George Sink, P.A. Injury Lawyers v. George Sink II et al.
Dec 12, 2019
OUTCOME: Settled favorably and confidentially during arbitration
The George Sink Law Firm sued the son of the founder, George Sink, Jr. seeking injunctive relief in a case involving "trademark infringement, unfair competition, cybersquatting, unfair and deceptive tr...ade practices, and dilution."(2:19-cv-01206-DCN) I was hired to offer my opinion regarding the strength of the Sink name from a legal-marketing perspective, and the issues that could arise by having George T. Sink, Jr. marketing personal injury legal services in the South Carolina market alongside The Sink Firm, using the name “Sink.”
Trademark infringement
MONAHAN PRODUCTS LLC d/b/a UPPABABY, Plaintiff, v. SAM’S EAST, INC. and SAM’S WEST, INC., Defendants.
Jul 25, 2018
OUTCOME: Pending
This is a case involving allegations of trademark infringement, false advertising, and unfair competition under state and federal law. I was engaged by the Plaintiff, Monahan Products, manufacturers o...f high-end UPPAbaby strollers, to offer my opinion and testify regarding the corrective advertising necessary to remedy the damage allegedly caused by the actions of defendants, together “Sam’s Club” in selling authentic "gray market" UPPAbaby strollers.
Claims included: FEDERAL TRADE MARK INFRINGEMENT UNDER 15 U.S.C. § 1114; COMMON LAW TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION; FALSE ADVERTISING UNDER 15 U.S.C. § 1125(a); VIOLATION OF MASSACHUSETTS GENERAL LAWS, Ch. 93A (Case No. 1:18-CV-11561-FDS)
Advertising
Larry Pitt & Assoc. vs. Lundy Law, LLP. (Opposition No. 91210158, decided March 6, 2018)
Jan 01, 2014
OUTCOME: Pitt (client) won by Summary Judgment
This was a trademark dispute in Pennsylvania between two leading personal injury law firms. The suit was originally filed in 2012 with the USPTO to determine whether Lundy’s use of “REMEMBER THIS NAME”... functioned as a Service Mark, and whether Pitt’s “REMEMBER THIS NUMBER” constituted an infringement. Pitt, ably represented by Baker Hostetler’s Jacqueline Lesser, initially filed a Notice of Opposition against the registration of Lundy’s mark under the Trademark Act on the grounds that REMEMBER THIS NAME is merely descriptive or generic when used in connection with legal services. Ross was the legal marketing expert for Larry Pitt, in opposition.
The Board found Ross to be “qualified as a law firm marketing expert in the field of law firm advertising” and “qualified to testify as to how to convey legal marketing information to consumers and how practitioners in the field of legal marketing believe such information will be perceived.” Ross testified under oath, and provided both an expert report and amended expert report. The Trademark Trial and Appeal Board found in favor of Pitt in opposition, and refused Lundy Law’s registration.
Communications and media
Habush vs. Cannon & Dunphy
Jan 01, 2011
OUTCOME: Defense (client) won by summary judgment
Habush, Habush & Rottier vs. Cannon & Dunphy, two competing leading Wisconsin law firms waged aggressive marketing campaigns. One tool Cannon & Dunphy used was a pay-per-click campaign via Google, Bing..., and Yahoo. Briefly, the Cannon firm bid on the words in the Habush law firm name, so that a search that included, e.g. the word “Habush” would show a shaded Sponsored Link that would send a reader to the Cannon & Dunphy law firm’s website.
The plaintiff law firm alleged that this conduct was unethical and unreasonable and sued under a Wisconsin Invasion of Privacy statute. The plaintiff’s law firm marketing expert witness was Larry Bodine.
Ross’s expert witness report showed that the law firm defendants’ behavior, while aggressive, was both reasonable and ethical.
The case was decided on motion for summary judgment in which, following an apparent battle of the experts on this issue, the judge found as a matter of law that defendants’ conduct was not unreasonable:
“Lastly, [Judge] Kahn noted that Habush offered scholarly opinion that buying another lawyer’s name as a search term was ethically questionable, and therefore unreasonable. The defense offering contrary expert opinion.”
Ric Gass, the defendants' brilliant trial lawyer, later said, "First things first: Legal marketing is spelled Ross Fishman. There is no one who understands lawyer marketing better than Ross. He is a master communicator. Whether you need help with your website, your social media presence, advertising of any kind Ross is the person you should be talking to."
