Bloomberg BNA’s Patent Trademark & Copyright Law Daily™is the IP industry’s premier news service, offering objective, timely,and reliable daily news coverage and commentary from leading IP law...
Sept. 25 — A Minnesota attorney's advertising using his firm's phone number “612-INJURED” might infringe a marketing firm's “1-800-INJURED” trademark licensed to another law firm, the U.S. District Court for the District of Minnesota ruled Sept. 23.
The court said that the personal injury attorney's advertising might cause a likelihood of confusion with another Minnesota personal injury attorney's use of “1-800-INJURED” in advertising.
The court therefore denied both parties' motions for summary judgment, ruling that there was enough evidence for a jury to find a likelihood of confusion, but not enough to prove it as a matter of law.
Krueger Law Firm of Roseville, Minn., uses “1-800-INJURED” in advertising pursuant to a license from Mountain Marketing Group LLC, which holds a U.S. trademark registration on the term.
Mountain licenses use of “1-800-INJURED” to at least 25 professional service providers throughout the country.
Heimerl & Lammers LLC, Minneapolis, obtained the telephone number “612-INJURED,” and uses the phone number in advertising on billboards in Minnesota.
Mountain sued Heimerl for trademark infringement, arguing that Heimerl's use of the number created a likelihood of confusion with “1-800-INJURED.”
The court determined, based on a six-factor test, that a jury could reasonably find a likelihood of confusion based on:
• The strength of the “1-800-INJURED” mark, which the court said was not merely descriptive because it did not “immediately convey the function of the services offered by Krueger,”
• The similarity between the “1-800-INJURED and “612-INJURED” marks,
• The competing services offered by the two firms,
• Some evidence that Heimerl had intended to “pass off” its services as being associated with Krueger,
• Some evidence of actual confusion, in the form of three specific reports and a consumer survey, and
• The relatively low degree of care exercised by potential customers.
The court also denied Heimerl's motion to dismiss Mountain's request for attorneys' fees, because there was evidence to create a genuine issue of material fact as to whether Heimerl had infringed the trademark willfully: Heimerl had not conducted a trademark search before using “612-INJURED,” acknowledged the benefit of confusing the public on its billboards, and continued using the mark after receiving cease-and-desist orders and the complaint in this case.
The court set trial for Dec. 14.
Mountain was represented by David P. Jendrzejek of Moss & Barnett P.A., Minneapolis. Heimerl & Lammers was represented by J. Ashwin Madia of Madia Law LLC, Minneapolis.
To contact the reporter on this story: Blake Brittain in Washington at email@example.com
To contact the editor responsible for this story: Mike Wilczek at firstname.lastname@example.org
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to email@example.com.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to firstname.lastname@example.org.
Put me on standing order
Notify me when new releases are available (no standing order will be created)