Talk about shooting yourself in the foot when your legal publishing company is already struggling in the eyes of a lot of folks. ALM is attempting to stop a couple young legal tech entrepreneurs, one a lawyer and one a technologist, in Sheffield, England from using the term or phrase “LegalTech” in the title of their small legal tech conference, LegalTech Conference North, which was held for the first time last month. As reported by Dan Bindman of Legal Futures, conference coordinators, Matthew Pennington and Harvey Harding received a “cease and desist” letter from ALM telling them that their use of “LegalTech” in their conference name was in violation of ALM’s trademark. From Bindman:
According to the Intellectual Property Office, the UK trade mark covers: “Conducting and organizing exhibitions, trade shows, conferences and workshops for public and private organizations, companies, lawyers and law firms for the purpose of exhibiting technical products and services directed to the legal profession, namely, computer hardware and software.”
The US trade mark also covers “newsletters issued periodically, directed to technical products and services for the legal profession”.
An ALM spokeswoman said it does not try to prevent ‘fair uses’ of the term outside of these areas. It’s hard to think of what other areas could be relevant. ALM is looking to clamp down on any type of program or publication which uses the term “legal tech” or legaltech.” Heck, there was a CLE program put on by few entrepreneurial Seattle lawyers up at Seattle University Law School this week. “Seattle Legal Tech – 3rd Annual 21st Century Lawyer CLE.” (emphasis added) What should they have called it? Seattle Application of Scientific Knowledge for Practical Purposes in Legal? I get that ALM has a publication called Legaltech News and holds a conference and show called Legaltech, rebranded as LegalWeek over the last couple years. But really, throwing your weight around when it comes to a small conference put on by two young entrepreneurs in Northern England. From an ALM spokesperson:ALM does not seek to prevent ‘fair uses’ of the legal tech term. However, as a trade mark owner, ALM’s goals are to both protect its longstanding rights and to try and prevent consumers from being confused into believing that another ‘legal tech branded show is affiliated with ALM’s long-standing event.
And if that’s not enough.ALM and its predecessors have used the trademark ‘legal tech’ for over 30 years in connection with a leading trade show for the legal industry.
While the term legal technology, or ‘legal tech’ for short, has a descriptive meaning, by virtue of ALM’s long and successful use, the term has come to identify ALM’s leading conference and has become a trademark.
Indeed, the US and European trade mark offices recognised these rights when it permitted ALM’s registration of the marks many years ago.
I wonder if the ALM spokesperson has ventured outside, or onto the Internet for that matter, over the last decade or two. There is no way the phrase, “legal tech” has become synonymous with ALM’s conference. Even ALM, knowing their Legaltech show is struggling, changed the conferences name from “Legaltech Show.” Ciaran Dearden, of the national law firm, Freeths, who is representing Pennington and Harding, has a different take than ALM, one founded in reality, common sense and the law.The existence of this trade mark is really restrictive for a booming legal technology sector.
“When ‘fintech’ is in the dictionary, but ‘legal tech’ is a registered trademark, there is clearly a problem.
In our view, ‘legal tech’ should be a term open to all to use to describe what is a transformative movement in the legal sector.
The proprietor of a trade mark has to be proactive in protecting its intellectual property, and that simply hasn’t happened here.
In this instance, the proprietor has allowed ‘legal tech’ to become a generic term for the use of technology in the legal sector and, in doing so, has undermined the basis for the mark’s protection in relation to the proprietor’s services such that the trade mark should be cancelled.
Pennington told Bindman that ALM’s position is ridiculous and that he’s 99% sure the mark will be cancelled.You look at the number of companies at Companies House that have got the words ‘legal tech’, let alone the number of conferences… There is no way [ALM have] control over it.
Now everyone is using the term, you can’t then turn round and say you’ve got to stop using it.
“’Legal tech’ should be free to use to describe any product that works in the legal sector like ‘fintech’ describes any that works in the financial services sector.”
Sadly, to be safe from ALM suing them, Pennington and Harding rebranded their legal tech conference as Legal Technology North, temporarily, knowing that they’d be challenging the trademark. In an effort to get the word out on the conference and to give kudos to Pennington and Harding for having the gumption and desire to help lawyers and the people they serve, via tech and innovation, I’ve been tweeting word of the conference and the coverage the conference received in the Sheffield business community and beyond. Local media in Northern UK took pride of the fact that local entrepreneurs were looking to grow the tech community in the area, something that London is better known for. It’s a shame when ALM, which bills itself as covering breaking news and trends in legal and bringing the leaders in the industry together, doesn’t cover or support legal technology and innovation efforts like this one. Let alone, try to impede them. Money doesn’t grow on trees for these two Sheffield legal entrepreneurs. In an effort to raise £5,000 for their defense of ALM’s trademark claim, they’ve launched a Gofundme campaign to raise money.