Wednesday, September 2, 2015

Penn sues 'inferior' NJ firm to protect Wharton's rep - Update

Will consumers confuse a life insurance settlement buyer with a business school?

Penn sues 'inferior' NJ firm to protect Wharton's rep - Update


ALSO 8/16: IP lawyer tells why Penn's claim looks "awkward" -- see UPDATE at bottom.

EARLIER: The University of Pennsylvania has filed a federal lawsuit asking the U.S. District Court in Philadelphia to stop five-year-old Wharton Advisors Corp., Mendham, N.J., from using the Wharton name "to promote or sell financial consulting services that are inferior to The University's services sold under its famous 'Wharton' registered mark," which is "widely recognized by the United States consuming public as a source of excellent business education and business consultation services," according to the suit.

Penn operates the Wharton School, which offers classes in accounting and other business subjects taught by professors who also sell consulting services to business clients. Wharton Advisors buys life insurance settlements, according to its Web site. (The site doesn't explain the name, though, as a reader points out, there is a town of Wharton, N.J., about 10 miles from Mendham.)

The "unauthorized use of Wharton, Wharton Advisors and Wharton Advisors Corp. in connection with financial consulting services is likely to cause confusion, or mistake, or to deceive," according to Penn's complaint. Penn also alleged Wharton Advisors is purposely trying to confuse people.

A woman I reached by phone at Wharton Advisors' headquarters, who said she was a Wharton Advisors employee but declined to give her name, told me the company knows nothing about the lawsuit, and hung up the phone. Wharton Advisors President Robert Gatti did not immediately respond to a request for comment via the LinkedIn social media service. According to his LinkedIn account, Gatti graduated from the Peter S. Tobin College of Business at St. John's University, which is in New York. It doesn't mention the Wharton School, which is in West Philadelphia.

Penn wants the court to issue an injunction banning Gatti's company from using the Wharton name, to declare that Wharton Advisors has illegally infringed on Penn's trademark, and to pay unspecified damages. Attorney James Meyer, whose firm, Schnader Harrison Segal & Lewis LLP, is representing Penn, referred questions to Penn staff lawyer Robert Firestone. In an email, Firestone declined to comment on the case. Firestone didn't reply when I asked him how often Penn files federal lawsuits to stop this sort of thing. Here's another (thanks, B.X. McCrone).

UPDATE: It may complicate Penn's case against the Wharton Advisors name that another non-Penn firm, Wharton Capital Corp., a New York investment bank, has used the Wharton moniker since at least the late 1990s, writes Steve Baird, intellectual property lawyer at Winthrop & Weinstine of Minneapolis, here. "The existence of such a close third party mark, Wharton Capital, of course, renders this allegation in the University of Pennsylvania’s dilution claim, a bit awkward, to say the least," according to Baird.

Baird also notes that Penn was on the receiving end of a trademark complaint -- from high-end handbag-maker Louis Vuitton -- not that long ago.

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PhillyDeals posts drafts, transcripts and updates of Joseph N. DiStefano's columns and stories about Philly-area business, which he's been writing since 1989.

DiStefano studied economics, history and a little engineering at Penn and taught writing at St. Joseph's. He has written thousands of columns and articles for the Inquirer, Bloomberg and other media, wrote the book Comcasted, and raised six children with his wife, who is a saint.

Reach Joseph N. at,, 215.854.5194 or 302.652.2004.

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