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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.
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