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Florida Law Firm Closer to Disqualification in Trademark Fight

April 22, 2022, 5:59 PM

A law firm based in Florida shouldn’t be able to represent an online educational services agency in its trademark suit accusing a private company of using confusingly similar marks, a magistrate judge has recommended.

Independent public agency Florida Virtual School sued foreign for-profit company K12 Inc. in 2020, saying K12 used its marks to promote its materials and breached a settlement agreement stemming from a 2011 lawsuit with similar allegations.

K12 moved to dismiss GrayRobinson PA as plaintiff’s counsel, claiming that one of its attorneys previously represented K12 in the earlier suit. Stephanie Carman was privy to privileged information from when she worked for Hogan Lovells LLP, prior to joining GrayRobinson, the defendant alleged.

U.S. Magistrate Judge Embry J. Kidd of the U.S. District Court for the Middle District of Florida recommended approving that motion April 20, rejecting the argument that the matters aren’t substantially related.

The court noted that “perhaps the most revealing of the substantial relatedness of the matters” is that the current complaint relates the instant action to the settlement agreement and prior litigation.

“Plaintiff uses several paragraphs of the instant complaint to detail the 2011 Litigation and resulting settlement agreement,” the opinion says. The judge further noted that one count of the complaint is for breach of the settlement agreement.

Florida Virtual School is also represented by Luther Law PLLC. K12 is represented by Sheppard, Mullin, Richter & Hampton LLP and Carlton Fields PA.

The case is Fla. Virtual Sch. v. K12 Inc., M.D. Fla., No. 6:20-cv-2354, 4/20/22.

To contact the reporter on this story: David McAfee in Los Angeles at dmcAfee@bloomberglaw.com

To contact the editors responsible for this story: Rob Tricchinelli at rtricchinelli@bloomberglaw.com; Carmen Castro-Pagán at ccastro-pagan@bloomberglaw.com

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