The U.S. Patent and Trademark Office.Who Can Call Themselves 'Emergent'? Law Firms Clash Over Trademark
San Francisco-based Emergent Law asserts that "there is no likelihood of confusion" between it and South Carolina-based Emergent Law because of their differing geographic markets and client bases.
December 18, 2019 at 01:00 AM
3 minute read
The original version of this story was published on The Recorder
In an emerging dispute over the descriptor "Emergent," a startup-focused law firm based in San Francisco is suing another firm across the country claiming it hasn't infringed on the trademark for "Emergent Law."
In a complaint filed Monday, San Francisco Bay Area law firm Emergent Law has asked the U.S. District Court for the Northern District of California to declare it has not infringed upon marks held by the Perkins Law Firm in Greenville, South Carolina.
Perkins Law owns a trademark for "Emergent Law" (U.S. Trademark Registration No. 4,903,968) and asked the San Francisco firm to no longer use the phrase in connection with legal services in a cease and desist letter sent in October.
Emergent asserts that "there is no likelihood of confusion" between the two firms because of their different geographic markets and client bases. The San Francisco firm advises startups on growth and environmental activism, and Perkins Law focuses on litigation, intellectual property, employment and corporate work, according to the complaint.
Emergent Law's founder and president Sean Butler and his attorneys Holly Pranger and Scott Lonardo of Pranger Law in San Francisco declined to comment.
John R. Perkins Jr. of Perkins Law did not respond to a request for comment at the time of publication.
In addition to the Perkins Law website, Perkins is listed as the owner of another domain for the website Emergent Law Firm, which has a similar design and content to Perkins Law, according to the complaint. Emergent points out that the websites have a more "traditional law firm website appearance," compared to the San Francisco firm's site which the complaint describes as having "the look and feel of a modern technology company's website, with a sleek design."
Emergent claims that since Perkins Law "carefully monitors the Internet in relevant markets for infringement and unfair competition," as it stated in a December letter to the company, it should have known of Butler's use of the Emergent Law trademark as early as 2014.
"Perkins Law's delay in enforcing its trademark rights caused prejudice to Emergent Law, namely because Emergent Law continued to invest in its marks, continued to market it services to clients and potential clients under the brand EMERGENT and EMERGENT LAW, and built further goodwill in its mark," Butler's attorneys write.
This content has been archived. It is available through our partners, LexisNexis® and Bloomberg Law.
To view this content, please continue to their sites.
Not a Lexis Subscriber?
Subscribe Now
Not a Bloomberg Law Subscriber?
Subscribe Now
NOT FOR REPRINT
© 2024 ALM Global, LLC, All Rights Reserved. Request academic re-use from www.copyright.com. All other uses, submit a request to [email protected]. For more information visit Asset & Logo Licensing.
You Might Like
View AllTrending Stories
Who Got The Work
Michael G. Bongiorno, Andrew Scott Dulberg and Elizabeth E. Driscoll from Wilmer Cutler Pickering Hale and Dorr have stepped in to represent Symbotic Inc., an A.I.-enabled technology platform that focuses on increasing supply chain efficiency, and other defendants in a pending shareholder derivative lawsuit. The case, filed Oct. 2 in Massachusetts District Court by the Brown Law Firm on behalf of Stephen Austen, accuses certain officers and directors of misleading investors in regard to Symbotic's potential for margin growth by failing to disclose that the company was not equipped to timely deploy its systems or manage expenses through project delays. The case, assigned to U.S. District Judge Nathaniel M. Gorton, is 1:24-cv-12522, Austen v. Cohen et al.
Who Got The Work
Edmund Polubinski and Marie Killmond of Davis Polk & Wardwell have entered appearances for data platform software development company MongoDB and other defendants in a pending shareholder derivative lawsuit. The action, filed Oct. 7 in New York Southern District Court by the Brown Law Firm, accuses the company's directors and/or officers of falsely expressing confidence in the company’s restructuring of its sales incentive plan and downplaying the severity of decreases in its upfront commitments. The case is 1:24-cv-07594, Roy v. Ittycheria et al.
Who Got The Work
Amy O. Bruchs and Kurt F. Ellison of Michael Best & Friedrich have entered appearances for Epic Systems Corp. in a pending employment discrimination lawsuit. The suit was filed Sept. 7 in Wisconsin Western District Court by Levine Eisberner LLC and Siri & Glimstad on behalf of a project manager who claims that he was wrongfully terminated after applying for a religious exemption to the defendant's COVID-19 vaccine mandate. The case, assigned to U.S. Magistrate Judge Anita Marie Boor, is 3:24-cv-00630, Secker, Nathan v. Epic Systems Corporation.
Who Got The Work
David X. Sullivan, Thomas J. Finn and Gregory A. Hall from McCarter & English have entered appearances for Sunrun Installation Services in a pending civil rights lawsuit. The complaint was filed Sept. 4 in Connecticut District Court by attorney Robert M. Berke on behalf of former employee George Edward Steins, who was arrested and charged with employing an unregistered home improvement salesperson. The complaint alleges that had Sunrun informed the Connecticut Department of Consumer Protection that the plaintiff's employment had ended in 2017 and that he no longer held Sunrun's home improvement contractor license, he would not have been hit with charges, which were dismissed in May 2024. The case, assigned to U.S. District Judge Jeffrey A. Meyer, is 3:24-cv-01423, Steins v. Sunrun, Inc. et al.
Who Got The Work
Greenberg Traurig shareholder Joshua L. Raskin has entered an appearance for boohoo.com UK Ltd. in a pending patent infringement lawsuit. The suit, filed Sept. 3 in Texas Eastern District Court by Rozier Hardt McDonough on behalf of Alto Dynamics, asserts five patents related to an online shopping platform. The case, assigned to U.S. District Judge Rodney Gilstrap, is 2:24-cv-00719, Alto Dynamics, LLC v. boohoo.com UK Limited.
Featured Firms
Law Offices of Gary Martin Hays & Associates, P.C.
(470) 294-1674
Law Offices of Mark E. Salomone
(857) 444-6468
Smith & Hassler
(713) 739-1250
