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In a dispute between a prominent intellectual property lawyer and his former firm, a federal judge has refused to issue an injunction that would have forced the firm to completely eliminate all uses of the departing lawyer’s name and all mention of his court victories. In Tillery v. Leonard & Sciolla, Senior U.S. District Judge Norma Shapiro of the Eastern District of Pennsylvania found that M. Kelly Tillery, now with Pepper Hamilton, is not likely to succeed on any of the five claims he alleged. Specifically, Shapiro found that Tillery’s name is not entitled to trademark protection because it has not acquired any secondary meaning. A person’s name is not “inherently distinctive” and thus can be protected only upon a showing of secondary meaning, she wrote. Tillery failed to meet that test. “Although Tillery has used �Tillery’ as his personal last name all his life, it does not appear from the record that it was ever used in connection with a business or a product, except as part of the name of law firms with which he was associated.” Shapiro added, “There is no evidence that he commanded a particularly large share of the market, or that he made substantial efforts to advertise his own legal services separately.” Instead, Shapiro said, the evidence showed that during his final 16 months with Leonard Tillery & Sciolla, Tillery generated only a handful of new client matters, almost always from referrals. “Evidently Tillery’s name was not so well known that strangers sought his services,” she wrote. �TILLERY’ HANGS ON Tillery’s suit claimed that the firm’s continued use of the domain name leonardtillery.com violated federal and state unfair competition and trademark law and federal anti-cybersquatting law. According to court records, after Tillery’s departure in 2005, his former firm created new e-mail addresses ending in leonardsciolla.com. While mail sent to leonardtillery.com addresses was still received, all outgoing mail was sent from the new addresses. Mail sent to [email protected] was initially forwarded to Pepper Hamilton, and later triggered a response providing Tillery’s new address. Tillery’s suit also alleged that his former firm was engaging in false advertising by listing online cases that Tillery had handled. But Shapiro flatly rejected that claim, finding “no impropriety.” The firm had registered the new domain name leonardsciolla.com about a week before Tillery’s departure. Those seeking www.leonardtillery.com were “seamlessly directed” to the new Web site, according to court papers. After Tillery filed suit, the firm modified that so a user who typed in leonardtillery.com would be alerted to the redirection. But Tillery complained that search engines were still directing surfers to his former firm. He introduced evidence that Google searches for “Kelly Tillery” found a cached Web page with the firm’s new logo and his old biography. The judge, however, found it significant that the link to the cached page came with Google’s warning that the page might have changed since it was cached. She also noted that partner Hugh Hutchinson said the firm had deleted the inactive page as soon as the problem was brought to its attention. Shapiro wrote that Tillery had not shown any likelihood of consumer confusion. The judge found “no evidence that sophisticated consumers in this market are likely to make a mistaken purchasing decision or to consider a different intellectual property lawyer from the one they were seeking simply because they accessed the wrong Web site.”
Shannon P. Duffy is the U.S. courthouse correspondent for The Legal Intelligencer , an ALM publication based in Philadelphia where a longer version of this article first ran.

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