After getting a cease-and-desist letter from The Employment Law Group, The Najjar Employment Law Group of Andover, Mass., filed a declaratory judgment action in the District of Massachusetts on June 7: The Najjar Employment Law Group P.C. v. The Employment Law Group P.C.
The Najjar firm asked the court to declare that it had not infringed two of The Employment Law Group’s trademarks and that those trademarks are invalid. The firm’s complaint claims a lawyer for The Employment Law Group sent it a cease-and-desist letter dated May 24.
According to the U.S. Patent and Trademark Office’s trademark applications and registrations retrieval database, both of the Washington firm’s trademarks were registered in 2008.
Both trademarks are word-only marks: “The Employment Law Group” and “TELG The Employment Law Group.”
The Najjar firm’s lawyer for the case, Dean Bostock of Andover-based Hayes Bostock & Cronin, an intellectual property boutique, did not respond to requests for comment. Debra Dyleski-Najjar, the firm’s president and founder, declined to comment.
The Employment Law Group did not respond to requests for comment.
Martin Schwimmer, a partner at White Plains, N.Y.-based Leason Ellis, who isn’t involved in the case, said the trademark office approved The Employment Law Group’s trademarks by showing that while “The Employment Law Group” was a descriptive phrase, it had achieved “secondary meaning through its use,.”
However, since the registration is less than five years old, it has not achieved incontestable status under the Lanham Act, Schwimmer said.
“This means that, now, Najjar can attempt to show either that the phrase is generic, or that the term has not achieved secondary meaning as a result of widespread descriptive use in the field,” Schwimmer said.
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