Two California legal nonprofits are in a standoff over the letters C, L and A.
In one corner is the California Lawyers Association, or CLA, a nonprofit spun out of the California State Bar in 2018 that provides MCLE programs and advocacy for the legal profession. The organization filed an application to trademark its logo—a map of the state overlaid with its name and the initials CLA—in March 2018 with the U.S. Patent and Trademark Office.
In the other is California Lawyers for the Arts, or CLA, a nonprofit group founded in the Bay Area in the mid-1970s to provide legal services to artists and the arts community. The group has used its name and the acronym CLA since joining forces with a similar group in Los Angeles in the 1980s, according to its executive director, Alma Robinson. (For the sake of clarity, The Recorder will refer to the bar-associated group as CL-Association and the arts group as CL-Arts for the remainder of this article.)
CL-Arts claims that the CL-Association has caused confusion with its members and donors and it’s not taking the competition for the three letters sitting down. CL-Arts retained pro bono counsel at Morrison & Foerster and filed its own trademark application in November 2018. The Morrison & Foerster lawyers also fired off a cease-and-desist letter to CL-Association’s counsel at Irell & Manella on Nov. 26. In the letter, CL-Arts claims that officials at CL-Association knew about the pre-existing CLA name and acronym before filing its CLA trademark application.
“Given this and the renown of the CLA trademark within the California legal community in particular, it is clear that the association is and continues to be aware of CLA’s rights therein,” wrote Morrison & Foerster partner Jennifer Lee Taylor. “As a result, your client’s use of the CLA trademark constitutes bad faith and a willful attempt to trade on the goodwill associated with CLA.”
The letter said that CL-Association’s “blatant usurpation” of CL-Arts’ trademark constituted infringement and unfair competition actionable under federal and state law.
In a recent phone interview, CL-Arts executive director Robinson went a step further than the letter. “This is so ironic: That a lawyers’ organization would do this,” she said. “This seems like a willful sort of malpractice. … It really seems unethical.”
Jane Shay Wald, CL-Association’s lawyer at Irell & Manella, bristled at Robinson’s remarks when they were relayed to her by The Recorder. Wald said the idea that her client would have an incentive to confuse its 100,000-plus members about an affiliation with CL-Arts is “preposterous.” She also said that she hasn’t identified anyone who was involved in CL-Association’s formation and name choice who was aware that CL-Arts marketed itself as CLA.
Although Wald conceded that seeking registration isn’t necessarily a precursor to holding a valid trademark right, she pointed out that CL-Arts hadn’t sought registration prior to her clients existence—this despite the fact that more than 15 other legal organizations used the CLA acronym nationwide, including Christian Legal Aid of Los Angeles, which provides legal consultations to low-income individuals under the CLA-LA acronym.
“It’s inconsistent with saying that everybody knows about us when they themselves didn’t take this relatively inexpensive protective step,” Wald said.
Wald said that she had been working with CL-Arts lawyer at Morrison & Foerster in “a fruitful dialogue toward an amicable co-existence” prior to hearing from The Recorder.
“I suppose they feel they can somehow embarrass us into taking steps the law does not require,” Wald said. “Or perhaps they are just looking for some free advertising.”