NJ Business Law Blog

May a law firm advertise with a picture that includes a potential defendant’s trademarked logo?

The Southeastern Pennsylvania Transportation Authority (“SEPTA”) of Philadelphia, recently sued the Philadelphia law firm of Mednick, Mezyk & Kredo (the “firm”) for trademark infringement over the firm’s use of a SEPTA bus on its website and for its telephone number, which contained the word “SEPTA.”

The reason the law firm wanted to use the SEPTA logo was that the law firm’s practice focused on lawsuits against SEPTA. In fact, the law firm’s phone number was 888-SEPTA-LAW. Their website was myseptalawyer.com.

According to SEPTA, the firm’s use of both the “SEPTA” logo and the red and blue stylized “S” mark in its advertising was infringing upon SEPTA’s registered trademark.  The lawsuit also alleged that the firm advertised in Philadelphia newspapers using SEPTA’s colors in addition to its trademarks.  The firm’s website displayed an image of a bus displaying the SEPTA trademarks that SEPTA argued was virtually identical to an image of a SEPTA bus.  Thus, SEPTA argued that the firm’s use of the trademarks was identical to SEPTA’s use of the trademarks in violation of the law.  Prior to filing suit, SEPTA sent the firm a cease and desist letter. 

In response to the cease and desist letter, the firm denied that it was infringing on SEPTA’s trademarks and continued to use the website and telephone number.  After filing suit, SEPTA argued that the firm’s continued use of the trademarks constituted bad faith and continued and willful infringement.  SEPTA alleged in its complaint that the firm’s use of SEPTA’s trademarks had, or was likely to, cause confusion in the minds of consumers as to the origin of the firm’s services and/or its possible affiliation with SEPTA.  SEPTA claimed that the firm’s actions caused damage to its goodwill and reputation.

The firm took the position that its use of the trademarks constituted a fair use under the law and that there was little chance people would confuse personal injury lawyers representing victims hurt on SEPTA property with lawyers employed by SEPTA.  Despite taking that position, the firm ultimately settled the lawsuit with SEPTA, agreeing to remove its website and change its telephone number.  In exchange, SEPTA agreed to a transition period during which the firm may change over its website and telephone number.

Comments/Questions: gdn@gdnlaw.com

© 2011 Nissenbaum Law Group, LLC

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State Trademarks Are Insufficient for Federal Protection

Intellectual Property: Trademark Rights: We have previously discussed the fact that the mere registration of a business with the State, or the registration of the business name with the State is insufficient to insulate business owners from individual liability. However, the other common misconception about these filings is that they protect the business name that is registered. It is critical that business owners understand the limitations of the protection that is offered by State registrations.

In New Jersey, registration of a corporate entity will protect that entity’s precise name from being registered by another company in New Jersey. There are a few important things to note here. First, it does not prevent another company from registering that name in another state. Second, it does not prevent another company from making minor changes to the name (i.e., the spelling) in order to register their entity in the State. And finally, the registration of a business entity does not necessarily prevent another party from using that name; all that would be prevented is the third party’s registration of the name. The rights at issue are really trademark rights, which are addressed by the law separately from corporate formation rights.

Some businesses prepare state trademark filings. However, it is important to note that this too has limitations. First and foremost the filing only applies to New Jersey, and only protects against infringement in New Jersey. Next, the state registrations generally operate as individual databases, so there is nothing stopping someone from registering the same or similar trademark, or using i, in a neighboring state.

The best way to protect a business name is to use it in interstate commerce (i.e., across state lines) and to obtain a Federal trademark registration through the United States Patent and Trademark Office. The Federal filing will provide additional remedies to a trademark owner in the event that the mark is used in a way that is likely to confuse consumers anywhere in the United States (and perhaps even beyond with some of the International Treaties that are in place). This is particularly important in the Internet age, where businesses generally have at least a regional or national presence and are not so localized. For example, if a business owner has a New Jersey-registered trademark, and they learn that a competitor is using the mark in Pennsylvania in an infringing manner, the State registration will not help the enforcement efforts. The mark owner would be limited to pursuing its claim under common law theories and would be unable to avail itself of the benefits and protections of a federally registered trademark.

Comments/Questions: ljm@gdnlaw.com

© 2009 Nissenbaum Law Group, LLC

Please visit our website at www.gdnlaw.com and our other blogs at www.nissenbaumlawblog.com; www.foreclosuredefenselawblog.com; www.saleofbusinesslawblog.com; www.internetdefamationlawblog.com; www.constructionlawinfoblog.com; www.filmproductionlawblog.com; www.internetlawinfoblog.com; and www.njbusinesslawblog.com