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BOSTON-The belief that a settlement is imminent led a federal district court to dismiss Foley Hoag’s trademark infringement case against Foley & Lardner last week. The Boston-based firm Foley Hoag sued Foley & Lardner last October for using the term “Foley” in advertisements and marketing materials. Foley & Lardner, which has its largest office in Milwaukee, is mulling changes, according to the firm’s general counsel, Jim Clark. “We are now talking about a standard that would be employed here that would avoid disputes on a going-forward basis,” Clark said. “We’re trying to work out an acceptable standard that would avoid any disputes down the road.” A ‘business accommodation’ The dismissal order gives the parties one year to reopen the case if the settlement is not consummated. Foley Hoag co-managing partner Robert Sanoff said that the “parties are working conscientiously to come to a business accommodation on the issue.” Foley Hoag, which registered its own two-name title as a service mark in 2002, said that the U.S. Patent and Trademark Office denied Foley & Lardner permission to use “Foley” in early 2004 on the grounds that it could cause confusion with Foley Hoag. In 2004, Foley & Lardner forged ahead with a rebranding campaign. Both law firms have a Washington office, but according to Foley Hoag’s court papers, incidents of mistaken identity increased “exponentially” after Foley & Lardner took over the Boston office of New York-based Epstein Becker & Green in February 2005. “They include instances of confusion by potential clients, U.S. and foreign lawyers, and organizations that rate and compare law firms,” said the court papers. In addition to service mark infringement, Foley Hoag sued its rival for false designation of origin under the Lanham Act, unfair competition under Massachusetts laws and service mark dilution under Massachusetts laws. As government scrutiny of corporations increase, the importance of a law firm’s reputation is skyrocketing as a selection criteria, said Michael Rynowecer, President of BTI Consulting Group Inc. in Wellesley, Mass. Rynowecer said firms spend roughly $1,200 to $1,500 a year per attorney to build their brand image, or about 9% of 12% of a firm’s annual marketing budget-which is usually 2% of revenue.

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