Virginia Asset Management’s Midlothian headquarters at 130 Wylderose Drive. (BizSense file photo)
The trademark dispute between two similarly named Virginia financial advisory firms has been resolved after nearly a year of back-and-forth in court.
Midlothian-based Virginia Asset Management and Virginia Asset Group of Virginia Beach recently filed a joint motion to dismiss a lawsuit that questioned whether the two firms’ names were confusingly similar and harming VAM’s business.
The resolution came late last month, after the two sides had negotiated through court-officiated settlement talks.
VAM filed the case in federal court in Richmond in August 2022, claiming trademark infringement and unfair competition. VAM had asked the court for an injunction to force VAG to stop using that name and for unspecified damages to be determined at trial.
The lawsuit described how the two firms had coexisted in Virginia, despite offering similar financial advisory services with similar names, by mainly sticking to their own respective territories in the Richmond area and Hampton Roads.
But VAM claimed a line was crossed beginning in 2019, when VAG acquired Sona Wealth Management, the financial advising arm of what’s now known as Primis Bank. That deal gave VAG its first foothold and physical presence in the Richmond market due to the bank’s presence here and financial advisory offices that operate out of Primis branches in the region.
A screenshot of Virginia Asset Group’s website. (Image courtesy of Virginia Asset Group)
After VAM waited until January of this year to formally serve VAG with the complaint, VAG responded by denying all the allegations and countersuing.
It argued that VAM’s claims were barred by statute of limitations and that VAG had been using its brand in the Richmond market since 2006, and that VAM was well aware of its presence.
That was more than a decade before VAM registered its name as a federal trademark in 2019, despite having been in business since 1986.
“VAM has been aware of VAG’s use of Virginia Asset Group for well over a decade. For example, VAG had an office in the same building as VAM in Norfolk, Virginia in 2006,” VAG said in its response in March. “Indeed, the companies’ offices were directly across the hall from one another. VAG’s principal (Darin Ely) spoke with VAM’s principal in Norfolk (Peter Henry) on multiple occasions.”
VAG also argued VAM’s service mark should be deemed invalid, in part due to the terms in its name being arguably generic.
“The court should order the cancelation of the Virginia Asset Management mark because the mark is, and has always been, generic,” VAG’s filing stated.
VAG asked for the court to declare it had not infringed on any trademark rights and to prevent VAM from further threatening any action against it.
After the case was scheduled for an October trial, the two sides ultimately agreed to hold a settlement conference to try to resolve the dispute. The conference was held July 12 and was overseen by Magistrate Judge Mark Colombell.
The two sides then asked the court to dismiss the case. Judge John Gibney Jr. signed off on the dismissal on July 26.
The terms of the resolution are not detailed in court filings.
Both firms appear to be using their same names as usual, and on its website Virginia Asset Group still lists the same four Richmond-area offices in Henrico, Mechanicsville, Ashland and Colonial Heights.
Both companies declined to comment on the case and the resolution, other than to say in a joint email on Monday “that matters were handled in a friendly, professional, and amicable manner.”
VAM was represented in the case by attorney Alexandra Gabriel of law firm Kaleo Legal.
VAG was represented by C. Quinn Adams of O’Hagan Meyer.
Virginia Asset Management’s Midlothian headquarters at 130 Wylderose Drive. (BizSense file photo)
The trademark dispute between two similarly named Virginia financial advisory firms has been resolved after nearly a year of back-and-forth in court.
Midlothian-based Virginia Asset Management and Virginia Asset Group of Virginia Beach recently filed a joint motion to dismiss a lawsuit that questioned whether the two firms’ names were confusingly similar and harming VAM’s business.
The resolution came late last month, after the two sides had negotiated through court-officiated settlement talks.
VAM filed the case in federal court in Richmond in August 2022, claiming trademark infringement and unfair competition. VAM had asked the court for an injunction to force VAG to stop using that name and for unspecified damages to be determined at trial.
The lawsuit described how the two firms had coexisted in Virginia, despite offering similar financial advisory services with similar names, by mainly sticking to their own respective territories in the Richmond area and Hampton Roads.
But VAM claimed a line was crossed beginning in 2019, when VAG acquired Sona Wealth Management, the financial advising arm of what’s now known as Primis Bank. That deal gave VAG its first foothold and physical presence in the Richmond market due to the bank’s presence here and financial advisory offices that operate out of Primis branches in the region.
A screenshot of Virginia Asset Group’s website. (Image courtesy of Virginia Asset Group)
After VAM waited until January of this year to formally serve VAG with the complaint, VAG responded by denying all the allegations and countersuing.
It argued that VAM’s claims were barred by statute of limitations and that VAG had been using its brand in the Richmond market since 2006, and that VAM was well aware of its presence.
That was more than a decade before VAM registered its name as a federal trademark in 2019, despite having been in business since 1986.
“VAM has been aware of VAG’s use of Virginia Asset Group for well over a decade. For example, VAG had an office in the same building as VAM in Norfolk, Virginia in 2006,” VAG said in its response in March. “Indeed, the companies’ offices were directly across the hall from one another. VAG’s principal (Darin Ely) spoke with VAM’s principal in Norfolk (Peter Henry) on multiple occasions.”
VAG also argued VAM’s service mark should be deemed invalid, in part due to the terms in its name being arguably generic.
“The court should order the cancelation of the Virginia Asset Management mark because the mark is, and has always been, generic,” VAG’s filing stated.
VAG asked for the court to declare it had not infringed on any trademark rights and to prevent VAM from further threatening any action against it.
After the case was scheduled for an October trial, the two sides ultimately agreed to hold a settlement conference to try to resolve the dispute. The conference was held July 12 and was overseen by Magistrate Judge Mark Colombell.
The two sides then asked the court to dismiss the case. Judge John Gibney Jr. signed off on the dismissal on July 26.
The terms of the resolution are not detailed in court filings.
Both firms appear to be using their same names as usual, and on its website Virginia Asset Group still lists the same four Richmond-area offices in Henrico, Mechanicsville, Ashland and Colonial Heights.
Both companies declined to comment on the case and the resolution, other than to say in a joint email on Monday “that matters were handled in a friendly, professional, and amicable manner.”
VAM was represented in the case by attorney Alexandra Gabriel of law firm Kaleo Legal.
VAG was represented by C. Quinn Adams of O’Hagan Meyer.