The trademark fight over which intellectual property law firm can use the “Fish” moniker has ended without much of a splash.
Irvine, California-based boutique Fish IP Law LLP indicated in court papers filed Monday afternoon that it’s dropping its lawsuit against Fish & Richardson. The smaller firm was seeking a ruling that its name and logo didn’t infringe the IP megafirm’s trademarks.
Reached by phone Monday afternoon, Fish IP Law LLP partner John van Loben Sels said the firms reached an informal agreement whereby his firm would get to keep its name and Fish & Richardson wouldn’t pursue any trademark claims against it.
“I think they’ve kind of decided to let us go our own way,” van Loben Sels said. “I like to think that we convinced them that there wasn’t any likelihood of confusion which they would have had to prove at trial.”
The dispute broke out after the smaller firm adopted the “Fish IP Law” name this summer. Although firm founder Robert D. Fish claims he has continuously used his surname as part of firms where he’s practiced since 1995, the firm’s rebranding from Fish & Tsang after partner Mei Tsang’s July 2017 departure caught the bigger Fish’s attention.
Fish & Richardson firm trademark and copyright practice group leader Cynthia Walden and firm general counsel Roger Feldman sent Robert D. Fish a cease-and-desist letter on Aug. 15.
“As an IP attorney yourself, surely you understand that Fish has expended a significant amount of time, money, and effort in the development and promotion of its FISH Marks, and is therefore very conscious of its IP rights, and the importance of enforcing those rights to protect its brand and prevent confusion in the market,” the Fish & Richardson attorneys wrote.
After a correspondence between the two firms failed to resolve the dispute, Fish IP Law filed a declaratory judgment lawsuit in September. The smaller firm filed a notice Monday afternoon stating it was dismissing the suit without prejudice.
Fish IP Law partner van Loben Sels said that the firm has applied for trademark protection for its name, as well as its domain name, fish-ip.com, a fact highlighted by the prominent TM’s on the firm’s website. A Google search of the smaller’s firm name conducted Monday afternoon, however, returned an advertisement for Fish & Richardson in the first spot.
“I suppose if we were litigating with them, that we would have made something of that,” said van Loben Sels, in response to a question about the Google search results.
Said van Loben Sels, “Our firm’s founder, Bob Fish, certainly believes that he has the right to use his name in his law firm the way he has and we’re going to continue to do it.”
A spokeswoman from Fish & Richardson said in an email that the firm was “pleased that our firms were able to find an amicable resolution to this matter.”