We have another rather bizarre infringement action based on a fairly common symbol. The State Bar of Wisconsin has sued LexisNexis over its use of an online logo that looks like its own symbol. Once again, as with prior lawsuits by Apple and other organizations, I fail to understand the tightening stranglehold of infringement actions over the use of common symbols and terms. The column is a standard symbol for lawyers and schools. In my view, the Wisconsin Bar is showing poor judgment in litigating such an issue — particularly when there is little danger of confusion for observers.
Yet, the bar insists that confusion is obvious and harmful:
Consumer confusion is inevitable. If LexisNexis’ infringement continues, members of the public and the legal profession will be confused into thinking—incorrectly—that there is some affiliation or relationship between the Lawyers.com services and the services offered by the State Bar. To protect its own investment in the Pillar Icon, and to protect the public and the legal profession from this inevitable confusion, the State Bar seeks declaratory and injunctive relief preventing LexisNexis from the continued use of its infringing pillar mark.
I am afraid I am not convinced. The pillar symbols are in fact different and the general use of such a symbol is ubiquitous in the legal profession. It seems rather silly to start claiming some degree of ownership over Doric, Ionic or Corinthian designs.
Here is what the bar told its members:
State Bar files lawsuit against LexisNexis for trademark infringement
Aug. 22, 2011 – The State Bar of Wisconsin filed a lawsuit on August 19 against LexisNexis to enforce the State Bar’s federally registered Pillar Icon trademark. LexisNexis recently began using a similar pillar logo on its legal information website, Lawyers.com. LexisNexis has so far refused the State Bar’s request that it change the Lawyers.com logo.
The State Bar maintains a portfolio of trademarks to promote and distinguish its goods and services, which include highly regarded publications, educational programs and public information services. The Pillar Icon, used in connection with all the State Bar’s goods and services, represents the State Bar’s excellent reputation as one of the nations’ leading bar associations.
State Bar members should be assured that the association completed the selection and registration of its trademarks with great care. The State Bar adopted the Pillar Icon after a careful screening for potentially conflicting marks and promptly applied for federal registration. That application resulted in federal registration of the Pillar Icon, which gives the State Bar the exclusive nationwide right to use the Pillar Icon and the right to prevent others from using confusingly similar marks.
Like other trademark owners, to protect its reputation and to preserve its trademarks, the State Bar has an obligation to enforce its rights against the unauthorized use of confusingly similar trademarks.
Frankly, I do not believe that “the State Bar’s excellent reputation” is advanced by such lawsuits. I would have the same skepticism if a group of Corinthian descendants sued. The bar (which polices the line for frivolous or vexatious filings) should have shown more judgment. While this is not a frivolous filing in the sense that there is a basis for the lawsuit, it is not in my view a worthy use of the time of either the Court or the Bar.
Here is the lawsuit: BarvLexis