Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1043655
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`Filing date:
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`03/20/2020
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
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`Applicant
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`88238605
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`Steinlaw, PA
`
`Applied for Mark
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`STEINLAW
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`Correspondence
`Address
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`Submission
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`Attachments
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`JOHN FULTON JR
`MALLOY & MALLOY PL
`2800 SW 3RD AVENUE
`MIAMI, FL 33129
`UNITED STATES
`mhasty@malloylaw.com, jfulton@malloylaw.com, msantana@malloylaw.com,
`trademark@malloylaw.com, filing@malloylaw.com
`305-858-8000
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`Applicants Request for Remand and Amendment
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`2020 03 20 - Motion to Remand - 88238605.pdf(122172 bytes )
`2020 03 20 Exhibit A Signed Consent Agreement.pdf(1982681 bytes )
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`Oliver Alan Ruiz
`
`oruiz@malloylaw.com, msantana@malloylaw.com, trademark@malloylaw.com
`
`/Oliver Alan Ruiz/
`
`03/20/2020
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`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In re:
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`
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`Steinlaw, PA
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`Serial No.:
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`88/238,605
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`Mark:
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`
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`STEINLAW
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`
`
`LAW OFFICE 111
`Examiner, Caitlin Watts-FitzGerald
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`2800 S.W. Third Avenue
`Historic Coral Way
`Miami, Florida 33129
`
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, Virginia 22313-1451
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`
`
`
`APPLICANT’S MOTION TO REMAND APPLICATION TO EXAMINING ATTORNEY
`Steinlaw, PA (“Applicant”), hereby moves pursuant to TBMP §§
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`1207.02 and 1209.04, to remand the application to the Examining
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`Attorney for consideration of a Consent Agreement between the Applicant
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`and the owner of the registration cited in the Examining Attorney’s
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`2(d) refusal. See Exhibit A.
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`Applicant also requests that the Board, consistent with its
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`customary practice, suspend the appeal pending the Examining Attorney’s
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`review of the Consent Agreement.
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`Applicant respectfully submits that this development is material
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`and probative to the issue of registrability, and that such request is
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`timely as the Board has not yet issued a final decision on appeal. TBMP
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`§ 1207.02.
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`I.
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`BACKGROUND FACTS
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`Applicant filed U.S. Serial No. 88/238,605 for the mark “STEINLAW”
`(the “application”) for use in connection with attorney services. The
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`Examining Attorney has previously taken the position that the
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`

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`Applicant’s mark, when applied to the above-referenced services, is
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`likely to cause confusion with U.S. Registration No. 5,006,163 for the
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`mark “LAW & STEIN, LLP,” owned by Law & Stein, LLP, for use in
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`connection with attorney services; litigation services; providing
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`customized legal information, counseling, and advice, and litigation
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`services in the field of business, estate planning, tax, real estate,
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`trust administration, and probate.
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`After reconsideration of the Examining Attorney’s Final Office
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`Action was denied on January 9, 2020, this appeal was resumed by order
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`of the Board on January 28, 2020.
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`II. ARGUMENT
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`A remand is appropriate so that refusal of the application may be
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`reconsidered by the Examining Attorney in light of the execution of a
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`Consent Agreement between the Applicant and the owner of the cited
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`registrations. See Exhibit A. As noted in In re E.I. du Pont de Nemours
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`& Co.:
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`When those most familiar with use in the marketplace and
`most interested in precluding confusion enter agreements
`designed to avoid it, the scales of evidence are clearly
`tilted. It is at least difficult to maintain a subjective
`view that confusion will occur when those directly
`concerned say it won’t. A mere assumption that confusion is
`likely will rarely prevail against uncontroverted evidence
`from those on the firing line that it is not.
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`476 F.2d at 1363, 177 USPQ at 568 (C.C.P.A. 1973).
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`Here, the agreement between the parties recognizes that confusion
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`is unlikely, and the parties have further agreed to undertake certain
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`actions to avoid confusion, should any instances of confusion arise,
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`however unlikely.
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`The Court of Appeals for the Federal Circuit has recognized that
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`2
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`consent agreements should be given great weight, and that the Board
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`should not rely on its own views concerning likelihood of confusion,
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`rather than the judgment of the parties in question, without good
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`reason. See In re Four Seasons Hotels Ltd., 987 F.2d 1565, 26 USPQ2d
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`1071 (Fed. Cir. 1993)(“It is well settled that in the absence of
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`contrary evidence, a consent agreement itself may be evidence that
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`there is no likelihood of confusion.”).
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`WHEREFORE, Applicant respectfully requests that the Trademark
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`Trial and Appeal Board suspend the appeal and remand the application
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`to the Examining Attorney for further consideration of the present
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`refusal in light of the Consent Agreement.
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`Dated: March 20, 2020
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`
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` Respectfully submitted,
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`/Oliver Alan Ruiz/
`John Cyril Malloy, III
`Florida Bar No. 964,220
`jcmalloy@malloylaw.com
`Oliver Alan Ruiz
`Florida Bar No. 524,786
`oruiz@malloylaw.com
`MALLOY & MALLOY, P.L.
`2800 S.W. Third Avenue
`Historic Coral Way
`Miami, Florida 33129
`Telephone:(305) 858-8000
`Facsimile:(305) 858-0008
`
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`CERTIFICATE OF FILING
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`
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`I HEREBY CERTIFY that the foregoing Motion to Remand was filed
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`electronically via the ESTTA, at the United States Patent and
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`Trademark Office, Trademark Trial and Appeal Board’s ESTTA electronic
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`filing system, on March 20, 2020.
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`
`
`
`
`By: /Oliver Alan Ruiz/
` Oliver Alan Ruiz
`
`3
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`

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`W
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`This Consent Agreement (”Agreement”) is effective on the date of the last signature below by and
`between Steinlaw, PA, a Florida limited liability company having a place of business at 17971 Biscayne
`Boulevard, Suite 216, Aventura, Florida 33160 (”Steinlaw") and Law and Stein, LLP, a California corporation
`having an address at 2601 Main Street, Suite 1200, Irvine, California 92614 (”Law and Stein”).
`
`WHEREAS Steinlaw is a provider of attorney services throughout the State of Florida, with a primary
`focus on personal injury law;
`
`WHEREAS Steinlaw’s primary channels of trade are directed to its clients via its internet website at
`www.5teinlaw.com and physical offices located throughout the State of Florida;
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`WHEREAS, in or about 2013, Steinlaw selected and adopted the marks "STEINLAW” and ”STEINLAW”
`(Stylized) (collectively, the ”STEINLAW MARKS") for use in connection with attorney services, and has used
`the STEINLAW MARKS continuously on such services since that time;
`
`WHEREAS, on or about December 21, 2018 Steinlaw filed U.S. Trademark Application Serial Nos.
`88/238,605 and 88/238,629 for the marks ”STEINLAW" and "STEINLAW” (Stylized), respectively (the
`”STEINLAW APPLICATIONS"), in connection with attorney services in International Class 045 (the ”STEINLAW
`SERVICES”);
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`WHEREAS, a true and accurate representation of the STEINLAW” (Stylized) mark is presented below:
`
`smmmw
`
`WHEREAS, Law and Stein is a provider of legal services in Southern California, with a primary focus
`on estate and trust planning, trust administration, trust and estate litigation, tax planning, general business
`litigation, and insurance defense law;
`
`WHEREAS Law and Stein’s primary channels of trade are direct to its clients via its internet website
`at www.lawandsteinllp.com and its physical office located in Southern California;
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`

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`WHEREAS, in or about 2015, Law and Stein applied for and subsequently obtained U.S. Trademark
`Registration No. 5,006,163 for "LAW AND STEIN, LLP” (the ”LAW AND STEIN MARK”) in connection with
`attorney services in California; litigation services; providing customized legal information, counselling, and
`advice, and litigation services in the field of business, estate planning, tax, real estate, trust administration,
`and probate, in International Class 045 (the ”LAW AND STEIN SERVICES”); and
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`WHEREAS, the LAW AND STEIN MARK has been cited against the STEINLAW APPLICATIONS under §
`2(d) ofthe Lanham Act, upon a preliminary finding oflikelihood of confusion by the U.S. Patent and Trademark
`Office (”U.S. PTO”).
`
`NOW THEREFORE, in consideration of the promises and mutual covenants hereinafter recited and
`other good and valuable consideration, the receipt and sufficiency of which is hereby acknowledged, with the
`foregoing recitals expressly incorporated into this Agreement, Law and Stein consents to registration of the
`STEINLAW MARKS as follows:
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`1.
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`The parties believe that there is no likelihood of confusion arising from the respective use and
`registration of the STEINLAW MARKS in connection with the STEINLAW SERVICES as compared to the
`LAW AND STEIN MARK in connection with the LAW AND STEIN SERVICES, based on the differences
`between the marks themselves, with the STEINLAW MARKS, namely, STEINLAW and STEINLAW
`(Stylized), forming an overall commercial impression that is distinguishable from the LAW AND STEIN
`MARK, namely, LAW AND STEIN, LLP. In particular, the parties acknowledge that the LAW AND STEIN
`MARK forms an overall commercial impression ofa firm having two senior-level partners named Law
`and Stein, respectively, while the STEINLAW MARKS form an overall commercial impression of a
`single senior—level practitioner named Stein.
`
`Moreover, the differences in the parties’ trade channels also serve to reduce any potential likelihood
`ofconfusion, with the STEINLAW SERVICES being promoted and provided primarily to clients residing
`and/or injured in the State of Florida; while the LAW AND STEIN SERVICES are promoted and provided
`primarily to clients seeking trusts, estates and tax law, litigation, and business and corporate law
`attorney services in Southern California.
`
`Each party acknowledges that, in the three years of peaceful coexistence between the parties’
`respective marks, no instances of actual confusion between them have been brought to the attention
`ofeither party. In the event that either party has a reasonable beliefthat consumer confusion is likely
`to arise, the parties will cooperate with one another on a reasonable basis to eliminate or minimize
`such confusion.
`
`Law and Stein agrees Steinlaw can use the STEINLAW MARKS in connection with legal services in
`internet marketing and to provide legal services in Florida (the ”STEINLAW TERRITORY”), and
`includes, without limitation, providing legal services to clients residing outside of the STEINLAW
`TERRITORY on matters falling within the jurisdiction of the state and Federal courts in the STEINLAW
`TERRITORY, serving as local counsel for attorneys located outside the STEINLAW TERRITORY on
`matters falling within the jurisdiction of the state and Federal courts in the STEINLAW TERRITORY,
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`

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`and serving as counsel Pro Hac Vice for client’s residing within the STEINLAW TERRITORY on matters
`falling outside of the jurisdiction of the state and Federal courts of the STEINLAW TERRITORY.
`
`In light ofthe foregoing, Law and Stein consents to the use and registrations of the STEINLAW MARKS,
`including U.S. Trademark Applications Serial Nos. 88/238,605 and 88/238,629, in connection with the
`STEINLAW SERVICES. Law and Stein will take no action to oppose the STEINLAW APPLICATIONS,
`cancel the resulting registrations, or object to use of the STEINLAW MARKS in connection with the
`STEINLAW SERVICES.
`
`Similarly, Steinlaw consents that Law and Stein can use the LAW AND STEIN MARK for legal services
`in internet marketing and to provide legal services in California.
`STEINLAW consents to the
`registration of the LAW AND STEIN MARK (i.e., U.S. Trademark Registration No. 5,006,163) in
`connection with the LAW AND STEIN SERVICES. STEINLAW will take no action to oppose the LAW
`AND STEIN MARK, or object to use of the LAW AND STEIN MARK in connection with the LAW AND
`STElN SERVICES.
`
`It is anticipated that this Agreement will be sufficient to overcome the U.S. PTO’s §2(d) refusal in
`U.S. Trademark Applications Serial No. 88/238,605 and 88/238,629; however, in the unlikely event
`that this Agreement is insufficient for that purpose, this Agreement will be rendered null and void,
`and Steinlaw reserves the right to take further action.
`
`The parties consent and/or acknowledgment herein is restricted to the use or registration of their
`respective marks and shall not in any way be deemed an admission that another party, not subject
`to this Agreement, whose use of, application for, or registration of a mark similar to the parties’
`respective marks, shall not be subject to prosecution on the grounds that such use, application or
`registration is likely to cause confusion, cause mistake, or to deceive.
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`This Agreement shall remain in force indefinitely, unless either party abandons its respective markis),
`registrations, or applications or filed in the U. S. PTO, or ceases to do business.
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`Either party may assign its rights and obligations under this Agreement to any of its affiliated
`companies, successors, via merger, or by change of control or otherwise.
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`Any waiver by either of a breach of any term, condition or obligation of this Agreement shall not be
`considered a waiver ofany subsequent breach of the same or any other term, condition or obligation
`hereof.
`
`If any part of this Agreement is declared void or unenforceable by any judicial or administrative
`authority, this will not, in and of itself, nullify the remaining provisions of this Agreement unless such
`declaration adversely affects the original intent of the parties, in which event this Agreement will
`terminate on thirty (30) days written notice from one party to the other.
`
`This Agreement constitutes the final and complete expression of all the terms of the agreement
`between the parties with respect to the subject matter hereof. It supersedes all prior understandings,
`representations, negotiations, and agreements, whether written or oral, concerning the matters
`specified herein. Any representations, oral statements, promises, or warranties made by either of
`
`3
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`10.
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`11.
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`12.
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`

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`the parties that differ in any way from the terms of this Agreement shall not be binding unless made
`in writing and signed by a duly authorized representative of both parties. This Agreement shall only
`be amended by a written instrument duly executed by both of the parties hereto.
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`in the event of any dispute between the parties with regard to this Agreement, the parties agree to
`work together in good faith to resolve any such dispute prior to the initiation of legal proceedings,
`and any party intending to initiate legal action to enforce this Agreement shall provide written notice
`to the other party at least thirsty (30) days prior to taking such action.
`
`The parties anticipate that it is possible Law and Stein or Steinlaw will expand or add to the types of
`legal services they provide. They may also expand outside of the states in which they currently do
`business.
`Each party will undertake reasonable efforts to notify the other party of expansions
`outside of the states in which they do business. Any failure to notify shall not be a breach, but also
`at any time each party agrees it can contact the other to negotiate in good faith to amend this
`Agreement so as to allow the parties to coexist while allowing Law and Stein or Steinlaw to use their
`respective marks outside ofthe applicable territory or law practice.
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`All notices, requests, demands, approvals, consents, waivers or other communications hereunder
`shall be in writing and shall be delivered to:
`
`13.
`
`14.
`
`15.
`
`Brandon Stein
`
`STEINLAW, PA
`
`Zebulon Law or Matt Stein
`
`LAW AND STEIN, LLP
`
`17971 Biscayne Boulevard, Suite 216
`
`2601 Main Street, Suite 1200
`
`Aventura, Florida 33160
`
`irvine, California 92614
`
`With a copy to:
`
`John Fulton, Jr.
`
`MALLOY AND MALLOY, P.L.
`
`2800 SW Third Avenue
`
`Miami, Florida 33129
`
`With a copy to:
`
`Mark D. Klein
`
`KLEIN LAW CORPORATION
`
`15615 Alton Parkway
`
`irvine, California 92618
`
`or to such other address as either party may designate by notice hereunder, and shall be deemed
`given when received.
`
`16.
`
`The parties acknowledge and agree that: (i) they are entering into this Agreement knowingly,
`voluntarily, and with full understanding of its significance;
`(ii)
`they have not been coerced,
`threatened, or intimidated into signing this Agreement; (iii) they understand the terms of this
`Agreement; (iv) they have had a reasonable time to consider this Agreement; and (v) nothing herein
`shall constitute either of the parties as being an agent or representative of the other. The parties
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`

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`further agree and confirm that they cooperated, through their own legal counsel, in the drafting of
`this Agreement. if any provision of this Agreement is deemed ambiguous, it shall not be construed
`against either of the parties for having drafted it.
`
`IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be executed by their duly
`authorized officers and/or representatives.
`
`STEINLAW, PA
`
`
`
`Name:
`me; Mr;
`Date: 3//€/;€
`
`
`
`LAW AND ST iNL,
`L
`IL,
`
` By:
`
`Name: Q ZQ [0U /om [A (A;
`Title:
`fix / ‘lvkt/
`Date:M
`
`
`
`