PHILADELPHIA – A local law firm continues to seek review of an order which struck down its attempt to cancel a Bucks County-based firm’s trademark surrounding the phrase “Education Lawyers," in reference to both of their areas of legal expertise.
Montgomery Law, LLC of Philadelphia first filed suit in the U.S. District Court for the Eastern District of Pennsylvania on Jan. 9 versus Jacobson & John, LLP, of Doylestown.
By way of background, Jacobson & John filed to register the mark “THE EDUCATION LAWYERS” on Jan. 17, 2018, under the International Class 45, describing its services as “legal services” – and that mark was registered on Aug. 21, 2018 under U.S. Trademark Registration No. 5545212.
“Plaintiff, a law firm practicing in the field of education law, uses the words ‘education lawyers’ to describe the legal services it offers. Education law is a recognized, distinct area of law. Lawyers who practice within this field are commonly – unavoidably – referred to as ‘education lawyers.’ Defendant’s website, as does plaintiff’s, describes lawyers within the firm as ‘education lawyers.’ Numerous law firms in the United States use domain names and general descriptions that include ‘education’ and ‘lawyer’ to describe legal services offered in the field of education law. Such terms are used for advertising as well as for general trade purposes,” the suit stated.
“Defendant J&J has sought, and continues to seek, to misuse its registration against plaintiff, and presumably other legal professionals, as a means to thwart perfectly lawful and commercially valuable descriptive speech – i.e., to use federal registration precisely in the improper manner anticipated and prohibited by courts and the United States Patent and Trademark Office. The dispute between the parties began when J&J sent Montgomery Law a cease-and-desist letter demanding that Montgomery Law stop using the domain name www.educationlawyers.com and stop all use of “education lawyers.” Preventing Montgomery Law from using “education lawyers” and the domain name www.educationlawyers.com would harm Montgomery Law and the public by inhibiting competition in the sale of particular services, and by depriving the public of the freedom to use descriptive language to advertise or describe their own services. J&J wielded its registration like a club to hinder competition despite its trademark being an improper appropriation of generic terms.”
The suit provided that after lengthy negotiations with the defendant to come to a resolution on the matter of the parties’ respective uses of the disputed mark, which were unsuccessful, the plaintiff initiated a proceeding in the USPTO, seeking the cancellation of the registration, on or about March 6, 2023 – which was based on two legal grounds under the Lanham Act.
“The first ground is that the term ‘education lawyers’ with or without the article ‘the’ at the beginning, consists of two generic terms that refer to the type of service being offered. A term is generic, and not entitled to trademark status, if ‘it refers to the class or category of goods or services on or in connection with which it is used.’ The second, discrete and independent, ground for the cancellation of the registration is that the mark is merely descriptive of a feature of defendant’s services. The major reasons for not protecting descriptive marks are “(1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products,” the suit said.
“The mark ‘THE EDUCATION LAWYERS’ is highly descriptive, requiring a higher level of proof to show secondary meaning. Yet, J&J submitted in support of the registration only the barest of evidence – an unsubstantiated statement that it has made ‘substantially exclusive and continuous use’ of the words ‘education lawyers’ mark for five years, since at least Jan. 17, 2013. That statement is false and easily contradicted. Numerous law firms, including plaintiff, use the terms ‘education lawyer(s)’ to describe legal services offered in the field of education law. Moreover, J&J has never put forward any evidence to show that its use of THE EDUCATION LAWYERS has been continuous and substantially exclusive.”
On Nov. 9, 2023, the USPTO’s Trademark Trial and Appeal Board (TTAB) denied plaintiff’s petition, Cancellation No. 92073600, to cancel U.S. Trademark Registration No. 5545212 [for “THE EDUCATION LAWYERS”].
According to the plaintiff, the Board’s decision “denying cancellation of the registration was plainly based not on the strengths of defendant’s positions under applicable laws, but on the perceived lack of sufficient evidence in the record to support plaintiff’s case” and that “some of the Board’s exclusions of plaintiff’s evidence were in error.”
“In one instance, the Board, in a partial grant of defendant’s motion to strike, struck the testimony declaration of Joseph Montgomery and Exhibits 1 and 8 thereto, as well as the testimonial declarations of four experts, in each case for ‘being signed and executed outside of petitioner’s testimony period.’ But defendant had never moved to strike the declarations on that ground. Instead, defendant’s motion to strike argued that the declarations were out of order because they had been introduced by plaintiff too late in the proceedings and had not been pre-announced as part of plaintiff’s initial disclosures. The Board was entitled to waive the irregularities complained of by defendant, and effectively did so by rejecting defendant’s grounds for striking the testimonial declarations. Instead, the Board took issue with the dates on which the subject declarations were executed, and thereby committed error,” the suit stated.
“Similarly, the Board excluded from evidence the dictionary definitions of ‘education’ and ‘lawyer’ offered by plaintiff, essentially on the ground that plaintiff had not authenticated the dictionary entries. ‘Petitioner references these definitions but gives no indication whether the dictionary entries were retrieved online or from a printed format, has not properly made them of record during its trial period.’ But the Board could have taken judicial notice of those definitions, without need of a motion or request from plaintiff. Plaintiff has substantial additional evidence to submit in favor of its positions on the proposed cancellation – both evidence that was offered in the Board proceeding but not entered into evidence by the Board as part of that proceeding, and evidence that has yet to be offered in the cancellation suit.”
On March 11, counsel for Jacobson & John, LLP motioned to dismiss the case, for failure to state claims upon which relief could be granted.
“By the time plaintiff initiated this new action in January 2024, defendant’s mark reached five-year incontestability status pursuant to the Lanham Act (15 U.S.C. Section 1065). Here, J&J filed its Section 15 affidavit with the USPTO on Dec. 1, 2023, thereby acquiring incontestability status for its mark. As such, the mark can no longer be challenged on ‘mere descriptiveness’ grounds, and therefore, any such claims and contentions must be dismissed with prejudice,” the dismissal motion stated, in part.
“Moreover, in its second and third causes of action pled in the complaint, Montgomery Law advances a specious claim of unfair competition. It is specious because it is based entirely on J&J’s assertion of its registered trademark rights under the mark. But the mere exercise by a trademark owner of rights under a registered trademark, against a potential infringer of the trademark, is not sufficient to state a claim for unfair competition, and accordingly these claims should also be dismissed.”
UPDATE
In an April 8 response to the dismissal motion, plaintiff counsel argued that incontestability could not be adjudicated in such a motion and that a claim of incontestability was without merit – and requested the motion be thrown out.
“Plaintiff’s complaint seeks a de novo review of the final decision of the Board; and asserts claims for unfair competition under Section 43(a) of the Lanham Act, and the common law of the Commonwealth of Pennsylvania,” the response filing stated.
“Defendant now asserts, after plaintiff has duly exercised its right, prior to the expiration of five years from the effective date of the registration, to challenge the registration before the Board on any of the grounds set forth in 15 U.S.C. Section 1064, and has timely exercised its right to appeal the subsequent decision of the Board by commencing the present action, that defendant can short-circuit the statutory scheme for such a challenge by the mere filing of an affidavit of incontestability in the narrow window of time between the Board decision (Nov. 9, 2023) and the filing of this appeal (Jan.10, 2024). Plaintiff contests not only defendant’s compliance with the requirements for acquiring incontestability for defendant’s mark, but also defendant’s interpretation of the effect of the filing of its Section 15 affidavit under the Lanham Act.”
For three counts of cancelling a registered trademark and unfair competition under both federal and state law, the plaintiff is seeking the following relief:
• An order reversing and vacating the Board Decision denying the petition of cancellation, pursuant to 15 U.S.C. Section 1071(b);
• An order cancelling defendant’s U.S. Trademark Reg. No. 5545212;
• A declaration from this Court that plaintiff’s use of “education lawyers” and its domain name www.educationlawyers.com do not infringe on the trademark rights or any purported rights of defendant; and
• Actual damages, incidental damages, consequential damages and punitive damages to punish defendant for unfairly competing with plaintiff;
• An injunction preventing defendant for engaging in any further unfair competition with plaintiff; and
• All such other relief as this Court deems appropriate.
The plaintiff is represented by Joseph Montgomery of Montgomery Law, in Philadelphia.
The defendant is represented by Gene Markin of Stark & Stark, in Hamilton, N.J.
U.S. District Court for the Eastern District of Pennsylvania case 2:24-cv-00108
From the Pennsylvania Record: Reach Courts Reporter Nicholas Malfitano at nick.malfitano@therecordinc.com