Trademark Common Law Trademark

[Edward Alan]

Jurisdiction

California

I have a situation. I run a California Association with DBA. The DBA has the name of the organization with the name of the City designating the particular local chapter. As an example:
Pro Bono Lawyers LA. There is also a Pro Bono Lawyers Fresno, Pro Bono Lawyers New York etc. All of these institutions are completely legally separate from each other with no connections whatsoever except the common goal or service.

This organization has meetings every month and at one point there was a huge falling out and a couple of people left the organization and began their own calling it "New Pro Bono Lawyers Los Angeles". and is offering similar services in the same locality. At the same time the person who started this new group has been writing articles defaming the organizer of the original group. This group is well known and has spent years branding the name. The name is not registered with the trademark office but I believe is protected under common law trademark rules.

The question I have is, can I actually get it Trademarked because there is a name of a geographic location in the name which I'm worried would result in a rejected application? and what legal recourse do I have against the other person starting another organization with a similar name, Pro Bono Lawyers Los Angeles vs Pro Bono Lawyers LA?

 

[adjusterjack]

A phrase like Pro Bono Lawyers is too generic to be trademarked. I doubt if adding descriptors like your examples is any kind of infringement but you could consult a trademark attorney to make sure.

As for the "defamation" a lot depends on what they are saying. Consult a defamation attorney.

 

[Edward Alan]

Pro Bono Lawyers is just an example. Both organizations are using the geographic descriptor at the end except one uses LA for Los Angeles and the other uses Los Angeles. The person who started the organization with the Los Angeles descriptor was a member of the other group before being removed. When he started the new group he even used the term "New" Pro Bono Lawyers Los Angeles" as if his intention is to get people to believe the other group no longer exists and people should come to his org. According to the Trademark law research I've been doing he would be in violation of a common law trademark because the names are "Similar" enough to cause confusion and it's in the same locality. The registration even though helps may not be necessary in my case due to the well standing brand that this organization has and under common law trademark rules wouldn't necessarily need to be registered. Further not sure if I can register it due to the geographic designation which is one of the reasons for refusal of a trademark after I've paid money for the application.

 

[army judge]

Pro Bono Lawyers is just an example. Both organizations are using the geographic descriptor at the end except one uses LA for Los Angeles and the other uses Los Angeles. The person who started the organization with the Los Angeles descriptor was a member of the other group before being removed. When he started the new group he even used the term "New" Pro Bono Lawyers Los Angeles" as if his intention is to get people to believe the other group no longer exists and people should come to his org. According to the Trademark law research I've been doing he would be in violation of a common law trademark because the names are "Similar" enough to cause confusion and it's in the same locality. The registration even though helps may not be necessary in my case due to the well standing brand that this organization has and under common law trademark rules wouldn't necessarily need to be registered. Further not sure if I can register it due to the geographic designation which is one of the reasons for refusal of a trademark after I've paid money for the application.

As suggested above, you can consult with some of the "lawyers" in your organization, or seek outside counsel.

Not much more help we can offer you, sorry.