Steptoe's Legal Theory Prevails

Steptoe & Johnson partner, Christopher Gibson, is quoted in the Monday, November 3 issue of Financial Times regarding the firm's success in representing Telecom One before the UK Trade Marks Registry.  He states, "You're in a world where regulatory processes are resulting in long lead-times for businesses. I think you can use this as a precedent."  To read the full press release, please see below.

Steptoe & Johnson Team's Novel Legal Theory Prevails
Telecom One Wins Important UK Trade Mark Protection Decision

After two years of protracted proceedings, the UK Trade Marks Registry ruled last week that Telecom One had established protectable goodwill for its telecommunication services, despite an absence of the public sales and advertising activity typically required as minimal evidence for trade mark protection.  The Steptoe & Johnson legal team of Christopher Gibson and Libby Ferguson prevailed with their unconventional theory that by involvement in the protracted regulatory and licensing approval process required for UK telecommunication companies, Telecom One had successfully protected its trade mark, even though it never actually registered it and the claim was a common law claim.

According to Mr. Gibson, "The approval process in the UK telecom sector is quite transparent and involves off-line and on-line notifications to other telecom companies - as well as the ongoing development of contacts and interconnection agreements.  The hearing officer agreed with our position that the long lead time required before companies such as Telecom One can start trading and the nature of the process itself results in the establishment of sufficient goodwill to protect a company's name.  We are quite pleased with this outcome." 

In his decision, the hearing officer supported the Steptoe team's position that telecommunications is "not the sort of business which is necessarily likely to be known by the public at large, even if they are using one of its services."  The officer ruled it would be a "legal fiction" to find that as of the priority date of September 8, 1998 -- when Telecom One was required to have taken action to establish protectable goodwill -- that such goodwill had not been established.

Additional Information

Steptoe & Johnson LLP has earned a national and international reputation for creative and practical advice in guiding business transactions and financings, vigorous representation of clients before governmental agencies, and exceptional advocacy in litigation and arbitration. With more than 450 attorneys, the firm has offices in Washington, Phoenix, Los Angeles, Century City, London, and Brussels.