Battle of the law firms: Fish IP v Fish & Richardson
California-based IP law firm Fish IP Law has filed a complaint for declaratory judgement of non-infringement after it allegedly received “threatening letters” from Fish & Richardson (F&R).
Filed on Friday, September 15, the complaint stated that after Fish IP Law received cease-and-desist letters last month, it was reasonable for the law firm to develop a real and reasonable apprehension that it would be subject to a claim for liability for trademark infringement”.
According to the claim, F&R has asserted that the firm is infringing F&R’s trademark ‘FISH’ by using the name Fish IP Law.
F&R has also allegedly claimed that Fish IP Law made “changes to the firm logo and online advertising that mimic F&R”.
Fish IP wants the court to find that F&R cannot establish an ownership interest or exclusive use of the term “Fish”.
F&R owns the mark ‘Fish, Fish & Richardson’ (US trademark registration number 4,792,956), and the mark ‘Fish’ with a “completely shaded diamond” next to it (number 4, 802,053)
“Despite the inclusion of the word ‘Fish’ in its service mark, F&R owns no right to the word ‘Fish’ alone or when placed alongside a description of the services provided by Fish IP Law or any other entity for that matter,” said the suit.
Fish IP law was founded by Robert Fish in 2007.
According to the complaint, Robert Fish has continuously used the name Fish as part of the name of various law firms in which he was sole owner or a partner since 1995.
This includes law firm Crocket & Fish, before he “switched over to Fish & Associates in 2000”.
Fish IP has ten staff members in two offices in California,The complaintF&R “is one of the largest law firms in the world and currently employs over 354 lawyers in 12 offices around the US”.
A spokesperson for F&R said that the claims are “not supported by the facts and have no legal merit”.
"It is an overreaction to a very simple request," they added.
"F&R asked Robert Fish to make small changes to the way he promotes his firm to avoid the likelihood of confusion with our firm. We have been using the name Fish in connection with IP services since 1878. We believe there is a strong possibility of confusion in the marketplace.”
The spokesperson concluded that the firms can settle the issue in a “reasonable manner”, but that F&R was disappointed that Robert Fish “has indicated an intent to pursue litigation by filing a complaint”.
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