1 April 2022Trademarks

Best Lawyers sues Washingtonian over lawyer ranking TMs

Peer review publication Best Lawyers has accused its competitor Washingtonian of infringing trademarks by publishing a lawyer directory and referral service.

In a suit filed Wednesday, March 30, at the US District for the District of Colombia, Best Lawyers claimed that Washingtonian—a monthly magazine distributed in the Washington, DC—had infringed the ‘Best Lawyers’ trademarks when publishing “Washington, D.C.’s Best Lawyers” in December 2020.

“Through its unauthorised and infringing uses of the ‘Best Lawyers’ marks, Washingtonian is deliberately and improperly capitalising upon the goodwill that Best Lawyers has built up in its ‘Best Lawyers’ marks,” alleged the complaint.

At issue are five US trademarks which consist of variations on the term ‘Best Lawyers’. There are three ‘Best Lawyers’ trademarks and two ‘Best Lawyers in America’ trademarks.

According to Best Lawyers, there’s already confusion in the market, with attorneys and law firms already placing advertisements with Washingtonian to appear in its “Best Lawyers” feature under the “mistaken belief that they are placing such advertisements with Best Lawyers or that there is a connection, affiliation or sponsorship relationship between Best Lawyers and Washingtonian when there is none”.

Best Lawyers claimed that Washingtonian’s intentional misappropriation is causing irreparable injury to Best Lawyers and has substantially damaged the value of the trademarks.

The suit added: “Washingtonian has unjustly enriched itself at Best Lawyers’ expense by advertising and selling products and services in connection with the ‘Best Lawyers’ marks in a manner that appropriates and exploits Best Lawyers’ goodwill and reputation.”

Best Lawyers sent a cease-and-desist letter to Washingtonian last July and, according to the claim, Washingtonian responded with a denial of infringement and refusal to comply with demands.

After further correspondence, in February this year, counsel for Washingtonian reportedly sent an email to Best Lawyers’ counsel “providing assurances” that it would not use the trademarks or engage in any activity that would cause confusion between the parties.

However, Best Lawyers filed suit after reportedly finding that Washingtonian’s infringing uses of the trademarks remained on Washingtonian’s website and the internet.

Best Lawyers has asked the court to find that Washingtonian has engaged in trademark infringement and that the infringing goods be destroyed.

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