Lawyers are not immune from intellectual property law. SINK v. SINK

Lawyers are not immune from intellectual property law. SINK v. SINK

A trademark is a word, phrase, symbol, or design that identifies and distinguishes the products of one party from competing products.  Trademark rights in the United States come from actual use of the mark in commerce. A trademark can last forever as long as you continue to use the mark in commerce to indicate the source of goods and services.  Registering the trademark with the United States Patent and Trademark Office is not mandatory to have a right to a trademark. Common law rights to a trademark can be gained to a trademark based solely on use of the trademark in commerce, without registration with the United States Patent and Trademark Office. However, federal registration of a trademark with the United States Patent and Trademark Office grants the owner of the trademark several advantages.

A person’s name is the most valuable piece of intellectual property that a person owns.  A person’s good name is integral to their standing in society.  Many people use their personal name as their business name as well. Use of a business name does not necessarily qualify as trademark use, though use of a business name as the source of goods or services may qualify it as both a business name and a trademark. Many states and local jurisdictions register business names as part of obtaining a certificate to do business as a corporate entity.   A state’s authorization to form a business with a particular name does not also give you trademark rights and states do not require proof of a trademark on a name to form a business.  A persons may use their personal name in business, and by using their personal name in business gain trademark rights.  However just because a person is allowed to form a company using their name does not mean they are immune from trademark infringement suits.  A senior user of a trademark may claim that a junior use is committing trademark infringement.

GEORGE SINK, P.A. INJURY LAWYERS, v. GEORGE SINK II LAW FIRM LLC, 2:19-cv-01206 (D.SC 2019) is a case which revolves around two attorneys disputing who owns the trademark to the name they share.  The plaintiff in this case is George Sink Sr. His son, George Sink Jr., is the defendant.  The plaintiff started a law firm, Sink P.A. in 1997.  Since that time the plaintiff has continuously used SINK in his law firm’s advertising and marketing.  Plaintiff owns U.S. Service Mark registration No. 3,849,776 (“the ‘776 mark”) for the GEORGE SINK, P.A. INJURY LAWYERS and design mark, which was issued on September 10, 2010 after the mark was allegedly first used in commerce as early as February 18, 1999.

The defendant joined the plaintiff’s law firm in 2013.  The defendant’s employment with plaintiff was terminated on February 7, 2019.  At some point after that the defendant began offering legal services under the name GEORGE SINK in competition with the plaintiff. The plaintiff alleges various instances of confusion among the public from defendants’ use of plaintiff’s trademarks. The plaintiff filed a complaint for trademark infringement against the defendant in  April 25, 2019 and requested a preliminary injunction preventing the defendant’s use of GEORGE SINK.  The defendant filed a motion to dismiss on the grounds that it does not use GEORGE SINK P.A.
INJURY LAWYERS, only George Sink, the defendant’s given name.

The court denied the defendant’s motion to dismiss and granted the preliminary injunction.  The Court noted that the defendant does not use the entire trademark claimed by the plaintiff, however, the trademarks need only be sufficiently similar in appearance, with greater weight given to the dominant or salient portions of the marks.  Because the dominant portion of the trademark is GEORGE SINK the court reasoned that there could be consumer confusion.  With respect to the fact that the defendant’s name is the trademark in dispute, the court found that the mere fact that the trademark is George Sink Jr.’s given name does not automatically shield him from allegations of infringement.  The law does not generally afford the defendants an unlimited right to use their own surnames in business.

This does not mean that the defendant has completely lost the case, however while the preliminary injunction is in place, the defendant will have to advertise his services using a different trademark.

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