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When Jim “The Texas Hammer” Adler recently started using an advertising slogan similar to Houston solo Robert L. Steinberg’s registered service mark, Steinberg hammered back. Richard Tholstrup, Steinberg’s attorney, fired off a cease-and-desist letter to Adler on May 17, demanding that Adler, the principal in Houston’s Jim Adler & Associates, stop the “unlawful use” of Steinberg’s service mark and provide “a detailed accounting” of any responses received because of his use of the slogan. Tholstrup, also a Houston solo, further demanded in the letter that Adler allow Steinberg to inspect Adler’s books to determine what portion, if any, of his revenue is related to the use of the service mark. Intent on finding a “dignified” slogan to advertise his practice, Steinberg says he thought about the wording for quite a while. Steinberg, who refers most of his cases, says he finally came up with the slogan: “If you have a serious case, you need a serious lawyer.” Steinberg says he acquired common-law rights to the slogan because he has used it in his television advertising for the past two-and-a-half years. However, Steinberg says he decided to register the slogan as a service mark last year and received a notice of the registration from the U.S. Patent and Trademark Office on May 11 this year. “Adler started running his ad [with a similar slogan] about the same time,” Steinberg says. But Adler and his attorney, Alan Greenspan, say the advertisement that prompted the complaint does not contain Steinberg’s service mark. “Our ad doesn’t say what they think it says,” says Greenspan, a partner in Jackson Walker in Dallas. Adler’s ad features the slogan: “Serious injuries? You need a serious lawyer.” Steinberg’s slogan is: “If you have a serious case, you need a serious lawyer.” Steinberg registered his service mark under the Lanham Act, 15 U.S.C. � 1053. Under that law, a service mark can be any word, name, symbol, device or any combination of those that is used in commerce to identify the services of the mark’s owner from the services of other providers. “A slogan can certainly be protectable,” says Tony Reese, a University of Texas School of Law professor who teaches intellectual property law. “What it is protected against is the likely confusing use in commerce,” he says. When the owner of a service mark alleges infringement, the question is whether the use of that mark by someone else causes confusion to consumers, Reese explains Steinberg and Adler’s attorney disagree as to whether the slogan that Adler used in his ad infringes on Steinberg’s service mark. “Given the very weak and descriptive nature of your client’s mark, there obviously is no likelihood of confusion between what is said in the advertisement and Mr. Steinberg’s registered mark. Thus, there simply is no infringement,” Greenspan wrote in a May 21 letter to Tholstrup. Greenspan also wrote that Adler’s books and records will not be turned over to Steinberg and Tholstrup for inspection. “I believe it’s close enough to mine to cause confusion,” Steinberg says of Adler’s slogan. “You do not have to use the specific slogan” to infringe on a service mark, he says. Reese, the UT law professor, says that whether there was infringement is a dispute question for a court to resolve. “There could still be a problem if [the slogan] is close,” Reese says. For example, he says, “If I bought a coffee chain and called it ‘Stirbucks’ because you stir the coffee, I’m probably not going to get off.” Consumers don’t always look closely, and there could be confusion about “Stirbucks” and “Starbucks,” he says. Despite his contention that his slogan is different from the one that Steinberg registered as a service mark, Adler has decided to modify his ad. “Based on his personal relationship with Mr. Steinberg, and as a favor to a friend, Mr. Adler has pulled the advertisement about which you are complaining,” Greenspan advised Tholstrup in the May 21 letter. Adler says he did not know he was using a slogan similar to Steinberg’s registered service mark. Adler also says Steinberg could have called him about the ad instead of having Tholstrup send him a letter by certified mail. “Robert Steinberg is a friend of mine,” Adler says. Steinberg says he doesn’t feel that he and Adler are all that close. “I’ve never been invited to any of his Christmas parties. I think that speaks for itself,” Steinberg says. Adler says he will use a different slogan in his ad. “I guess I’ll just go back to being the ‘tough, smart lawyer.’ That’s my trademark,” Adler says. Greenspan, whose practice areas include intellectual property law, says Adler registered the slogan, “tough, smart lawyer,” in English and Spanish with the Office of the Texas Secretary of State. Adler also has an application pending with the secretary of state for the registration of his advertising moniker, “The Texas Hammer,” Greenspan says. A FIRM CHOICE Other Texas lawyers have federally registered service marks. According to the patent and trademark office’s Web site, Houston solo Howard C. Kahn registered “Lone Star Lawyer.” Rodolfo “Rudy” Cantu, another Houston solo, registered “El Abogado Perro” which loosely translates to the “junkyard dog lawyer” along with a drawing of a snarling dog. Kahn and Cantu did not return three telephone calls each to their offices seeking comment before presstime on May 27. Texas firms also have registered service marks. “It’s commonplace for large law firms to secure service mark protection for slogans or logos,” says Mike Wilson of Dallas, managing partner at Jackson Walker. Greenspan says Jackson Walker’s slogan, “Tradition and Innovation Since 1887,” has been registered as a service mark with the U.S. patent office since February 2003. Wilson says the slogan highlights the fact that Jackson Walker is an old, established firm. “We were established in 1887,” he says. “Few firms can claim that. “ Jackson Walker combined the term “tradition” with “innovation” because “we didn’t want to convey an image that we live in the past,” Wilson says. “Over the years, we’ve tried to stay cutting edge. “ Carrington Coleman Sloman & Blumenthal in Dallas used the service mark “Texas Trail Lawyers,” registered with the patent and trademark office since March 2002, as part of its marketing theme for a couple of years, says Craig Weinlein, who handled the registration for the firm. “It’s a little play on words,” Weinlein, head of Carrington Coleman’s intellectual property practice group, says of the service mark. A number of partners in the firm are Texas trial lawyers. In keeping with its marketing program, Carrington Coleman featured several of its attorneys dressed like cowboys on its Web site. The message, Weinlein says, is the firm can guide clients down the trails of litigation. “I think it worked well for us,” Weinlein says. However, the firm recently introduced a new marketing theme and has not registered a new service mark, he says. Petri Darby, spokesman for Jenkens & Gilchrist in Houston, says the firm has used the registered service mark, “It’s all here,” since 2002 and continues to use it. Darby says the firm’s franchise practice group adopted the slogan to convey the whole range of services the group can provide. He says the firm also registered service marks for the franchise practice group’s newsletter, “Brand Talk,” and the labor and employment group’s newsletter, “Hire Authority.” Reese says he isn’t surprised that more firms are beginning to register service marks. “Law firms are getting a lot more savvy about their marketing.” Tholstrup says a service mark helps identify services and products. For a lawyer or a firm, using a memorable slogan as a mark can generate good will and catch people’s attention, he says. That, in turn, can help a potential client base remember to call that lawyer first, he adds. People frequently greet Cantu as “the junkyard dog lawyer,” says Tholstrup, who represented Cantu in the registration of his mark. Tholstrup says Adler also has been able to capitalize on his mark. “My kids know who the ‘tough, smart lawyer’ is,” he says.

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