You know those ads for personal injury lawyers on the backs of SEPTA buses offering BIG CASH SETTLEMENTS!!!?
Have you ever been "confused" or "mistaken" as to whether those lawyers work for SEPTA?
Me neither. (Then again, I’m a lawyer who sues SEPTA.)
How about a law firm website that shows a picture of a SEPTA bus while discussing how they represent people with claims against SEPTA? Would that "confuse" you into believing that SEPTA was offering to help you sue it?
Personal injury lawyers have received their fair share of comments within the profession over advertising methods, but now one Philadelphia law firm is facing scrutiny from SEPTA over the use of the transit company’s logo and name on the firm’s
website and in its phone number.
SEPTA has sued personal injury firm Mednick Mezyk & Kredo and name partner Michael S. Mednick for its use of both the “SEPTA” logo and the red and blue “stylized S” mark that SEPTA has registered as trademarks.
The complaint is available here, alleging Trademark Infringement, Common Law Trademark Infringement, Unfair Competition and False Advertising, Dilution, and Common Law Unfair Competition. The offending website is still up and running here.
Defendants’ use of copy, variation, reproduction, simulation or colorable imitation of the SEPTA registered marks infringes upon SEPTA’s rights in its federally registered trademarks, is likely to cause (or has already caused) confusion, mistake, or deception regarding the origin of the services offered by Defendants, and constitutes trademark infringement, in violation of the Lanham Act, 15 U.S.C. § 1114(1) and the Pennsylvania Trademark Act 54 Pa. Cons. Stat. Ann. §1101 et seq.
It’s like they’re trying to one-up the FBI, which at least had a specific statute to rely on when foolishly threatening Wikipedia over the use of their seal.
The firm’s site won’t cause "confusion, mistake, or deception," at least not here in the Third Circuit:
"To prove likelihood of confusion, plaintiffs must show that consumers viewing the mark would probably assume the product or service it represents is associated with the source of a different product or service identified by a similar mark." Checkpoint Sys., 269 F.3d at 280 (internal quotation marks removed). In Interpace Corp. v. Lapp, Inc., we set forth the factors which may indicate a likelihood of confusion:
(1) the degree of similarity between the owner’s mark and the alleged infringing mark;
(2) the strength of the owner’s mark;
(3) the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase;
(4) the length of time the defendant has used the mark without evidence of actual confusion arising;
(5) the intent of the defendant in adopting the mark;
(6) the evidence of actual confusion;
(7) whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media;
(8) the extent to which the targets of the parties’ sales efforts are the same;
(9) the relationship of the goods in the minds of consumers because of similarity of functions; and
(10) other factors suggesting the consuming public might expect the prior owner to manufacture a product in the defendant’s market or that he is likely to expand into that market.
721 F.2d at 463. "None of these factors is determinative in the likelihood of confusion analysis and each factor must be weighed and balanced one against the other." Checkpoint Sys., 269 F.3d at 280. In reviewing a district court’s analysis of the Lapp factors, we can reverse the court’s conclusions if the relevant factors are not properly set forth and not properly weighed. See Kos Pharmaceuticals v. Andrx Corporation, 369 F. 3d 700, 711-12 (3d Cir. 2004).
Sabinsa Corp. v. Creative Compounds, No. 08-3255 (3d Cir., July 9, 2010).
SEPTA has a winner on factors 1, 2, and maybe 7, but a total loser on everything else. Batting just shy of .300 might work for Ryan Howard, but it’s not going to do much for SEPTA.
Consider 9, for example. Here’s how the offending MySEPTALawyer.com site describes Mednick, Mezyk & Kredo’s services:
<object classid="clsid:D27CDB6E-AE6D-11cf-96B8-444553540000" codebase="http://download.macromedia.com/pub/shockwave/cabs/flash/swflash.cab#version=9,0,28,0" width="399" height="642"> <param name="movie" value="bus.swf" /> <param name="quality" value="high" /> <embed src="bus.swf" quality="high" pluginspage="http://www.adobe.com/shockwave/download/download.cgi?P1_Prod_Version=ShockwaveFlash" type="application/x-shockwave-flash" width="399" height="642"></embed> </object><img src="http://myseptalawyer.com/home/images/shadow_center.png" height="0" width="14">
If you have been injured in a SEPTA bus or SEPTA trolley accident, you need to contact the lawyers at MySeptaLawyer.com for a free consultation to discuss how you may be compensated for your pain and suffering, medical bills and lost wages.
Although based in Philadelphia, SEPTA is considered a State agency and therefore, claims involving SEPTA involve more complex issues than most accident cases. This is because SEPTA is afforded certain immunities under the law, the same that apply to the Commonwealth of Pennsylvania.
Does SEPTA really think the people of Southeastern Pennsylvania can’t tell the difference between SEPTA and the lawyers that sue it? The difference between a ride on public transit and a lawsuit?
We’re still on the first count of the complaint. We haven’t even started on defenses like fair use. It doesn’t get better from there on.
Frankly, if SEPTA really does think that consumers might draw the wrong connections between SEPTA buses and advertising, then why does SEPTA allow personal injury lawyers — or any business — to advertise on its buses? On the way home from work yesterday, I was almost crushed by a thirty-foot-long Pulled Pork Sandwich; if I walk to Subway tomorrow and buy one, should I presume it to be a culinary experiment of my local transit authority?