Firms to resolve ‘Foley’ war

Milwaukee-based firm Foley & Lardner’s arbitration and litigation expertise came to good use in the firm’s long-running trademark infringement dispute with Boston-based rival Foley Hoag.

But all of the skill of the Milwaukee firm’s negotiators could not save the firm from having to review its shorthand moniker and marketing material in order to settle the dispute.

As reported by The Lawyer (14 August), Foley Hoag launched the lawsuit against Foley & Lardner last October over its rival’s use of the term ‘Foley’ in its marketing. Foley Hoag claims the use of the moniker caused confusion and incidents of mistaken identity.

Foley & Lardner did, however, have a minor win when the dispute was dismissed by a US federal district court. However, any celebrations were shortlived, as the dismissal was granted on the requirement that the firms finalise an anticipated settlement within 12 months.

Foley & Lardner is now understood to be considering changes to its abbreviated name (currently Foley), its marketing and its website address as part of the settlement agreement.

The firm’s general counsel Jim Clark told The Lawyer that the firm was “talking about a standard that would be employed here that would avoid disputes on a going-forward basis”.

The whole turbulent matter stems from 2004, when the US Patent and Trademark Office rejected Foley & Lardner’s request to trademark ‘Foley’ as its moniker on the grounds that it could cause confusion with Foley Hoag, which had trademarked its name in 2002. But Foley & Lardner continued to use the name ‘Foley’ on its website and marketing material anyway.