Talk about a bold move.
Denver law firm Bold Legal has been hit by a lawsuit by Washington-based firm Bold IP, which wants a court to rule the Denver firm must drop — you guessed it — “bold” from its name.
The Washington firm said it has had “Bold IP” trademarked in connection with the offering of legal services since 2015, and “Bold Intellectual Property” since 2017. In the lawsuit filed in U.S. District Court in Denver, it accuses the Denver firm of violating that trademark.
Bold Legal disputes that characterization.
“The word ‘Bold’ has been and continues to be used in law firm service marks predating Bold IP’s first use,” Bold Legal CEO David Kendall said in an email. “These include federally registered marks that issued before Bold IP’s alleged first use and that have registered as recently as 2018, showing that no entity has exclusive rights to Bold for legal services.”
Denver’s Bold Legal opened in September 2016. The firm, which has five attorneys, includes intellectual property matters as one of 10 practice areas on its website.
“Bold Legal’s name is based on our founders’ commitment to take bold action to stand for what is right and to champion the interests of our clients and colleagues,” Kendall said. “Being Bold is core to our identity. It’s how we practice law and how we live our lives.”
Washington’s Bold IP has operated since at least April 2014 and specializes in patent law. The firm said in the lawsuit it offers services through attorneys located throughout the United States, including through “of counsel” agreements with Centennial’s COR Legal Advisors, Lakewood’s The Law Offices of Richard M. Gee and Denver’s C Squared Consulting Group.
“Through Bold IP’s long and consistent sales and marketing efforts of legal services under the BOLD Family of Marks, clients and prospective clients have come to expect that use of a trademark or business name pairing the term ‘Bold’ together with a general or highly descriptive term for legal services is an indication that such services originate from Bold IP,” the lawsuit reads.
The complaint doesn’t cite any specific instances in which consumers were confused by the similar names.
According to the lawsuit, Bold IP principal attorney J.D. Houvener initially spoke with Kendall about the similar names in March 2018.
Later that month, the firms entered into an agreement, “whereby Bold IP would provide intellectual property legal services under contract with Bold Legal,” the lawsuit said. In late August, Bold IP terminated the agreement because “the parties’ relationship was not fruitful.”
In early September, Bold IP sent Bold Legal a letter demanding the firm “cease its infringing use of the Bold Legal Mark and Bold.Legal domain name,” the lawsuit said. Bold Legal declined to do so.
Kendall said the firm “does not believe that any clients or potential clients have confused one firm for the other, nor is such confusion likely, particularly given that Bold Legal’s clients are discerning consumers of legal services.”
Bold Legal also noted that Bold IP’s website said “Our Firms Sole Focus is Patents!”, and said Bold Legal doesn’t represent clients on patent applications.
The Washington Bold wants an unspecified amount of damages in addition to a ruling that Bold Legal must cease its boldness.
Bold IP is being represented by Steven Woodrow of Denver’s Woodrow & Peluso and Seattle attorney Michael Matesky. Contacted by BusinessDen, Matesky declined to answer specific questions about the lawsuit, instead issuing a statement summarizing it.