Let’s look at some intellectual property cases for law firm brands, names, taglines, logos, and phone numbers.
Law, accounting, and professional-services firms have learned the dramatic financial benefit of standing apart from the competition in a positive way using corporate branding strategies. Of course, your hard-earned brands and IP must be fiercely protected from trademark infringement by your competitors.
This has led to lawsuits under a variety of legal theories, from federal trademark, trade dress, cybersquatting, unfair business practices, and Lanham Act issues to state privacy statutes. I’ve been the legal-marketing expert witness in a number of them (equally on the plaintiff and defense sides), and the facts can be fascinating. Some especially interesting cases are shown below; others are detailed in Part I of this post.
Remember this lawsuit.
Lundy Law, a Philly PI firm that tells consumers to “Remember this name” fought an old rival, Larry Pitt & Associates PC, over Pitt’s use of “Remember this number.” Pitt sued to prevent Lundy from registering “Remember This Name” as a federal trademark.
As the testifying expert for Pitt, I compared Lundy’s “Remember this name” slogan to other “instructions for the consumer” that lack any “independent source identification.” For example, compare this slogan to “Call Today,” “No fee unless we win” or “Injured? We can help.” The Trademark Trial and Appeal Board found for Pitt, ruling that Lundy Law LLP’s slogan does not function as a source-designating service mark.
The Employment Law Group sues The San Diego Employment Law Group
“The Employment Law Group” filed a trademark lawsuit against the “San Diego Employment Law Group” [emphasis added], alleging that it violated its trademark rights by using a “confusingly similar” name. Personally, I don’t see how a generic phrase like “Employment Law Group” is realistically protectable. What’s next, trademark protection for “Corporate Law Firm” or “Trial Lawyers”? Of course, I think the San Diego guys should get a better-looking logo.
The Employment Law Group PC v. San Diego Employment Law Group
Thrive IP sued Thrive Law PA
Stipkala & Klosowski LLC, d/b/a Thrive IP, accused Thrive Law PA of “launching an ‘aggressive’ campaign to wipe out its presence on the Internet.” Thrive IP also found Thrive Law’s creative marketing to be “demeaning to the legal profession and harmful to the professional reputation of plaintiff.” Their evidence is an eye-catching home page photo of men in animal costumes behind the headline: “Business disputes. When shiny happy business partners get awkward.”
Thrive Law PA seems to have rebranded creatively as “Brava Business Law. The Firm for Female Founders.” I like their style.
Bold IP sued Bold Legal.
If Peak is weak, let’s talk about Bold. Two small but “Bold” law firms in Washington and Colorado, are fighting over the trademark rights to the adjective. So Bold IP filed an infringement lawsuit, claiming it has used the name for two years longer than Bold Legal. In its defense, Bold IP, dba Bold Patents, says it’s used the word “Bold” longer than that.
Bold IP PLLC v. Bold Legal LLC
Simon says… File a lawsuit!
Two rival Florida personal injury firms are fighting over “Simon says…” slogans. Mr. Ortavia D. Simon’s The Simon Law Group, uses “Simon Says You Deserve Justice.” Across town, Mr. Simon Nicholson and Nicholson Injury Law PA et al., uses “Simon Says Justice” in their ads and Simon Law sued. Since the suit was filed, the Nicholson firm changed its name to “Sunshine State Law Firm” and Mr. Simon uses a lion in his logo and a “The Death Care Lawyers” tag line. So why are they still fighting? Don’t ask.
Simon et al. v. Nicholson Injury Law PA et al
IP firm Merchant & Gould sued “MG-IP” firm
Muncy Geissler Olds & Lowe PC filed a trademark registration for the acronym “MG-IP” and Merchant & Gould PC sued ‘em. The Trademark Trial and Appeal Board sided with IP firm Merchant & Gould, canceling Muncy’s trademark registration, saying it was confusingly similar to “M&G,” which Merchant & Gould had regularly used for 100+ years. I’m still not a fan of law firms using initials; it’s not like they’re DLA, K&L Gates, or V&E. Whatever, I haven’t heard the evidence.
Cellino & Barnes. Don’t Wait. Call 8. But don’t register it.
While fighting to divide its assets between the founders, the ubiquitous personal injury firm Cellino & Barnes filed a registration for both “(800)888-8888” and “888-8888” as federal trademarks, and was hit with an opposition. (You’re humming their phone number right now, aren’t you?)
Unfortunately, although C&B had registered the “Don’t Wait, Call 8” slogan, they didn’t apply to register the phone number itself until July 2016. Gordon McKernan Injury Attorneys LLC has been using an all-eight phone number with a local area code as its primary number since 2013, and challenged C&B’s application.
Gordon McKernan Injury Attorneys LLC v. Cellino & Barnes PC
Barnes v. Cellino & Cellino
In an unrelated Cellino & Barnes case, the firm has accused the family of one of its name partners of unlawfully infringing the firm’s well-known trademarks, along with cybersquatting, unfair business practices, and other claims when they launched a rival firm, seemingly intentionally leveraging the Cellino name’s historic goodwill in the PI category. That sounds a lot like the above-mentioned Sink family case.
Stephen E. Barnes et al. v. Cellino & Cellino LLP et al.,
Your phone number HURT.
Personal injury firm Chopra & Nocerino accused another law firm of copying its 855-NYC-HURT phone number. Rival firm Elefterakis Elefterakis & Panek uses 866-NYC-HURT and filed to register the mark, “NYC-HURT.” Chopra & Nocerino is challenging the filing.
Chopra & Nocerino LLP v. Elefterakis Elefterakis & Panek
Yes, I have. I didn’t care for it.
The female founder of Florida-based Advocate Law Firm who uses the eye-catching slogan “Ever Argued With a Woman?” sued the Tessmer Law Firm, a woman-owned Texas firm, for trademark infringement for using the similar “Ever Argue With a Woman?”
Wilson v. Tessmer Law Firm et al.,
Let me be quite clear: all of the logos and trademarks shown are the intellectual property of their various owners! 😉
Need a legal marketing expert witness to evaluate or testify in your own case?
Contact Ross directly at firstname.lastname@example.org, or 1.847.921.7677!