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.
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