Degidio v. West Group Corp., 191 F.Supp.2d 904 (N.D. Ohio 2002) (full-text) (motion for summary judgment), 205 F. Supp. 2d 806 (N.D. Ohio 2002) (full-text) (renewed motion for summary judgment), aff’d, 355 F.3d 506, 69 U.S.P.Q.2d (BNA) 1538 (6th Cir.) (full-text), cert. denied, 542 U.S. 904 (2004).
Factual Background Edit
Plaintiff registered the “lawoffices.net” domain name and maintained a LawOffices.net website featuring an attorney directory, legal information, a vanity e-mail service, and legal website hosting services. Plaintiff did not own any federal or state trademark registrations for its alleged mark LawOffices.net.
Defendant used the “lawoffice.com” domain name and the “LawOffice.com” designation to market the West Legal Directory, an online legal resource website. The pro se plaintiff filed suit for trademark infringement and dilution, common-law misappropriation, and related state claims.
Trial Court Proceedings Edit
The parties filed cross motions for summary judgment. The court granted summary judgment in defendant's favor on all counts except for the common-law misappropriation claim. Regarding plaintiff's trademark infringement and unfair-competition claims, the court held that plaintiff did not possess protectable trademark rights in "LawOffices.net."
Although "LawOffices.net" had characteristics of both descriptive and suggestive terms, the court ultimately held that "LawOffices.net" was merely descriptive of plaintiff's online legal services. Widespread third-party use of “lawoffice” or variants in business names and websites contributed heavily to this decision. The court also held that plaintiff had not established secondary meaning in the three years it used "LawOffices.net" before defendant began using "LawOffice.com" due in part to plaintiff's limited advertising expenditures, sales, and customers and the lack of any evidence that defendant knew of plaintiff’s mark let alone copied it.
In refusing to grant summary judgment on the misappropriation claim, the court rejected defendant’s argument that the claim for the misappropriation of "trade value" must fail because of plaintiff’s lack of trademark rights. Misappropriation could involve the taking of interests other than protectable trademark rights, and plaintiff premised its claim not on trademark rights but on the "trade value" of the name.
The court later granted defendant’s renewed motion for summary judgment on the remaining claim of common-law misappropriation. It found that plaintiff had failed to demonstrate that he invested sufficient time, effort, and money in the domain name to create a “trade value” capable of being misappropriated.
Appellate Court Proceedings Edit
The Sixth Circuit affirmed the district court’s holding that “LawOffices.net” was descriptive and had not acquired secondary meaning. It rejected plaintiff’s argument that there was no law office that provided an attorney database, and therefore, the district court erred in finding that “LAWOFFICES was merely descriptive of an online database of attorneys. . . .”
The Sixth Circuit noted that clients envision “referrals to specialists, advice on lawyers in other jurisdictions and other legally-related advice” when they visit a law office and that the term “law office” is not changed simply because plaintiff provides the same services through the Internet and a client does not need to visit a physical office. The court also rejected plaintiff’s argument that LAWOFFICES was suggestive and found that the mark was closer to the descriptive end of the spectrum of distinctiveness.
The Sixth Circuit also affirmed the district court’s decision finding that plaintiff had not provided sufficient evidence to establish secondary meaning. The court of appeals emphasized the district court’s findings that: (1) plaintiff’s three consumer affidavits did not provide testimony about whether they identified the website with a particular provider, (2) neither side provided consumer surveys, (3) the phrase “law offices” was widely used, (4) plaintiff spent only $2,500 over four years in advertising, (5) plaintiff generated only $200 in ad revenue in four years, (6) there was no proof of plaintiff’s market share, and (7) there was no evidence that defendant intentionally copied plaintiff’s mark.
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