State Bar sues competing service provider over similar logo

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To protect its investment in a new logo and prevent loss of business, the State Bar of Wisconsin filed a federal trademark infringement suit (PDF) against a competitor.

LexisNexis, a global legal service provider and operator of Lawyers.com, is the target of a federal lawsuit filed Aug. 19 by the Wisconsin bar, which is taking issue with LexisNexis’ use of a pillar logo similar to the State Bar’s.

Attorney James Peterson of Godfrey & Kahn SC is representing the State Bar. Peterson said the Wisconsin organization wants to protect its trademark rights because of the similar scope of services offered by Lawyers.com.

“As a legal principle, services don’t have to be directly competitive to be confusingly similar,” Peterson said. “All that matters is it’s close enough so the consumer might be confused.”

LexisNexis attorney Steven Wildfeuer declined to comment on the pending litigation.

Both websites showcase lawyer search tools, substantive articles about the law and outlets to find attorneys in a variety of practice areas.

According to the complaint filed in U.S. District Court for the Western District of Wisconsin, Lawyers.com recently began using a “strikingly similar” pillar logo that conflicts with one the State Bar filed a patent application for in February 2010.

The State Bar began using the new pillar logo as early as June 1, 2010, according to the complaint.

The complaint alleges LexisNexis declined to remove the logo after being contacted by the State Bar and conducted no search for potentially conflicting marks before it adopted its infringing pillar mark.

“We had no warning of their change at all,” Peterson said. “We filed our application in February 2010 and our intent is a matter of public record.”

Peterson acknowledged that the State Bar could likely be losing web traffic as a result of the similar logos, but said the bar is only seeking to have LexisNexis change its logo.

According to the complaint, the State Bar seeks an injunction prohibiting LexisNexis from any further use of its infringing pillar mark, or any other mark that is confusingly similar to the pillar icon.

In addition, the bar is seeking attorney costs and “any further relief to the State Bar as this court may deem appropriate.”

“This is not about trying to turn this unfortunate situation into a financial bonanza,” Peterson said. “It’s really just to protect our reputation and image and make sure people understand the difference between the State Bar’s high-quality material and the other commercial products in the market.”