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No infringement in law firms’ trademark fight

By Mike Mosedale
Dolan Media Newswires

To build up its personal injury practice, the Krueger Law Firm in Roseville, Minn., urges prospective clients to call 1-800-INJURED, a trademark the three-attorney firm licenses through the Mountain Marketing Group, an Illinois company with a niche in the alphanumeric telephone business.

Meanwhile, in Minneapolis, the firm of Heimerl & Lammers advertises its services with a pitch to dial 612-INJURED or, for those on the web, to click on 612injured.com.

Are the numbers so similar that consumers are likely to be confused and/or deceived?

Did Heimerl & Lammers deliberately seek to create the confusion?

Were the Krueger Law Firm and the Mountain Marketing Group harmed?

Mountain Marketing Group and Krueger insisted they did and in January 2014 filed a federal suit against Heimerl & Lammers, asserting claims of trademark infringement, unfair competition, and cyber-squatting

After more than two years of litigation and a trial before U.S. District Court Judge Susan Nelson in St. Paul, a jury came back with a different answer: No.

“My clients are really grateful that they got a fair trial and that they got a good jury that was able to sort through a complicated set of facts,” said Ashwin Madia, the Minneapolis attorney who represented Heimerl & Lammers at the trial. “My clients never had any intention to confuse anybody and they didn’t believe anybody was confused.”

Why did this case go to trial?

For one thing, Madia, Heimerl & Lammers were confident all along they had not infringed. And then there was the question of money. Over the full course of the litigation, according to Madia, the plaintiffs’ lowest demand for settlement was $600,000.

A week before the case went to trial, the opposing counsel — David Jendrzejek of Moss & Barnett in Minneapolis — upped the ante with a final demand of $1 million.

In his letter relaying that offer, Jendrzejek confidently asserted that Judge Nelson’s pretrial motion rulings “make clear that Plaintiffs are certain to prevail at trial, not only with respect to their claims for infringement and damages, but with also respect to an award of attorney’s fees.”

In a similar spirit, Madia responded last week with a motion seeking $403,000 in attorney fees on behalf of Heimerl & Lammers and its insurer.

Under the Lanham Act, attorney fee awards are permissible in certain “exceptional cases” and, Madia argues, that standard should be satisfied by what he called a “groundless case pursued in an unreasonable manner.”

In a sometimes withering memorandum, Madia wrote that evidence at trial was “so weak” that, in the end, the plaintiffs ended up asking for a nominal damage of award of $1 but “the jury refused even that pathetic request.”

According to the Madia, that wasn’t the plaintiffs’ only misstep at trial. After John Kreuger, the principal at Krueger Law Firm, testified that he spent $350,000 on advertising prior to the lawsuit, Madia wrote, Judge Nelson struck the testimony because there was no documentation.

Madia also asserted that the advertising expenses claimed as damages were all incurred after the litigation commenced — making it, in his view, “manufactured evidence created for the purpose of increasing Plaintiff’s monetary damages.”

Neither Krueger nor Jendrzejek returned calls seeking comment.


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