Illinois Bar Journal

May 2018Volume 106Number 5Page 12

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LawPulse

Chicago ‘O’Keefe’ firms settle naming dispute

One Chicago property tax firm had sued another, newer firm with a similar name.

Two Chicago-based law firms recently settled an unusual trademark dispute. The firms have a name in common - O'Keefe. O'Keefe Lyons & Hynes, LLC ("OLH") filed a complaint against O'Keefe Law Firm, LTD ("OLF") in the District Court for the Northern District of Illinois on July 21, 2017. The complaint alleged that OLF was violating OLH's federal and state trademark rights, in addition to violating federal and state unfair competition laws.

A case like this one is rare in the legal services field. However, it may prove instructive for firms who have names similar to local competitors, especially those in the same practice area.

OLH alleged that it had been using its firm name since 1937 and has always provided property tax legal services. OLF was apparently established in 2012, providing the same services as OLH. OLH claimed that it first became aware of the issue when one of its clients was confused between OLH and OLF. According to OLH, given that both firms advertise online and elsewhere, it is likely that this confusion would continue, in violation of its trademark rights.

The importance of priority

Chicago-based IP attorney Daniel Kegan, a member of the ISBA's Intellectual Property Section Council, says that priority is very important in trademark disputes. When a company or business has been using a specific name for many years, it may have priority over a later-founded company using the same or a similar name, Kegan says.

Because both firms have similar practice areas, the issue of priority likely played a role in the case, he says. OLH has been using its name for at least 80 years and has been practicing in the field of property tax legal services the entire time. Kegan notes that had the firms had divergent practice areas, the conflict might not have arisen.

OLH's unfair competition claim is based on facts and allegations very similar to those in its trademark claim. The firm alleged that OLF's use of a similar name constitutes a false designation of origin, description, and representation in violation of 15 U.S.C. § 1125(a) and 815 ILCS 510/1 et seq.

OLH also asserted a common law trademark violation under Illinois state law, based on the fact that OLH's name had acquired "secondary meaning." Secondary meaning is another important theory involving trademark disputes. For example, if a company has been selling something for a long time, the name might acquire secondary meaning among relevant customers. Some names, like McDonald's, become synonymous with a service or product. Such secondary meaning is much harder to prove when the product isn't famous.

Kegan speculated that the case might ultimately have settled because both firms were tired of spending the money on litigation. Also, the issues would be narrow and potentially confusing for jurors. He also says that in a trademark lawsuit, it is possible to be reimbursed for the fees of the lawsuit, which can also be an inducement to settle.

While terms of the settlement were not disclosed, the O'Keefe Law Firm continues to use that name but now has a disclaimer on the bottom of its home page: "O'Keefe Law Firm, Ltd. is not affiliated with O'Keefe, Lyons, and Hynes, LLC." For more, see ABA Journal, 2 Illinois law firms using the name O'Keefe settle their legal battle at https://bit.ly/2Hhr6Ay.


Matthew Hector
Matthew Hector is a senior associate at Woerthwein & Miller.

Member Comments (1)

All good points.  One additional twist is that surnames are presumed to not function as trademarks and become trademarks only after they become recognized as such.  So in addition to absolute priority -- who used the name first -- there was likely also an issue about which firm publicized its name sufficiently to create recognition first.  One would think there was sufficient uncertainty that settlement would be a wise choice.

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