IS THE LEX ON THEIR SIDE?
LexisNexis Fights for Exclusive Rights to Latin Word for Law

BY TERRY CARTER

Who owns "law"? Or, with more Latinate precision, who owns the word "lex"?

LexisNexis Group, which launched the first commercial electronic law database in the 1970s, has had to be vigilant over the years as its "Lexis" brand gained so much cachet that others have tried to use the name.

Now its vigilance has extended to just one syllable, as the legal research giant is trying to stop others from using the term "lex."

In the past year, for example, Lexis has filed official oppositions to the U.S. Patent and Trademark Office’s approval of trademarks for Lex Focus, a service that rates arbitrators, and for LexLaw, a name that is not yet intended for use. Lexis lawyers also wrote a letter demanding that LexNotes, a Web site for legal researchers, cease using the term "lex."

Stan Chess, a former bar review official and now CEO of LawTV.com, caught Lexis’ attention when he got PTO approval for a trademark on LexLaw. Chess, who admits he collects trademarks as some do baseball cards, notes that there are more than 200 legal terms and phrases that begin with "lex," and hundreds of derivative terms such as Lex Mundi, the worldwide association of more than 150 independent law firms created in 1989. (Incidentally, a Lex Mundi spokesperson says the name never has been challenged.)

There are thousands of Internet domain names incorporating the term "lex," and it appears in more than 200 registered trademarks. ("Lex" alone was registered by the American Bar Association in 1982.)

The question is simple, Chess says. "Does LexisNexis, by virtue of owning several ‘lex’ terms, trump everyone else’s right to use the Latin word for ‘law’? "

A spokesman for LexisNexis Group declined comment on any aspect of this story.

In one of the more noted challenges, LexisNexis was unsuccessful in a suit against Toyota in 1989 to stop it from launching the Lexus luxury car.

A strong argument for protecting a trademark is that it has acquired secondary meaning, says Jessica Litman, a leading expert and law professor at Wayne State University Law School. (The school’s Web site lists her course on Trademarks and Unfair Competition as "Lex 7831.")

Naming a hotel "McSleep Inn" probably would not withstand challenge by McDonald’s restaurants, for example, because of the secondary meaning that has accrued to "Mc."

"They have acquired a secondary meaning in the word ‘Lexis,’ but the question is trying to expand it down to the core descriptive syllable," Litman says.

Another key issue courts consider is whether people might be confused by similarity. Legal researchers who come across variations of "lex" are a particularly sophisticated audience and, with a term like LexNotes, Litman says, "my suspicion is there isn’t any likelihood of confusion."

T.R. "Tom" Halvorson, a part-time county attorney and part-time solo practitioner in Sidney, Mont., operates LexNotes.com for legal researchers. The Web site describes Halvorson as "Lawyer, author, speaker, CLE presenter, computer programmer, small grains farmer."

Lexis’ lawyers challenged Halvorson’s use of the term "LexNotes" last year, and he has offered to give up the name. But his settlement offer says between the lines that he might end up getting challenged by somebody no matter what name he chooses. He says he will give up the name if Lexis-Nexis will help him find and defend another one.

What Halvorson says he really wants is "LawLawLand"—but someone has already registered it as a domain name.