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The right to use one’s own name is not absolute. Just ask New London, Conn., attorney S. Joel Suisman. In deciding a bitter trademark dispute between former colleagues, U.S. District Judge Janet C. Hall has determined Suisman was not acting in good faith when he set out to create the law firm of Suisman & Shapiro after an acrimonious departure from his former firm, the venerable Suisman, Shapiro, Wool, Brennan, Gray & Greenberg. Both firms are located in New London, and Hall found Suisman went out of his way to confuse his former firm’s clients and potential clients of its continued existence. In a telephonic decision issued May 26, Hall preliminarily enjoined the defendants Joel Suisman and Andrew Shapiro from using the name “Suisman & Shapiro” or any combination of “Suisman” followed by “Shapiro” whether connected by an ampersand, colon, slash marks or commas. The injunction was based in part on the eight-part test laid out in the 2nd U.S. Circuit Court of Appeals’ 1961 decision in Polaroid Corp. v. Polaroid Electronics Corp. A defendant’s good faith in adopting the trademark at issue is among the factors a trial court must consider. And Hall found Joel Suisman’s questionable, given the ongoing animosity between him and his former firm. “This might have been a tactic in connection with that dispute,” Hall said. “The court cannot conclude that [the defendants] have acted in good faith.” In her finding of facts, Hall determined that Joel Suisman had practiced at Suisman Shapiro since the early 1960s until early in 2004 “at which time he either left or was terminated.” She noted that Joel Suisman, at one point, told Suisman Shapiro President Andrew Brand that he would open a firm “with Attorney Shapiro and perhaps a decedent of Attorney [Louis] Wool, the Wool in the original firm in order to establish a firm of Suisman, Shapiro and Wool in New London.” The judge also questioned Andrew Shapiro’s involvement in the newly created firm. A member of the Florida bar, he has not practiced in Connecticut since the early 1980s. Hall said in her decision, “There is no listing for Andrew Shapiro, Esquire, and Attorney Shapiro has to date undertaken no efforts to obtain a stationery or related items like that that would be needed in conjunction with the practice of law.” Hall criticized the new firm’s stationery because it lists a history going back to 1930 that begins with Joel Suisman’s father, Charles Suisman. “That history together with the name on the top of the stationery strongly suggests that the defendants, as associated in the practice of law, are in fact the plaintiff law firm.” Richard Weinstein, of West Hartford’s Weinstein & Wisser, represents the Suisman Shapiro firm, and said his clients are pleased with the ruling. The two sides, Weinstein added, are in mediation to resolve other issues surrounding Joel Suisman’s departure. In an interview with the The Connecticut Law Tribune in March, Joel Suisman’s attorney, William F. Gallagher, argued that his client is entitled to the use of his name. Gallagher, of New Haven’s Gallagher & Calistro, could not be reached last week by press time. Hall also enjoined the defendants from continuing to maintain a telephone listing under the Suisman & Shapiro name or from using it in advertisements. She concluded that “in the public’s view, Suisman Shapiro [does] not describe two persons who are lawyers who practice but rather describe a group or collection of lawyers … practicing in New London.” Hall shot down Joel Suisman’s argument that he should be able to use his own name. “It is not the Law Offices of Joel Suisman that’s at issue in this lawsuit,” she said. “The case law does not support the proposition that one is absolutely entitled to use even one’s personal name, if the result of that use is to cause confusion.”

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