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What's in a Name?

How to Name Your Law Firm and Protect It With a Trademark

By Josh Gerben

One of the first and most daunting tasks you face once you decide to open your own law firm is deciding on a name. The name becomes the public identity of your firm. It is how you build a reputation and ultimately a legacy. Ensuring that your name choice is strong enough to withstand that weight is a must.

Traditionally, law firm names have been a patchwork of partner surnames. But recent years have seen a shift away from this practice, especially for small and boutique firms. This directly correlates to the rise of law firm branding and the legal industry’s acknowledgment that a firm is much more than a few named individuals.

What’s more, with the increased movement of lawyers between firms, using a brand name (such as Axiom) eliminates the need for time-consuming and costly name changes should the partners change.

(Related: “What’s in a Name: For Law Firms, Not Much” by Jared Correia)

Lastly, given the number of law firms in the United States, using surnames to name a law firm can lead to trademark disputes. In Illinois, two tax appeal firms that included the surname “O’Keefe” in their names were entangled in a trademark infringement lawsuit. Ultimately, the case was settled by the implementation of website disclaimers and logo stylization. However, undoubtedly both parties spent a lot of energy on the dispute. In a more extreme case, a father and son were at odds. The father, George Sink, founder of a personal injury firm, sued his son, George Sink Jr., over his right to use his name when beginning his own practice. While these examples may not be commonplace, they are worth considering when choosing a name.

How to Clear Your Name for Use

Once you have settled on a name for your law firm, run a proper trademark search before you fall in love with it. I emphasize the word “proper” because a lot of misleading information appears online these days. Some websites claim that a trademark search is something that can be done easily, in a matter of a few minutes. This is simply not true.

You should run a full federal, state and common law search. In the United States, trademark rights can be formed by federal registration, state registration or “common law” use (which is another way of saying unregistered use).

Moreover, make sure your trademark search provider is using professional-grade software such as Corsearch or CompuMark. Much like you would use Lexis or Westlaw to conduct case research, these professional software tools typically provide a much more comprehensive view of potentially conflicting trademarks.

Just remember, the best defense to not getting bogged down in a trademark lawsuit and having to change your name one or two years into operating your firm is to do this clearance search and be willing to change your name if a problem is discovered.

Firms that end up in the most trouble are the ones that are already in love with a name and have no flexibility to change it — regardless of what our trademark search shows.

How to Protect Your Name via Trademark Registration

Once a trademark search shows that your name does not have any major conflicts, the next step is to file a federal trademark application for the name. The entire registration process will take eight to 10 months (if all goes smoothly).

You can open your firm without a federal trademark registration, but a proper trademark search is important before you invest in letterhead, a website and the trademark registration itself.

Once granted, a federal trademark registration provides you with the presumption of national validity to your name. In today’s world, that comes with very practical benefits such as the ability to easily shut down social media infringements and pay-per-click advertising abuse. Moreover, having a registration on the federal trademark register acts as a deterrent to anyone who might be considering the same or similar name.

Starting a law firm is no easy task. You will face a lot of hard decisions along the way, but fewer more visible than your name. Make sure to leave ample time in the startup process to select, clear and register your name. Law firms that are rushed typically end up with less-than-ideal names with less-than-ideal levels of risk.

Illustration ©iStockPhoto.com

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Josh Gerben Josh Gerben

Josh Gerben is a trademark attorney and founder of Gerben Law Firm. In 2008 he left a secure job (in the middle of the Great Recession) and opened the firm to provide high-quality but reasonable flat fee trademark services. Gerben Law Firm has successfully registered more than 5,000 federal trademarks for clients. In 2019 Josh launched The Josh Gerben Show, a YouTube show and podcast about the business of law and his experiences in starting and running a law firm. Check out the YouTube channel or Apple Podcast, and connect with him on Twitter @JoshGerben.

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