practice focus.
As I’ve demonstrated, my use of the phrase “Law Firm 2.0” is an entirely lawful and non-infringing use – and I’m fully confident that I’d prevail if I took Fisher Broyles up on its offer to sue me. But as I learned from the Rakofsky case, even an open-and-shut, slam dunk case can take years to resolve and consume resources to hire a lawyer or time if I were to do it myself. In the Rakofsky case, defending my First Amendment rights as a blogger was a sufficiently important principle to stand my ground. But seriously – do I really want to spend the next year of my life in a tug of war over a silly phrase that I use on one page of my website just to prove a point to an arrogant law firm?
What’s more, do I really want to do battle over a phrase like Law Firm 2.0 which quite frankly, is already passe? As I realized since returning from the Future of Law Practice: TBD Conference is that the practice of law is changing as fast as the speed of light. Even a once-forward looking moniker like Law Firm 2.0 is is showing signs of age; with yesterday’s excitement over the interactive nature of the web and client portals and virtual practice has now been eclipsed by complex document automation and wearable technology and big data and the use of chatbots and artificial intelligence to help us serve clients more effectively. My firm implemented a Law Firm 2.0 five years ago and that model is now in our rear-view mirror as we move on to embrace even newer advancements and figure out how to make them work for our practice and our clients.
With my eye on the future, tying my firm down to a seven-year old tagline (more like 70 years in Internet-life) doesn’t make any sense. And in fact, my experience should serve as a reminder to other self-described forward-looking law firms of the importance of staying nimble and chameleon-like these transformative and fluid times, lest we become as entrenched as the practices we are trying to move away from.
And so, my firm has bid Law Firm 2.0 (even as a descriptive phrase) farewell, replacing the phrase with Law Firm 3.0 which more accurately describes what we do and who we are. As for you Fisher Broyles – I guess you win. The past is all yours.