South Bend; IN – Trademark lawyers for Zimmer, Inc. of Warsaw, Indiana filed a trademark infringement suit alleging that Ari Kresch, a Michigan attorney, and other law firms and attorneys in Michigan and Texas infringed various trademark registrations, including Trademark No. 647,921, Trademark No. 1,778,807 and Trademark No. 1,707, 954 registered with the US Trademark Office.
Zimmer develops, manufactures and sells a line of knee replacement devices called NexGen®. Zimmer’s trademark attorneys alleged that these attorneys and law firms have used Zimmer’s trademarked graphics and logos on their websites and television advertisements to attempt to attract personal injury clients relating to the NexGen® knee replacement line and other Zimmer products. The law firms and attorneys apparently sought to bring personal injury lawsuits against Zimmer that would allege Zimmer’s products caused injury. According to Zimmer’s complaint, these attorneys and law firms used false information about Zimmer’s products in these attempts to gain clients. Allegedly, the defendants also sent letters to Zimmer’s customers advising them of potential problems with Zimmer’s products. Zimmer’s attorneys allege that the defendants have also registered an internet domain name that also infringes on the Zimmer’s trademarks. Trademark attorneys for Zimmer alleged trademark infringement, false advertising, false designation of origin, and unfair competition under the Lanham Act, 15 U.S.C. § 1125. Zimmer has also made a claim of “cybersquatting” as a violation of the Lanham Act, 15 U.S.C. § 1125(d), stating that the domain name registered by the defendants was confusingly similar to Zimmer’s trademarks and was in bad faith. The complaint also alleges common law trademark infringement, defamation, tortuous interference with business relationships, product disparagement, and common law unfair competition. Zimmer is seeking a permanent injunction barring the use of their trademarked materials by the defendants, as well as damages and attorneys’ fees.
Practice Tip: This case raises interesting questions about trademark rights versus the first amendment right to free speech, particularly in the context of attorney advertising. Trademark rights are not a total bar to one party use of another’s trademark material to advertise another product or service. For example, the Lanham Act, 15 U.S.C. § 1125(c)(3)(A)‘s fair use doctrine discusses use for advertising for comparison to another product and criticizing a trademarked good or service. The defendants are likely to claim that their use of the trademarked materials falls under this category.
This case has been assigned to Judge William C. Lee and Magistrate Judge Christopher A. Nuechterlein in the Northern District of Indiana, and assigned case no. 3:11-cv-00063-WCL-CAN.
Complaint – Zimmer v. Kresch