Philadelphia personal injury firm Lundy Law has sued fellow Philadelphia personal injury firm Larry Pitt & Associates, claiming the Pitt firm’s "Remember This Number" slogan is too close to Lundy Law’s "Remember This Name" slogan.
In a memorandum in support of its motion for preliminary injunction filed March 4 in the U.S. District Court for the Eastern District of Pennsylvania, Lundy Law argued that Pitt & Associates’ slogan is "likely to confuse, deceive and mislead consumers."
In a separate complaint also filed March 4, Lundy Law alleged trademark infringement, unfair competition and false designation of origin under the federal Lanham Act.
Lundy Law said in its memorandum that it has used "Remember This Name" in its advertising since May 2011 and became aware this past January that Pitt & Associates had begun using the slogan "Remember This Number."
"Lundy Law’s use of ‘Remember This Name’ is, for example, used exclusively and extensively on the outside and extensively on the inside of transit buses, subway and commuter rail cars … and Pitt specifically used ‘Remember This Number’ on posters … on the inside of buses, subway and commuter rail cars in the same size, configuration and location," Lundy Law said in its memorandum.
Lundy Law alleged in its memorandum that Pitt & Associates’ advertising campaign "was specifically designed to and has likely caused the public to believe, contrary to fact, that Pitt’s business activities and services offered under the name and mark ‘Remember This Number’ are sponsored, licensed and/or otherwise approved by, or in some way connected or affiliated with Lundy Law."
On January 25, according to the memorandum, Lundy Law’s counsel sent a cease-and-desist letter to Pitt & Associates, but the Pitt firm has continued to use the "Remember This Number" slogan.
In seeking a preliminary injunction, Lundy Law claimed in its memorandum that it will lose control of its reputation and good will if Pitt & Associates is allowed to continue using the "Remember This Number" slogan.
Lundy Law also argued that it is likely to succeed on the merits because "Remember This Name" is a suggestive mark that does not directly describe the services being offered.
Citing the reasoning in the 2010 Eastern District of Pennsylvania case Alliance Bank v. New Century Bank, Lundy Law argued in its memorandum that because the mark is suggestive, it should be treated as distinctive, making it an automatically protected trademark.
Lundy Law also said in its memorandum that "Remember This Name" meets every prong of the test to determine the likelihood of confusion in the marketplace originally set forth in the 1983 U.S. Court of Appeals for the Third Circuit case Interpace v. Lapp.
Lundy Law argued in its memorandum that Pitt & Associates’ use of "Remember This Number" is likely to confuse consumers because it’s so similar to "Remember This Name."
"The similarities in the mark ‘Remember This Name’ and mark ‘Remember This Number’ far outweigh their slight differences, especially when considering the fact that under actual marketing conditions, consumers do not have the luxury of making side-by-side comparisons between marks and must rely on their imperfect recollections," Lundy Law said in its memorandum. "Average purchasers are not infallible in their recollection of trademarks and often retain only a general overall impression of marks that they may previously have seen in the marketplace."
Furthering the likelihood of confusion, Lundy Law argued in its memorandum, is the fact that the services it provides are nearly identical to those provided by Pitt & Associates.
Lundy Law also argued in its memorandum that "Remember This Name" has "substantial commercial strength."
"Lundy Law has been almost continually the most prominent largest legal advertiser in Southeastern Pennsylvania, Southern New Jersey and Delaware for years and, thus, one of the best known firms in the tri-state area," the firm said in its memorandum.
In addition, Lundy Law argued in its memorandum that the majority of consumers who select personal injury attorneys based on advertisements are "unsophisticated and oftentimes minimally educated," which creates an even greater likelihood of confusion.
"In any event, even sophisticated consumers who may be knowledgeable as to legal services are not necessarily knowledgeable in the field of trademarks or immune to source confusion arising from the use of confusingly similar marks on closely related goods," Lundy Law said in its memorandum, adding that the lack of evidence of actual confusion is irrelevant.
Counsel for Lundy Law, Manny D. Pokotilow of Caesar, Rivise, Bernstein, Cohen & Pokotilow in Philadelphia, declined to comment.
Pitt & Associates’ attorney, Jacqueline Lesser of Woodcock Washburn in Philadelphia, said this case involves "generic or descriptive instruction embedded in advertising without any trademark significance."