But That’s My Name: Trademarking Law Firm Names

BY CHAS CARTER AND MICHAEL BARBEE

In 2021, after almost 80 percent of Texas Bar members voted to amend Rule 7.01 of the Texas Disciplinary Rules of Professional Conduct, Texas became the last state to allow trade names for law firms. Now, instead of stringing together surnames, law firms operating in Texas can use trade names so long as they are not “false or misleading.” This change allows firms to choose a name that describes their primary practice area, the size of the firm, or is memorable in some other way. But it also presents new challenges, like how to protect the distinctive identity, reputation, and goodwill of the firm.

The obvious benefit of trade names to law firms is their increased ability to tailor branding and marketing. For example, LawHQ—the Salt Lake City-based law firm behind litigation efforts to strike down trade name prohibitions (including Texas’s) as unconstitutional in 2020—is much easier to remember than its founding partner’s surname, Alvord. This does not necessarily benefit a firm’s reputation in the legal community; rather, it benefits a firm’s ability to memorably identify itself for potential clients.

Allowing law firms to employ trade names endorses (or at least acknowledges) a shift from tying a firm’s identity and reputation of individual lawyers with their names on the door to a more abstract idea of a law firm as a business. This shift raises an important legal and business concern for law firms: how do you protect your firm’s brand and reputation now that firms nationwide can practice under trade names? While there is not a comprehensive protection scheme or federal registry for trade names like there is for trademarks, trade names can be trademarked if the name constitutes a sufficiently distinctive mark.

The biggest unknown for law firms attempting to protect a trade name arises when the trade name also uses a surname. Trade names do not necessarily replace a firm name consisting of one or more attorney surnames. The current version of the rule keeps the prior version’s allowance for retired and deceased attorneys (including predecessor firms) in the firm’s name. Approving the use of trade names does not eliminate the importance of using an attorney sur-

Conference of the Professions

name for reputational purposes in the firm’s name. Indeed, a firm may choose to include one or more of its attorneys’ surnames within its trade name or have an entirely separate trade name without any surnames for marketing and advertising purposes.

Law firms considering a trade name, however, need to carefully consider the name if the firm wants to secure trademark protection for that name. Creative trade names that avoid generic terms and descriptions are more distinctive and are more likely to receive trademark protection. But what about firms that want to keep the reputation and goodwill of a surname and also take advantage of the now-relaxed naming rules?

If Jane Doe and Jill Smith, for example, previously practiced intellectual property law together as “The Law Offices of Doe & Smith,” but now want to use a trade name, perhaps they would rather use “Doe & Smith IP Law” than something like “The IP Gals.” Even if the firm can secure a trademark on the entire trade name, the individual components of something like “Doe & Smith IP Law” are merely descriptive and the distinctiveness that affords trademark protection will likely only apply to the whole trade name.

Using attorney surnames in a trade name can be a great way to better market a law firm while retaining reputational goodwill, but that does not mean the distinctive nature of the entire name transfers to parts of the name. Personal names can only be afforded trademark protection as a “descriptive” trademark—requiring both distinctiveness and secondary meaning. For a personal name to acquire secondary meaning, the name must be synonymous with the business bearing that name to the public. Stated differently, a personal name by itself can only be trademarked if the name alone would make a member of the public think of the business rather than the person when he or she hears the name.

So, what happens if the figurative firm secures a trademark on “Doe & Smith IP Law,” but Jack Doe and John Smith practice employment law as “Doe & Smith Employment Law,” and they each want to use the same shortened permutation of their common surnames as a domain name? While the entire trade names may be protected, shortened versions for things like domain names are not likely to be protected. Even if both firms were able to secure a trademark on their respective full trade names, neither of them would be able to claim entitlement to something like “DoeSmithLaw” based on the trademarked trade name. In short, firms considering trade names should carefully weigh how they can protect a name before building a reputation behind it. HN

Chas Carter is an Associate at Griffith Barbee PLLC. He can be reached at chas.carter@griffithbarbee.com. Michael Barbee is a Partner at the firm and can be reached at michael.barbee@ griffithbarbee.com.