Law firm trademarks – extra important to protect?

Recently, Jones Day filed a complaint against real estate web site Blockshopper.com, alleging (among other things) that the use of deep links to attorney bio pages on the Jones Day web site constituted trademark infringement.  Blockshopper.com chose to accept a settlement in which they simply were required to change the way that they link to Jones Day’s web site.

Blockshopper was probably in a bad position here; not only were they using the Jones Day marks for deep linking (which might have been OK), but they were also allegedly republishing content from the Jones Day site (including attorney bio pictures, which is most likely not OK).

I don’t have a lot to say about whether Blockshopper’s actions would have infringed any rights to the Jones Day marks, but it did lead me to wonder why we don’t hear about law firms defending their trademarks more often?  Here’s a quick thought experiment / question for the masses.

Law firms (in WA, anyway) generally have an ethical duty to not conduct business along with nonlawyers, to prevent the unlicensed practice of law by nonlawyers and to prevent client confusion.

In trademark infringement actions, the rights-holder may allege that the unauthorized use of the mark leads to a confusion of source.  That is, a consumer may think that the product produced by the infringer is actually produced by the rights holder.

If such confusion was taking place, doesn’t that implicate the law firm’s ethical duties?  That is, if a consumer believes that an infringer is actually a law firm (or authorized by the law firm to conduct business under its marks), then don’t the same ethical considerations relating to not sharing office space and store fronts with nonlawyers apply?  Doesn’t the infringement make it possible that consumers could be confused into accepting legal advice from unlicensed individuals?

Admittedly, this is a somewhat farfetched idea.  However, if true, it seems like law firms that hold trademarks have an extra incentive to aggressively police infringement of those marks.

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