Articles

LIPA, KeySpan sue plumber in trademark case

by Heather Fletcher

July 15, 2005, HICKSVILLE - On Valentine's Day 2002, Robert Steinhardt of Hicksville thought he made a clever decision by dubbing his new plumbing service Long Island Plumbing Authority.

But when the Long Island Power Authority took the contractor to court June 9, Steinhardt learned the electricity provider held its acronym nearer to its heart than he thought. And the only valentine he got was a lawsuit from KeySpan Corp. and LIPA. Both are suing Steinhardt and his business for trademark infringement in Nassau County Supreme Court.

Steinhardt's attorney, Panagiota Betty Tufariello of Intellectulaw of Selden, must file a response with the court by July 19. A hearing will likely be scheduled afterward.

The suit alleges Steinhardt violated federal and state laws by his use of Long Island Plumbing Authority and the Internet domain names keyspanplumber.com and longislandplumbingauthority.com.

Both entities are asking the court to stop Steinhardt and make him hand over the name and domains. The complaint calls for Steinhardt to pay their attorney fees and monetary damages to be determined by the court.

"Our primary reason for pursuing this is to minimize confusion in the marketplace - for obvious reasons," said LIPA spokesman Michael Lowndes, later noting that this is currently the utility's first and only such lawsuit. "This isn't a corner mom and pop store. This is Long Island's electric utility."

Lowndes said in today's environment of heightened security, the utility wants its customers to know that if someone knocking at the door says he's with LIPA, that person is an employee of the power provider. "We're not viewing this as some type of competition for our business."

Steinhardt said he never used the acronym when dealing with customers. He always spelled out his company's name and his intentions, he said. Besides that, he wasn't knocking on doors. Customers came to him via referral - from KeySpan.

"I was one of their top contractors," Steinhardt said. "I didn't keep a low profile."

KeySpan knocked on his door about five years ago, asking him to be a plumbing contractor, Steinhardt said. He signed on keyspanenergy.com under Robert Steinhardt Co. Inc., which is now only his home inspections business. Steinhardt said KeySpan was so happy to have plumbing contractors that the company helped him and other contractors pay for advertising. After he changed the name of the plumbing end of his business to Long Island Plumbing Authority, KeySpan added a second contractor profile for him and kept the link up until last month, he said.

On the "KeySpan, My Quotes" page of keyspanenergy.com, Steinhardt was still listed as a contractor under his given name as of Wednesday.

"Whatever we put in here," Steinhardt said, looking at keyspanenergy.com, "we had to get approved by the powers at KeySpan."

Tufariello said in this lawsuit, the court will test if the names are "confusingly similar" based on a set of factors. The criteria include the strength of the utilities' trademarks, the similarities between the names and services provided, the likelihood that LIPA will go into the plumbing business and whether Steinhardt used the name in good faith. The court will also consider how consumers decide on plumbing service providers, such as whether consumers research contractors. Those consumers are less likely to be confused, she said. Also, customers who are buying a somewhat-costly product or service, such as plumbing, are more likely to do research.

Paul J. Esatto Jr., a partner with intellectual property law firm Scully, Scott, Murphy and Presser of Garden City, said government entities have been suing more and more for trademark infringement during the past three years

"They want to have a presence in the public's eye," Esatto said. "I mean, they're out there trying to compete with contractors like other businesses. So trademarks are very important to them."

KeySpan declined to comment on the pending litigation, as did the attorney for the corporation and LIPA, Ronald J. Macklin.

Steinhardt said he believes he'll prevail because he doesn't think he's done anything illegal.