A small California law firm asked a federal district court on Sept. 15 to declare that its use of the name “Fish IP Law” doesn’t infringe the trademark rights of Boston-based Fish & Richardson PC (Fish IP Law, LLP v. Fish & Richardson, P.C., N.D. Cal., 17-5361, complaint filed 9/15/17).
According to the complaint filed in the U.S. District Court for the Northern District of California, Robert Fish, a patent lawyer based in Irvine, Calif., has used the name “Fish” as part of the names of several different law firms going back to 1995. His firm adopted the name Fish IP Law in July.
To stop Fish IP Law from using a particular name or symbol, Fish & Richardson would have to persuade a court that it is likely to cause confusion among consumers about the source of goods or services.
In August, Fish & Richardson sent a cease-and-desist letter to Fish IP Law, demanding that the California law firm make its name and logos “distinctly different” than Fish & Richardson’s, which uses marks that emphasis the “Fish” part of its name, according to the complaint. Fish & Richardson, which has a large patent practice, has more than 350 lawyers in 12 offices across the U.S. Fish IP Law has 10 lawyers in two California offices.
Fish IP Law said in its complaint that Fish & Richardson “owns no right to the word ‘Fish’ alone or when placed alongside a description of the services provided by Fish IP Law or any other entity for that matter.”
“This lawsuit is not supported by the facts and has no legal merit,” Fish & Richardson told Bloomberg BNA. “It is an overreaction to a very simple request. Fish & Richardson asked Robert D. Fish to make small changes to the way he promotes his firm to avoid the likelihood of confusion with our firm.”
Fish & Richardson has made more than 1,700 appearances for clients in U.S. federal patent cases in the last five years, according to Bloomberg Law Litigation Analytics. More than 55 percent of its total appearances were in patent matters.
To contact the reporter on this story: Anandashankar Mazumdar in Washington at AMazumdar@bna.com
To contact the editor responsible for this story: Mike Wilczek at email@example.com