Charleston firm sues like-named Pa. firm to prevent trademark suit

CHARLESTON - A Charleston law firm seeks a court order determining it is not infringing on the business of a similarly named firm in neighboring Pennsylvania.

The Pittsburgh-based Webb Law Firm, P.C. is named as a defendant in a civil action filed by the Webb Law Firm, P.L.L.C. in U.S. District Court. In the complaint filed Aug. 5, the Charleston Webb Law Firm, owned by Charles Lee “Rusty” Webb, maintains despite its allegations to the contrary, the Pittsburgh Webb Law Firm has lost little, if any, business to it.

According to the suit, the Pittsburgh Webb Law Firm, which specializes in intellectual property law, sent Webb a letter dated July 17 asking him to “cease-and-desist“ using “The Webb Law Firm“ in any of his marketing materials including the firm‘s website. Provided he transition from using “The Webb Law Firm“ to another name such as “The Law Offices of Rusty Webb” or “Rusty Webb and Associates,” and place disclaimers on his website and marketing materials, Cecilia R. Dickson, a senior associate with the Pittsburgh Webb Law Firm, said it would not resort to suing him for trademark infringement.

However, the Charleston Webb Law Firm says the Pittsburgh Webb Law Firm’s allegations of trademark infringement fall flat for a number of reasons. Among those include:

-A Google search of “Webb Law Firm” that returns more than 2 million hits with law firms using similar names in Seattle, South Jordan, Utah, Dallas and Cincinnati;

-The Charleston Webb Law Firm specializes in family and personal injury law, and its attorneys, who are only licensed in West Virginia, operate from either the main office in downtown Charleston or the satellite offices in Madison or Lewisburg; and

-None of the Pittsburgh Webb Law Firm lawyers are licensed to practice in West Virginia or have the surname Webb.

Also, the Charleston Webb Law Firm avers the July 17 cease-and-desist letter resulted from a single errant phone call made to the Pittsburgh Webb Law Firm from a prospective client from Beckley. Since then, a disclaimer has been placed on its website, rustywebb.com.

In addition to the fact it uses the Webb family crest in its marketing materials, the Charleston Webb Law Firm maintains it is “not a reproduction, copy, counterfeit, or colorable imitation” of the Pittsburgh Webb Law Firm. Along with judgment declaring it has not committed trademark infringement, the Charleston Webb Law Firm seeks an injunction prohibiting the Pittsburgh Webb Law Firm from engaging in “further threats and intimidation,“ and recovery of court costs and attorneys fees.

It is represented by Edward J. George, Kent J. George and Marsha Kauffman of the Charleston law firm of Robinson and McElwee.

U.S. District Court for the Southern District of West Virginia, case number 13-cv-21470