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Morgan & Morgan Sues Trademark Office over Refusal to Register Phone Number

Post Time:2023-01-16 Source:insurancejournal Author:William Rabb Views:

Florida-based Morgan & Morgan, which calls itself the largest injury law firm in the country, has become one of the property insurance industry’s chief adversaries, facing off with insurers over thousands of auto accidents, homeowner policies and workers’ compensation claims.

Now, the well-known firm is taking on the U.S. Patent and Trademark Office after the agency refused to grant trademark protection for the “#LAW” (#529) phone number that Morgan & Morgan advertises in more than 20 states.

The firm, represented by its own attorneys and by another national law firm, Kilpatrick Townsend & Stockton, in Atlanta, argues that federal law allows it to file suit when the trademark office and its appeal board blocks a trademark application.

The complaint, filed Wednesday, shows the lengths that Morgan & Morgan has gone to in spreading its name coast to coast and to capitalize on the four-digit phone number.

“Morgan & Morgan has spent tens of millions of dollars in advertising the #LAW mark in the United States, including in television and radio advertising, social medial advertising, transit advertising, including buses, and cabs and billboard advertising,” reads the lawsuit, filed in U.S. District Court for the Middle District of Florida.

In another section of the complaint, the firm said it has “expended hundreds of millions” on #LAW promotional efforts since 2017.

The phone number was not originally associated with Morgan & Morgan, the Orlando-headquartered law office headed by attorney John Morgan and sons. The complaint explains that in 2006, a company known as Bay Area Travel applied for trademark protection for the number, and was refused. The travel company then registered on the trademark office’s supplement register.

The trademark office, or PTO, allows businesses to utilize the supplemental register when they are not eligible for the principal register, “but may, over time, become an indicator of source,” the PTO website notes.

In 2013, the trademark was assigned to Easy Dial LLC. A year later, it was reassigned to Morgan & Morgan. The 36-page complaint does not explain why a travel company or Easy Dial had desired the number, or how much Morgan & Morgan may have paid for the reassignment.

The law firm began advertising the phone number, including a trademark registration symbol (®). “There consequently is no reason the relevant consuming public would call the #LAW® mnemonic/vanity telephone number other than to reach Morgan & Morgan to provide legal services,” the complaint notes.

In 2017, the firm pursued an application to have #LAW put on the PTO’s principal register, a move that began five years of ups and downs with the trademark office. In 2018, a trademark office attorney refused the request, noting that the phone number is merely descriptive. He also contended that the “#” sign is used as a social media search term, which adds no source-identifying significance. Morgan’s continuous use of the number by itself was insufficient to show acquired distinctiveness, the PTO said.

Morgan and Morgan said it provided more evidence that #LAW is a phone number, not a social media hashtag, and that the firm had used the number exclusively for five years, as required by PTO rules. After the PTO attorney backed down and approved the principal register application, a supervisor overruled him in 2019, contending that a phone number is generic and does not function as a registerable mark, the complaint reads.

Morgan & Morgan appealed to the Trademark Trial and Appeal Board in late 2022, but the board denied the request. The law firm now argues that the board acted contrary to the PTO’s own policy: The office has approved very similar phone numbers for other enterprises, such as #TAXI to hail a cab, or #FLY for flight reservations.

The firm is asking the federal court to reverse the appeals board decision and order the PTO to approve the application and to award the firm other relief. The PTO has not yet answered the complaint.

Insurance interests in Florida have long complained about Morgan & Morgan’s sometimes aggressive tactics in insurance claims disputes. After Hurricane Ian hit southwest Florida in September, the firm earned criticism for moving quickly to set up a tractor-trailer “mobile claims center” in Fort Myers.

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