Cook County Record

Thursday, August 22, 2019

Area law firm lodges trademark suit against submarine group over newsletter name

By Andrew Thomason | Dec 8, 2014

A Lake County law firm is trying to scuttle the title of a submarine museum’s newsletter, claiming it violates trademark laws and causes too much confusion because it is the same name the firm has uses to promote its own newsletters.

David M. Adler Esq & Assoc. PC, commonly known as Adler Law Group, filed a federal lawsuit late last month against Submarine Force Library and Museum Association Inc., alleging trademark infringement and dilution, unfair competition and deceptive trade practices.

Located in Connecticut, the defendant is the only submarine museum operated by the U.S. Navy, making it a destination for submarine enthusiasts. The museum’s premier attraction is the USS Nautilus, the Navy’s first nuclear-powered submarine.

The museum association publishes a newsletter which it called PING, likely a reference to the sound SONAR makes when employed underwater by submarines to navigate.

The plaintiff law firm, based in the Village of Riverwoods, also publishes a newsletter called PING, which it uses to promote itself and its work in areas such as information technology and eCommerce; corporation and business law; intellectual property; and entertainment and media law.

Founded by attorney David M. Alder, Adler Law Group asserts "PING" is a federally-registered trademark and that the trademark belongs to the firm. Adler filed the trademark infringement lawsuit on behalf of his firm on Nov. 21.

According to its complaint, the firm began using the "PING" trademark to identify its newsletters in about 2007 and has been advertising and promoting it as such through social media and via internet search engines ever since.

Alder Law Group asserts it registered the mark with the U.S. Patent and Trademark Office in 2008, and as such, the title of Submarine Force Library and Museum Association’s newsletter’s violates its trademark.

“Defendant’s use of PING is in direct competition with Plaintiff, for identical services, e.g. newsletters, distributed through the same channels of trade and, therefore, is likely to confuse consumers," the suit states. "The fact that the two marks are identical and used in connection with identical services will lead to consumer confusion, mistake or deception."

In fact, the Adler firm contends, it has a seen a drop in the number of subscribers to its newsletter because the Submarine Force Library and Museum Association’s newsletter is called PING.

The firm claims the confusion has led some consumers to subscribe to defendant's newslette "in the mistaken belief that they are subscribing to Plaintiff’s newsletter."

Saying that the museum association’s use of PING as the title of its newsletter violates federal trademark laws, Adler Law Group alleges it sent the submarine group a cease and desist regarding the use of the “PING” mark, but got no reply.

The association’s website, however, has removed its newsletter logo and other web pages that used PING as the newsletter title, according to the firm's 12-page, four-count complaint.

Adler Law Group is asking the court to force Submarine Force Library and Museum Association to stop using the “PING” mark in connection with marketing, promotion, advertising and/or sale of newsletters.

It also wants an award of more than $100,000 in damages against the defendant, as well awards of attorney's fees, court costs and treble damages as provided by the Lanham Act's provision on willful and wanton violations.

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