Let’s look at intellectual property (TM) cases for law firm brands, names, taglines, and phone numbers
In the late 1980s, when most commercial law firms considered marketing to be either unprofessional or unethical, Joe Flom saw the opportunity to develop the first intentional, strategic law firm brand, quickly turning Skadden into a global powerhouse. In the decades since then, many firms have attempted to build their own brands, with varying success.
Firms fiercely protect the components of their hard-fought identities. This has led to lawsuits seeking to protect their vital intellectual property, using various 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 bunch of them on both the plaintiff and defense sides, and the issues can be fascinating. Some of the more interesting cases are shown below.
Is Craft Beer generic?
Nearly a dozen powerhouse law firms with Beverage Law practices (including e.g. Davis Wright Tremaine, Nossaman, Ward & Smith, and GrayRobinson) ganged up on a firm that tried to trademark “The Craft Beer Firm.” San Diego attorney Candace L. Moon sought to register “The Craft Beer Attorney APC” as a trademark. The firms asserted the name was a generic, descriptive, unregistrable title, like “real estate attorney.” After a year and a half of litigation, Ms. Moon filed an Express Abandonment of Application and judgment was entered against the applicant.
That’s the problem with using obvious and descriptive titles. Long ago, when we developed a marketing campaign for California’s Noland Hamerly targeting the pest control industry, we anointed them “The Bug Lawyers,” to make it both newsworthy and protectable. If we’d called them “The Pest Control Lawyers,” it would have been neither. Some years later, we did the same for an agriculture law practice group, whom we dubbed the alliterative “Lettuce Lawyers” (above). Both of them became global news. A unique title is more strategic, effective, and defensible.
The Son’s Sunk.
A fascinating case, the Carolina’s leading personal injury firm, The George Sink Injury Lawyers PA, sued the founder’s son, George Sink Jr., to prevent him from using his own given name in his professional life. After the firm fired Junior, he promptly set up his own injury firm under “his” name, called “George Sink II,” seemingly seeking to trade on the goodwill his father had built over decades. The firm alleged trademark infringement, unfair competition, cybersquatting, unfair and deceptive trade practices, and dilution.
I was the legal marketing expert witness for the plaintiff, and we had a compelling argument, but the case settled quite favorably on the first morning of the arbitration.
Habush v. Cannon
Wisconsin’s largest personal injury firm sued a top competitor (and previous spinoff) for bidding on the firm’s name on Google AdWords, so that e.g. a Google search for “Habush” or “Rottier” would pull up a link to Cannon & Dunphy’s site as a Sponsored Link. Wisconsin’s right of privacy law required advertisers to get the permission of people whose names they use for advertisements.
I was the defendants’ testifying expert showing that this practice did not amount to “using” their names in the context of the law, and that it was an aggressive but not unethical marketing strategy. (When you search “Hertz,” you see ads for Avis in the margin.) Defendants won the case on Summary Judgment, represented by one of the nation’s finest trial lawyers, my good friend Ric Gass (pictured).
Habush Habush & Rottier SC v. Cannon & Dunphy LLP
Aslan Law sued Lion Law because Aslan means Lion.
Aslan Law PC, a Virginia IP law firm, sought to block an application filed by Texas-based personal injury firm Thompson Law LLP to register “Lion Law” as a trademark for legal services because “aslan” means “lion” in Turkish and other languages. (Haven’t you seen “The Chronicles of Narnia”?) They settled, but if I’d been the legal marketing expert witness for Aslan, I might have mentioned the old Lyon & Lyon ads.
ASLAN LAW, P.C., Opposer, vs. THOMPSON LAW LLP, Applicant
The Battle of the Foleys
20 years ago, big firms realized that shorter names are more memorable and better for branding. Long names became shorter. Five names became two, or just one if it was strong enough. Skadden Arps Slate Meager & Flom became “Skadden Arps,” then simply “Skadden.” Think Cooley, Dechert, Polsinelli, Milbank, or Venable. So, Foley & Lardner logically rebranded as the simple, strong “Foley”–their existing street name. This would have been the right choice until Foley lawyers merged their way into Boston, i.e. Foley Hoag’s home turf. This created local marketplace confusion, and Foley & Lardner eventually agreed to not use simply “Foley.” That’s the right call here.
Foley Hoag LLP v. Foley & Lardner LLP
Big Fish sues little Fish.
In a roughly similar situation, IP boutique Fish & Tsang abbreviated its name to simply Fish IP Law. This redesign decision angered the biggest fish in the IP pond, the 350-lawyer national powerhouse, Fish & Richardson, often known as simply “Fish.” Once Fish & Neave got merged into Ropes & Gray, that left F&R as the last Fish standing, and I’d have thought that F&R would have vigorously fought to filet the little Fish, to avoid muddying the IP waters.
In a scenario straight out of “The Mouse That Roared” Little Fish sued Big Fish in a declaratory judgment action and F&R apparently blinked, i.e. stating that they “did not intend to assert any trademark rights they might have.” This one surprises me frankly; I can’t imagine why F&R wouldn’t have wanted to aggressively protect their hard-earned Fish brand. The facts are roughly similar to the Foley Hoag situation, but with the opposite result. (Full disclosure, I worked extensively on the Fish & Richardson brand a few years ago but not on the name or logo. I have no inside information re this strategy or lawsuit). Below are the Fish logos.
Fish IP Law, LLP v. Fish & Richardson PC
Which “O’Keefe Property Tax Law Firm” do you mean?
OK, one more. Two Chicago property tax law firms, both with “O’Keefe” first names, got into a trademark fight when one of them shortened to simply “O’Keefe Law Firm.” The O’Keefe Lyons firm said that having similar practices, the change would confuse clients.
O’Keefe Lyons & Hynes LLC v. O’Keefe Law Firm Ltd.
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.
It’s a jungle out there.
Lawyers and Tigers and…
And speaking of carnivores, there’s a trademark dispute over the word “Tiger.” The renowned motorcycle lawyers “Law Tigers,” (really a trade association, not a law firm), sued an Illinois law firm that was using the nickname “TigerLaw,” declaring it confusingly similar and thereby infringing their trademark rights.
American Association of Motorcycle Injury Lawyers Inc. v. HP3 Law LLC
The weak Peak of pique.
Mountain Peak Law sued Peak Law.
Colorado’s Stein Law which goes by Mountain Peak Law Group PC and Oregon’s Peak Law Group LLC are fighting over the word “Peak.” Peak Law Group apparently threatened to “zealously enforce its legal rights” to the word Peak, causing Stein to sue Peak, asking for a declaratory judgment of non-infringement, claiming that the word “peak” is a “weak” trademark that’s used by “many law firms.”
Stein Law PC v. Peak Law Group LLC
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. Bold IP filed an infringement lawsuit, claiming it has used the name for two years longer than Bold Legal. 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 very clear about this: 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!