A prominent Chicago property tax law has served a similarly named rival firm with a federal trademark infringement claim.
O’Keefe Lyons & Hynes LLC, of Chicago, filed a complaint July 21 in Chicago federal court against O’Keefe Law Firm Ltd., of suburban La Grange, seeking an injunction and damages based on alleged infringement of state and federal trademark rights, as well as violation of state and federal unfair competition laws and unjust enrichment.
According to the complaint, James O’Keefe, a prominent figure in Chicago and Illinois politics, founded what would become the firm of O’Keefe Lyons & Hynes in 1937. In 1956, O’Keefe was Democratic nominee for attorney general, served as public administrator of Cook County from 1960-1968 and “was also a well-known political associate of former Mayors Richard Daley, Michael Bilandic and Jane Byrne.”
Other notable current and former partners include Kevin M. O’Keefe, who served on President Bill Clinton’s White House staff from 1993-1997, including as a special assistant; Thomas G. Lyons, head of the Cook County Democratic Party from 1990-2007 “and was the architect of the 1970 Illinois Constitution”; and Kevin B. Hynes, who has been assistant counsel to Michael Madigan, speaker of the Illinois House of Representatives, and also served in the U.S. Department of Justice as an assistant associate and special assistant to the Attorney General.
The firm focuses on property tax legal services and throughout those 80 years has presented itself as “The O’Keefe Firm.” It says the problems arose in April 30, 2012, when O’Keefe Law Firm filed for incorporation in Illinois — advertising on okeefelawfirm.com, a domain created April 23, 2009 — and offering the same property tax legal services as O’Keefe Lyons & Hynes.
OLH operates okeefe-law.com, and noted in its complaint both firms can be investigated and retained online. It says it was not aware of the La Grange group until recently when an OLH customer encountered OLF during a web search. OLH sent a cease-and-desist letter on April 24. OLF responded May 16 with questions “and an admission that OLF has been aware of OLH since as early as 2009.”
Although OLH replied to that letter, OLF has not returned any communications since its May 19 letter, including “numerous emails and telephone voice mails.” The complaint also said, “OLF’s only response has been the addition of the ‘TM’ designation next to its name” on okeefelawfirm.com.
OLH said “the term ‘O’Keefe’ is the most distinctive term in OLF’s name” and noted the full names of both agencies are visually and aurally similar. Also the same, it contends, are the connotations and commercial impressions of both names.
“Consumer confusion or misunderstanding … will injure and damage OLH and the goodwill and reputation symbolized by OLH’s Name,” OLH’s complaint said.
In addition to asking the court to declare OLF has violated its trademark, OLH requested a permanent injunction forcing OLF to stop using the O’Keefe name. It also seeks damages, including statutory damages, where applicable, legal fees and treble damages. OLH also seeks an accounting of OLF to determine all profits gained from the alleged infringements and for that money to be put in a constructive trust for the benefit of OLH.
Representing OLH in the matter is the firm of McAndrews, Held & Malloy Ltd., of Chicago.