May a law firm advertise with a picture that includes a potential defendant’s trademarked logo?

The Southeastern Pennsylvania Transportation Authority (“SEPTA”) of Philadelphia, recently sued the Philadelphia law firm of Mednick, Mezyk & Kredo (the “firm”) for trademark infringement over the firm’s use of a SEPTA bus on its website and for its telephone number, which contained the word “SEPTA.”

The reason the law firm wanted to use the SEPTA logo was that the law firm’s practice focused on lawsuits against SEPTA. In fact, the law firm’s phone number was 888-SEPTA-LAW. Their website was myseptalawyer.com.

According to SEPTA, the firm’s use of both the “SEPTA” logo and the red and blue stylized “S” mark in its advertising was infringing upon SEPTA’s registered trademark.  The lawsuit also alleged that the firm advertised in Philadelphia newspapers using SEPTA’s colors in addition to its trademarks.  The firm’s website displayed an image of a bus displaying the SEPTA trademarks that SEPTA argued was virtually identical to an image of a SEPTA bus.  Thus, SEPTA argued that the firm’s use of the trademarks was identical to SEPTA’s use of the trademarks in violation of the law.  Prior to filing suit, SEPTA sent the firm a cease and desist letter.

In response to the cease and desist letter, the firm denied that it was infringing on SEPTA’s trademarks and continued to use the website and telephone number.  After filing suit, SEPTA argued that the firm’s continued use of the trademarks constituted bad faith and continued and willful infringement.  SEPTA alleged in its complaint that the firm’s use of SEPTA’s trademarks had, or was likely to, cause confusion in the minds of consumers as to the origin of the firm’s services and/or its possible affiliation with SEPTA.  SEPTA claimed that the firm’s actions caused damage to its goodwill and reputation.

The firm took the position that its use of the trademarks constituted a fair use under the law and that there was little chance people would confuse personal injury lawyers representing victims hurt on SEPTA property with lawyers employed by SEPTA.  Despite taking that position, the firm ultimately settled the lawsuit with SEPTA, agreeing to remove its website and change its telephone number.  In exchange, SEPTA agreed to a transition period during which the firm may change over its website and telephone number.

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