SAN FRANCISCO — One Fish, two Fish. One Fish, sue Fish?
Irvine, California-based intellectual property boutique Fish IP Law has sued Fish & Richardson, seeking a ruling that its name and logo don’t infringe the IP megafirm’s trademarks.
The lawsuit, filed Sept. 15 in the U.S. District Court for the Northern District of California, followed tense correspondence between the two IP-centric firms over the past month after the smaller firm tweaked its name.
According to the complaint, Robert D. Fish, the founder of the Fish IP Law firm, has continuously used his surname as part of law firms where he’s practiced since 1995, most recently with Mei Tsang as Fish & Tsang. When Tsang left the firm in July 2017, Fish renamed the firm Fish IP Law.
The rebranding caught Fish & Richardson’s attention, and 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. Fish IP Law, they contended, had designed a logo that “mimicked” the Fish & Richardson logo, which emphasizes the Fish name and acquired domain names fish-ip.com and fishiplaw.com.
In an email response sent the next day, Robert D. Fish noted that he had owned the fishIPlaw.com domain name for more than a decade without any confusion and that Fish & Richardson could not claim exclusive use of the Fish name. He attempted to downplay the possibility of anyone confusing his 10-lawyer shop with a firm with 350-plus lawyers and a dozen offices. “We certainly don’t want our clients and potential clients confusing us with Fish & Richardson, and whenever appropriate, we emphasize cost-effectiveness and other benefits of our boutique firm relative to Knobbe [Martens], Fish & Richardson, and other large firms,” he wrote.
The response from Robert Fish did little to appease the Fish & Richardson lawyers and they fired back a letter on Sept. 1 demanding that Fish IP Law “immediately revise” its name. They suggested that Robert Fish add his full name to the title or remove references to “IP Law.” They also suggested he change up the font, style and color scheme of his logo. The Fish & Richardson lawyers gave Fish IP Law a Sept. 15 deadline to make the changes, but the smaller firm opted to sue instead.
The lawsuit filed Sept. 15 seeks a declaratory judgment that Fish IP Law doesn’t infringe Fish & Richardson’s registered trademarks and that the larger firm cannot establish a common-law ownership interest in the term Fish. Neither Robert Fish nor John van Loben Sels, a lawyer at his firm, responded to messages Monday.
A spokeswoman for Fish & Richardson emailed a lengthy statement that said, in part, the lawsuit was “an overreaction to a very simple request” and that it “is not supported by the facts and has no legal merit.”
“Fish & Richardson asked Robert D. Fish to make small changes to the way he promotes his firm to avoid the likelihood of confusion with our firm,” she wrote. “Robert D. Fish has used the name ‘Fish IP Law’ to promote his firm for only a couple of months and has created a logo that is confusingly similar to ours. We believe there is a strong possibility of confusion in the marketplace. Our two firms can settle this issue in a reasonable manner, and we are disappointed that Robert D. Fish has indicated an intent to pursue litigation by filing a complaint.”