Proceeding
`Party
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA135557
`ESTTA Tracking number:
`04/16/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91176154
`Defendant
`First 2 Sell Realty, Inc.
`First 2 Sell Realty, Inc.
`12568 North Kendall Drive
`Miami, FL 33186
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Ury Fischer and Janet Moreira
`Lott & Friedland, P.A.
`P.O. Drawer 141098
`Coral Gables, FL 33114-1098
`UNITED STATES
`Motion to Suspend for Civil Action
`Ury Fischer
`ufischer@lfiplaw.com
`/Ury Fischer/
`04/16/2007
`MOT - Motion to Suspend - 041607 - As Filed.pdf ( 48 pages )(1784869 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`ASSIST—2—SELL, INC.,
`
`Opposer,
`
`Serial No.:
`
`76/647,793
`
`V.
`
`Mark:
`
`F2S FIRST 2 SELL
`
`FIRST 2 SELL REALTY, INC.,
`
`Applicant.
`
`
`
`REALTY and Design
`
`Opposition No. : 91176154
`
`APPLICANT’S MOTION TO SUSPEND PROCEEDINGS
`
`Pursuant to TBMP §§ 510.02(a) and 510.03(a), Applicant, First 2 Sell, Inc. (“First 2
`
`Sell”) hereby requests that the Board suspend this proceeding pending the outcome of the action
`
`titled First 2 Sell Realty, Inc. V. Assist—2—Sell, Inc., Civil Action No. 06-20475, pending in the
`
`United States District Court for the Southern District of Florida (“Federal Action”).
`
`In support
`
`of its Motion, First 2 Sell states as follow:
`
`1.
`
`On February 24, 2006, First 2 Sell filed a Verified Complaint for Declaratory
`
`Judgment with the Southern District of Florida. A true and accurate copy of the Verified
`
`Complaint is attached as Exhibit A.
`
`2.
`
`By initiating the Federal Action, First 2 Sell seeks the Court’s declaration that its
`
`mark, F2S FIRST 2 SELL REALTY and Design, subject of this Opposition, does not infringe,
`
`unfairly compete, or dilute Assist-2-Sell’s ASSIST 2 SELL Mark, subject of U.S. Registration
`
`No. 1,744,999 and ASSIST 2 SELL and Design, subject of U.S. Registration no. 1,743,808
`
`(collectively “ASSIST—2—SELL Marks”).
`
`LOTT & FRIEDLAND, P.A. - 355 ALHAMBRA CIRCLE - SUITE 1100 - CoRAL GABLES, FLORIDA 33134
`
`(305) 448-7089 TELEPHONE - (305) 446-6191 TELECOPIER
`
`1
`
`

`
`Serial No.: 76/647,793
`Mark: F2S FIRST 2 SELL REALTY and Design
`Opposition No. : 91176154
`
`3.
`
`On April 28, 2006, Opposer Assist-2-Sell, Inc. (“Assist-2-Sell”) filed its Answer,
`
`Affirrnative Defenses, and Counterclaim in the Federal Action asserting counterclaims of federal
`
`trademark infringement, unfair competition, dilution, and false designation of origin and
`
`common law claims of unfair competition and infringement. A true and accurate copy of
`
`Assist-2-Sell’s Answer, Affirmative Defenses and Counterclaim is attached as Exhibit B.
`
`4.
`
`According to TBMP 510.02(a), the Board may suspend a proceeding “whenever it
`
`comes to the attention of the Board that a party or parties to a case pending before it are involved
`
`in a civil action which may have a bearing on the Board case.”
`
`5.
`
`6.
`
`The parties to this proceeding are the only parties to the Federal Action.
`
`The issues in the Federal Action are dispositive of the registrability questions
`
`raised in this proceeding. The Federal Action will determine whether or not First 2 Sell’s mark
`
`F2S FIRST 2 SELL REALTY and Design infringes or is likely to cause confusion with Assist-
`
`2-Sell’s ASSIST—2—SELL Marks.
`
`If the Court determines that First 2 Sell’s F2S FIRST 2
`
`SELL REALTY and Design is likely to cause confusion with Assist-2-Sell’s ASSIST—2—SELL
`
`Marks, First 2 Sell will be enjoined from any further use of its mark. This presumably would
`
`preclude First 2 Sell from further prosecuting the application at issue in this proceeding. Clearly,
`
`a suspension of this proceeding will result in the avoidance of unnecessary waste of the Boards’
`
`and parties’ time and resources and will promote judicial economy.
`
`7.
`
`Discovery in the Federal Action is complete and the Federal Action is scheduled
`
`to proceed to trial during the two-week period commencing Monday, May 14, 2007.
`
`8.
`
`The parties would not be prejudiced by the suspension of this proceeding because
`
`the Federal Action is currently scheduled to proceed to trial, and thus the parties will obtain final
`
`LOTT & FRIEDLAND, P.A. - 355 ALHAMBRA CIRCLE - SUITE 1100 - CORAL GABLES, FLORIDA 33134
`
`(305) 448-7089 TELEPHONE - (305) 446-6191 TELECOPIER
`
`2
`
`

`
`Serial No.: 76/647,793
`Mark: F2S FIRST 2 SELL REALTY and Design
`Opposition No. : 91176154
`
`resolution of the matter, within the next thirty (30) days. A disposition of the Federal Action
`
`will render the issues raised in this proceeding moot.
`
`9.
`
`On the other hand, if the Board allows this proceeding to move forward at the
`
`same time that the parties’ will be preparing for trial in the Federal Action would result in
`
`redundant and duplicative litigation.
`
`10.
`
`Counsel for First 2 Sell contacted Counsel for Assist-2-Sell prior to the filing of
`
`this Motion. Counsel for Assist-2-Sell has not consented to the relief sought by this Motion.
`
`11.
`
`First 2 Sell provides good cause for the Board to suspend the instant proceeding
`
`pending the outcome of the Federal Action.
`
`12.
`
`The Board is empowered under TBMP § 510.02(a) to suspend this proceeding
`
`pending the outcome of the Federal Action which would be determinative and dispositive of the
`
`issues raised by this proceeding.
`
`Accordingly and for the foregoing reasons, First 2 Sell
`
`respectfully requests that the requested suspension be entered in this case.
`
`Date: April 16, 2007
`
`LOTT & FRIEDLAND, P.A.
`
`By:
`
`/Ugv_ Fischer/
`Ury Fischer
`Janet C. Moreira
`
`P.O. Box 141098
`
`Coral Gables, Florida 33114-1098
`Telephone: (305) 448-7089
`Facsimile: (305) 446-6191
`
`Attorneys for Applicant, First 2 Sell, Inc.
`
`LOTT & FRIEDLAND, P.A. - 355 ALHAMBRA CIRCLE - SUITE 1100 - CORAL GABLES, FLORIDA 33134
`
`(305) 448-7089 TELEPHONE - (305) 446-6191 TELECOPIER
`
`3
`
`

`
`Serial No.: 76/647,793
`Mark: F2S FIRST 2 SELL REALTY and Design
`Opposition No. : 91176154
`
`CERTIFICATE OF SERVICE
`
`I HEREBY CERTIFY that the foregoing APPLICANT’S MOTION TO SUSPEND
`
`PROCEEDINGS is being served upon Opposer by delivering a true and correct copy of same to
`
`counsel for Opposer as follows:
`
`Scott A. Gronek, Esq.
`Assist-2-Sell, Inc.
`1610 Meadow Wood Lane
`
`Reno, NV 89502
`
`Via United States First Class mail, in a postage-paid envelope, on April 16, 2007.
`
`/UgV_ Fischer/
`Ury Fischer
`
`LOTT & FRIEDLAND, P.A. - 355 ALHAMBRA CIRCLE - SUITE 1100 - CORAL GABLES, FLORIDA 33134
`
`(305) 448-7089 TELEPHONE - (305) 446-6191 TELECOPIER
`
`4
`
`

`
`EXHIBITA
`
`

`
`Case 1 :66-ev—20475~JLl< Document 1
`
`Entered on ELSE) Docket O2/28/20%
`
`Page 1 0130
`
`I
`IN THE UNITED STATES DISTRICT C(fllb "
`FOR THE SOUTHERN DISTRICT OF FLORIDA
`
`Case No.2
`
`‘U, '55 "jg-.l‘i't
`
`FIRST 2 SELL REALTY, INC., a
`
`Florida corporation,
`
`Plaintiff,
`
`V.
`
`ASSIST-2—SELL, INC.. 21 Nevada
`
`corporation,
`
`Defendant.
`
`Iyh3G1S’l‘iL TE JUDGE‘
`
`/
`
`J
`
`VERIFIED COMPLAINT FOR DECLARATORY JUDGMENT
`
`(hereinafter “F2S”),
`INC.,
`Plaintiff. FIRST 2 SELL REALTY,
`ASSIST-2-SELL, INC (hereinafter “ASSIST”) alleges the following:
`
`sues Det‘endarits
`I
`
`NATURE OF THE ACTION
`
`1.
`
`This is an action seeking a declaratory judgment under 28 U.S.C. §§ 2201 and
`
`2202 that F2S’ use ofthe trademarks “FIRST 2 SELL” or “F2S FIRST 2 SELL REALTY” and
`
`logo, does not constitute trademark infringement under 15 U.S.C. § 1114 nor false designation of
`
`origin or dilution under 15 U.S.C § 1125 of ASSlST’s purported trademarks “ASSIST 2 SELL“
`
`or “AZS”.
`
`JURISDICTION AND VENUE
`
`2.
`
`This Court has original jurisdiction over the subject matter ofthis action. Original
`
`jurisdiction for any civil action arising under 15 U.S.C. § 1114 or 1125 is conferred on this Court
`
`pursuant to 15 U.S.C. §l 121(a) and 28 U.S.C.§ 1338(a)
`
`62
`
`

`
`Case 1:06-c:v—20475~JLl< Document 1
`
`Entered on FLSD Docket O2/28/EQGES
`
`Page 2 of 30
`
`3.
`
`This Court has personal jurisdiction over ASSIST pursuant to the Florida Long
`
`Ann Statute, § 48.193 subsections (l)(a) and/or (2). Upon information and belief, ASSIST is
`
`doing business, including providing real estate brokerage and consulting services, in the State of
`
`Florida. and specifically in thisjudicial district.
`
`4.
`
`Venue is proper in this judicial district pursuant
`
`to 28 U.S.C. §l39l(b) and
`
`§l39l(c), because a substantial part of the events giving rise to the claims alleged herein
`
`occurred in this judicial district and because ASSIST is deemed, for purposes of venue, to be a
`
`resident ofthisjudicial district.
`
`THE PARTIES
`
`5.
`
`F2S is a Florida corporation with its principal place of business located at 10855
`
`S.W 72"“ Street, Miami, Florida 33173. F2S provides real estate brokerage services involving
`
`residential and commercial properties under the trademarks “FIRST 2 SELL” and “F2S FIRST 2
`
`SELL REALTY“ and logo.
`
`6.
`
`Upon information and belief, ASSIST is a Nevada corporation with its principal
`
`place of business located at 535 East Plumb Lane, Reno, Nevada, 89502. Upon infomtation and
`
`belief, ASSIST is engaged in the business of franchising and providing technical assistance in
`
`the establishment of residential real estate sales offices.
`
`7.
`
`Upon information and belief, ASSIST is the owner of United States Trademark
`
`Registrations Nos. 1,744,999 and 1,743,808. Printouts of registration records for said trademark
`
`registrations from the United States Patent and Trademark Office’s online database are attached
`
`as Exhibit
`
`-2-
`
`l4l098 ~ Coral Gables, Florida 33114-1098
`LOTT & FRIEDLAND, P.A. - P.O. Drawer
`(305) 448-7089 - (305) 446-()l9l Telecopier
`
`

`
`Case 1:66-c:v—20475~JLl< Document 1
`
`Entered on ELSE) Docket O2/28/26% Page 3 of 30
`
`FACTUAL ALLEGATIONS
`
`8.
`
`F2S was established on December. 9 1999 when the company was incorporated
`
`by its owner Jose A. Martinez (hereinafter “Martinez.”) A printout of F2S’s record from the
`
`Florida Department of State’s “Corporations Online” database is attached as Exhibit
`
`9.
`
`F2S is a commercial and residential real estate brokerage firm providing full
`
`service real estate brokerage services throughout South Florida.
`
`10.
`
`F2S employs more than 300 licensed real estate agents at
`
`its 2 South Florida
`
`locations.
`
`11.
`
`F2S provides a broad spectrum of services to real estate buyers and sellers
`
`including commission-based brokerage services and MLS listings.
`
`12.
`
`F2S does not offer brokerage services on a “flat fee” commission basis. All
`
`commissions collected by F2S and/or its employed agents are based on a percentage ofthe sale
`
`price ofthe real estate property involved in the transaction.
`
`13.
`
`F2S has, since its inception, utilized the words “FIRST 2 SELL" as part of its
`
`trademark and has incorporated the words “FIRST 2 SELL" (hereinafter the “F2S Word Mark“)
`
`into its office signage, brochures, advertisements,
`
`letterhead, business cards, home signs.
`
`websites and all other advertising and promotional materials.
`
`14.
`
`F2S has similarly utilized the letters “F2S", along with a unique and distinctive
`
`logo (hereinafter the “F2S Logo Mark”),
`
`in connection with its real estate brokerage services
`
`since June 1, 2005. A copy ofthe F2S Logo Mark is attached as Exhibit
`
`-1-
`
`LOTT & FRIEDLAND, P.A. - P.O. Drawer 141098 - Coral Gables. Florida 33114-1098
`(305) 448-7089 ° (305) 446—6l9l Tclecopier
`
`

`
`Case 1:66-ev—20475~JLK Document 1
`
`Entered on FLSD Docket O2/28/20% Page 4 of 30
`
`15.
`
`F2S’ use of the F2S Word Mark and F2S Logo Mark has been extensive and
`
`widespread. The marks have appeared in publications that are widely disseminated throughout
`
`South Florida and beyond.
`
`16.
`
`F2S has expended significant efforts and resources in the marketing and
`
`promotion of its services for more than 7 years.
`
`17.
`
`By virtue of F2S extensive advertising and promotion of its services, the F25
`
`Word Mark and F2S Logo Mark have become well known in the industry and F 2S has developed
`
`a reputation for excellence in the field of real estate brokerage not only with consumers but also
`
`with real estate professionals.
`
`18.
`
`Upon infomiation and belief, ASSIST is not a real estate broker but rather a
`
`franchisor and consultant in the real estate brokerage services field.
`
`19.
`
`Upon infomiation and belief, ASSIST receives a fee from franchisees and in
`
`exchange provides training in its marketing programs. ASSIST also provides franchisees with
`
`consulting services in the establishment of real estate brokerage agencies.
`
`20.
`
`Upon information and belief, the real estate brokerage agencies established by
`
`ASSlST’s franchisees are primarily oriented to the low cost “flat fee” commissions market.
`
`21.
`
`Upon information and belief, the great majority of commissions collected by
`
`ASSlST’s franchisees are independent of the price of the real estate properties they sell and are
`
`generally much lower than the commissions charged by traditional full service real estate brokers
`
`such as F28.
`
`22.
`
`Upon infonnation and belief, the great majority of real estate agencies established
`
`by ASSIST’s franchisees have very few licensed real estate agents on staff.
`
`-4-
`
`l4l098 ° Coral Gables. Florida 33114-1098
`LOTT & FRIEDLAND, P.A. - P.O. Drawer
`(305) 448-708‘) - (305) 446-6|9l Telecopicr
`
`

`
`Case 1:06-c:v—20475~JLl< Document 1
`
`Entered on ELSE) Docket O2/28/20% Page 5 of 30
`
`23.
`
`On or about July 14, 2005, F2S received a letter from Scott A. Gronek. General
`
`Counsel for ASSIST in which ASSIST alleged that F2S’s use ofthe words “FIRST 2 SELL" in
`
`connection with real estate services was likely to cause confusion among consumers “as to the
`
`source, affiliation or sponsorship“ of F2S or Martinez.
`
`In this letter, ASSIST informed F2S of its
`
`ownership of federal trademark registrations for the term “ASSIST 2 SELL" and demanded that
`
`F2S "immediately cease and desist from further use of [the FIRST 2 SELL] term as part of its
`
`trade name. A copy of ASSlST’s July 14, 2005 letter is attached as Exhibit
`
`24.
`
`On or about September 2, 2005, F2S received a second letter from ASSIST in
`
`which ASSIST again infonned F2S of its federal trademark registrations, asserted its beliefthat
`
`the use of the mark “FIRST 2 SELL“ by F2S was likely to cause confusion among consumers
`
`and demanded that F2S cease and desist from continuing to use the “FIRST 2 SELL” trademark.
`
`A copy of ASSIST’s September 2, 2005 letter is attached as Exhibit
`
`25.
`
`In the September 2, 2005 letter, ASSIST further stated that F2S’s resources
`
`“would be far better spent on transitioning to a new mark than on litigation defense."
`
`26.
`
`On or about February 7, 2006, F2S received a third letter from ASSIST in which
`
`ASSITS alleges that F2S’s use of the F2S Word Mark and the F2S Logo Mark in connection
`
`with real estate services or franchising “is likely to cause confusion as to its source, affiliation or
`
`sponsorship and constitutes actionable infringement and dilution" of ASSIST’s
`
`federally
`
`registered and common law trademarks. A copy ofASSIST’s February 7, 2006 letter is attached
`
`as Exhibit
`
`-5-
`
`l4l098 - Coral Gables, Florida 33l I4-I098
`LOTT & FRIEDLAND, P.A. - P.O. Drawer
`(305) 448-7089 - (305) 446-()l9l Telecopier
`
`

`
`Case 1:06-c:v—20475~JLt< Document 1
`
`Entered on FLSD Docket O2/28/20% Page 6 of 30
`
`27.
`
`In the February 7, 2006 letter, ASSIST again demanded that F2S cease and desist
`
`from any further use of the F2S Word Mark and the F2S Logo Mark and threatened that failure
`
`to comply with this demand will result in the pursuit of“appropriate remedies.“
`
`28.
`
`ASSISTS’
`
`letters alleging trademark infringement and dilution by F2S have
`
`created for F2S a reasonable apprehension that ASSIST will file a lawsuit against F2S alleging
`
`trademark infringement and dilution.
`
`29.
`
`F2S firmly denies that
`
`its use of the F2S Word Mark and F2S Logo Mark
`
`infringes or dilutes any of ASSlST’s federally registered or common law trademarks.
`
`ACTION FOR DECLARATORY JUDGMENT
`
`NON-INFRINGEMENT OF REGISTERED TRADEMARK
`
`COUNT I
`
`30.
`
`Plaintiff incorporates paragraphs 1
`
`through 30 inclusive as it set forth verbatim
`
`herein.
`
`31.
`
`This is an action for a declaratory judgment and further relief against Defendants
`
`pursuant to 28 U.S.C. §§ 2201 and 2202.
`
`32.
`
`ASSIST has alleged, and F2S denies, that F2S’ use ofthe F2S Word Mark or F2S
`
`Logo Mark in connection with real estate services infringes its federally registered trademarks.
`
`33.
`
`ASSlST’s allegations of trademark infringement create a reasonable apprehension
`
`by F2S that ASSIST will file a lawsuit against F2S asserting claims for trademark infringement
`
`under 15 U.S.C. § 1114.
`
`-6-
`
`LOTT & FRIEDLAND, P.A. ° P.O. Drawer 141098 ' Coral Gables, Florida 331 14-1098
`(305) 448-708‘) - (305) 446-6191 Tclccopier
`
`

`
`Case 1:06-c:v—20475~.lLl< Document 1
`
`Entered on FLSD Docket O2/28/EQGES
`
`Page ?’ of 30
`
`34.
`
`ASSlST’s July 14, 2005, September 2, 2005 and February. 7 2006 letters create
`
`an actual controversy regarding the right of F2S to continue to use the F2S Word Mark or F2S
`
`Logo Mark.
`
`35.
`
`ASSlST’s allegations of trademark infringement will adversely affect F2S
`
`because, until the Court makes a determination of F2S’ rights, F2S will be in doubt as to its right
`
`to continue to use the F2S Word Mark or F2S Logo Mark.
`
`ACTION FOR DECLARATORY JUDGMENT
`
`NON-INFRINGEMENT OF COMMON LAW TRADEMARK
`
`COUNT [1
`
`36.
`
`Plaintiff incorporates paragraphs 1
`
`through 30 inclusive as it set forth verbatim
`
`herein.
`
`37.
`
`This is an action for a declaratory judgment and further relief against Defendants
`
`pursuant to 28 U.S.C. §§ 2201 and 2202.
`
`38.
`
`ASSIST has alleged, and F2S denies, that F2S’ use ofthe F2S Word Mark or F2S
`
`Logo Mark in connection with real estate services infringes its common law trademarks.
`
`39.
`
`ASSIST’s allegations of common law trademark infringement create a reasonable
`
`apprehension by F2S that ASSIST will file a lawsuit against F2S asserting claims for common
`
`law trademark infringement under 15 U.S.C. § 1l25(a).
`
`40.
`
`ASSIST’s July 14, 2005, September 2, 2005 and February, 7 2006 letters create
`
`an actual controversy regarding the right of F2S to continue to use the F2S Word Mark or F2S
`
`Logo Mark.
`
`-7-
`
`l4l098 - Coral Gables, Florida 33114-1098
`LOTT & FRIEDLAND, P.A. - P.O. Drawer
`(305)448-7089 ° (305) 44()~6l9l Telecopier
`
`

`
`Case 1:06-cv—20475~JLl< Document 1
`
`Entered on FLSD Docket O2/28/26% Page 8 cf 30
`
`41.
`
`ASSlST‘s allegations of common law trademark infringement will adversely
`
`affect F2S because, until the Court makes a determination of F2S’ rights, F2S will be in doubt as
`
`to its right to continue to use the F2S Word Mark or F2S Logo Mark.
`
`COUNT Ill
`
`ACTION FOR DECLARATORY JUDGMENT
`
`NON-DILUTION
`
`42.
`
`Plaintiff incorporates paragraphs 1
`
`through 30 inclusive as it set forth verbatim
`
`herein.
`
`43.
`
`This is an action for a declaratory judgment and further relief against Defendants
`
`pursuant to 28 U.S.C. §§ 2201 and 2202.
`
`44.
`
`ASSIST has alleged, and F2S denies, that F2S’ use ofthe F2S Word Mark or F2S
`
`Logo Mark in connection with real estate services dilutes its trademarks.
`
`45.
`
`ASSlST’s allegations of trademark dilution create a reasonable apprehension by
`
`F2S that ASSIST will file a lawsuit against F2S asserting claims for trademark dilution under 15
`
`U.S.C.§ ll25(c).
`
`46.
`
`ASSlST’s July 14, 2005, September 2, 2005 and February, 7 2006 letters create
`
`an actual controversy regarding the right of F2S to continue to use the F2S Word Mark or F2S
`
`Logo Mark.
`
`47.
`
`ASSlST’s allegations of trademark dilution will adversely affect F2S because.
`
`until
`
`the Court makes a detennination of F2S’ rights, F2S will be in doubt as to its right to
`
`continue to use the F2S Word Mark or F2S Logo Mark.
`
`-3-
`
`l4l098 - Coral Gables, Florida 33] l4-l()98
`LOTT & FRIEDLAND, P.A. - P.O. Drawer
`(305) 448-7089 - (305)446-6191 Telecopicr
`
`

`
`Case 1:66-c:v—20475~JL1< Document 1
`
`Entered on FLSD Docket O2/28/EQCBES
`
`Page 9 01°30
`
`PRAYER FOR RELIEF
`
`WHEREFORE. Plaintiff, FIRST 2 SELL REALTY,
`
`INC., prays for entry of a
`
`declaratoryjudgment against Defendant, ASSIST-2-SELL, INC, as follows:
`
`1. That the Court enterjudgment declaring that FZS’ use ofthe F2S Word Mark and
`
`F2S Logo Mark do not constitute trademark infringement under 15 U.S.C. § 1 1 14.
`
`2. That the Court enterjudgment declaring that F2S’ use ofthe F2S Word Mark and
`
`F28 Logo Mark do not constitute common law trademark infringement under 15 U.S.C. §
`
`1 l25(a).
`
`3. That the Court enterjudgment declaring that F2S’ use ofthe F2S Word Mark and
`
`F2S Logo Mark do not constitute trademark dilution under 15 U.S.C. § 1 125(0).
`
`4. That ASSIST be ordered to pay to F2S an award covering F28’ attorneys’ fees.
`
`costs, and other expenses incurred as a result ofthis controversy.
`
`5. That this Court grant such further and other relief as this Court deems just and
`
`proper.
`
`DEMAND FOR JURY TRIAL
`
`F2S hereby demands a trial byjury of all issues so triable.
`
`//
`
`//
`
`//
`
`//
`
`//
`
`//
`
`-9-
`
`LOTT & FRIEDLAND, P.A. - P.O. Drawer 141098 - Coral Gables, Florida 33114-1098
`(3115) 448~708‘) - 1305) 446-6191 Tclccopier
`
`

`
`Case 1:t3€§—cv—20475~JLl<
`
`Doeumt-ant 1
`
`Entered on FLSD Docket €32/'28/2606
`
`Page 10 of 30
`
`VERIFICATION
`
`SS:
`
`) )
`
`)
`
`8'1‘.-v\'l‘l-I ()l" l"l.()RlI)A
`
`(‘OI INTY ()l“ Ml/\Ml—l)Al)l{
`
`BL-‘l“ORl": ME.
`
`the undersigned uuthorit}. personally appeared Jose A. Martinez. as
`
`President of FIRST 2 SELI. RE/\l.'l‘Y. lN('.. who being duly sworn deposes and .s‘u_\'s that he is
`
`the President of FIRST 2 SFl.l. Rl-LALTY. lN('.. Inc. and further deposes and says:
`
`I have read the foregoing Complaint. and investigzited the facts alleged therein
`
`and to the best of my knowledge. information and belief. the allegations contained
`
`therein are true and correct.
`
`H lR'l‘l IER AFFI/\N'l' SAYFTH N/\l l(jllT.
`
`
`
`SWORN '10 AND SUBSCRIBED before me this 25 dz-1_\'of 53/2
`
`.2 60/49
`
`persoiially appeared before me. .*_
`
`J.'7’J,x;\L:/7,_1£ 1;’, E:
`
`. who lS([k‘l'S()l1all_\" kriimn to
`
`me or produced as identification and who did or did not take an oath.
`
`Jv
`No'i‘5\RY l’UBI.I(‘
`
`L’
`
`fi—d '7 7
`
`,7
`
`-
`
`‘ -‘
`
`Print Name:
`_
`.
`Commission No:
`.
`.
`.
`My COI11n1lSSl0n expires:
`
`‘Ll
`
`.
`
`”
`
`/M’/I/~')""’/‘l
`1sabel_M-Mm?‘
`'=,Commission IIDD267 11
`ires: Nov 13. 200’
`l§-'35
`Exp B°nd¢dThru
`Atlantic Bondingco .Inc
`
`5*‘.
`
`-10-
`
`I-1l()‘)X - ('orul (iuhlex. lloridu 331 l~l—ll)‘)8
`|)ru\\er
`|.()T'I' & FRIEDL.-\ND. P..-\. - l’.().
`(305) -l~1X-708‘) - (305) -I-Io-(»|‘)l
`leleeopier
`
`

`
`Case 1 :t3E3—cv—2€34-75-tELl<
`
`Documt-ant 1
`
`Entered on FLSD Docket 02./'28/2006
`
`Page 1‘: of 30
`
`Dated: February 24, 2006
`
`Respectfully submitted,
`
`LOTT & FRIEDLAND, P.A.
`
`
`
`Florida Bar No. 0048534
`
`355 Alhambra Circle
`
`Suite 1100 (zip code: 33134)
`Post Office Drawer 141098
`
`Coral Gables, Florida 331 14
`
`(305) 448-7089 telephone
`(305) 446-6191 telecopier
`e-mail: uf1scher@1f'1p1aw.com
`
`-and-
`
`Ronald Peter Roman
`
`Florida Bar No. 299227
`
`RONALD PETER ROMAN, P.A.
`8306 Mills Dr., # 699
`
`Miami, Florida 33183
`
`Telephone: (305) 279-5180
`Facsimile: (305)279-5180
`
`Attorneys for Plairztzffl
`First 2 Sell Realty, Inc.
`
`-11-
`
`LOTT & FRIEDLAND, P.A. - P.O. Drawer 141098 - Coral Gables, Florida 33114-1098
`(305) 448-7089 ' (305)446-6191 Telccopier
`
`

`
`Case 1:06—cv—20475—JLi~<
`
`Docuam-ant 1
`
`Entered on FLSD Decks-at €32/'28/2606
`
`Page 12 of 30
`
`EXHIBIT A
`
`

`
`Case 1 :06"CV"2G475'xjLK Document 1
`
`Entered on ELSE) Docket 02/28/2006
`
`Page 13 of 30
`
`llLlP-//lCh34.UDlJlU.5U\/lllll/o1AUvv|A\_.Au. .—u uuuuuuuu u,
`
`D...’ . . . . . _....
`
`United States Patent and Trademark Office
`
`
`
`Home I Site Index I Search I FAQ I Giossary I Guides I Contacts I eauslncss I am: alerts I News I Help
`
`Trademarks > Trademark Electronic Search System(Tess)
`
`TESS was last updated on Tue Feb 21 04:11:33 EST 2006
`
` @
`Lmooc
`_‘_Log_c_>tIt‘I Please logout when you are done to release system resources allocated for you.
`
`..3‘a.'.‘...} List At:
`
`‘I "
`
`IOR ..~’.!‘IT‘_P. Itorecordf " "I Record 2 out of 2
`
`
`
`( Use the "Back" button of the Internet Browser to return to
`
`TESS)
`
`Typed Drawing
`
`Word Mark
`Goods and Services
`
`Mark Drawing Code
`Design Search Code
`Serial Number
`
`Filing Date
`Current Filing Basis
`Original Filing Basis
`Published for Opposition
`Change In Registration
`Registration Number
`International Registration
`Number
`
`Registration Date
`Owner
`
`Assignment Recorded
`Attorney of Record
`Type of Mark
`Register
`Affidavit Text
`Renewal
`LivelDead Indicator
`
`ASSIST 2 SELL
`
`IC 036. US 101 102. G 8- 5: real estate consulting and brokerage services. FIRST USE: 19900120. FIRST USE IN
`COMMERCE: 19911005
`
`IC 035. US 101. G & S: cooperative advertising and marketing services for real estate owners. FIRST USE:
`19900120. FIRST USE IN COMMERCE: 19911005
`
`mrvpeo DRAWING
`
`74076970
`
`July 10. 1990
`1A
`1B
`
`December 31, 1991
`CHANGE IN REGISTRATION HAS OCCURRED
`1744999
`
`0847731
`
`January 5. 1993
`(REGISTRANT) USA ASSIST 2 SELL, INC. CORPORATION NEVADA 535 East Plumb Lane Reno NEVADA
`89502
`
`(LAST LISTED OWNER) ASS|ST—2—SELL. INC. CORPORATION BY CHANGE OF NAME FROM NEVADA 535
`EAST PLUMB LANE RENO NEVADA 89502
`ASSIGNMENT RECORDED
`WILLIAM M BORCHARD
`SERVICE MARK
`PRINCIPAL
`
`SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20020516.
`1ST RENEWAL 20020516
`LIVE
`
`%
`
`1of2
`
`2/21/2006 6:13 PM
`
`

`
`c
`
`llllp./ / U.:aa4.lIa1J|.U.5U\'/ LI|u/ .)u\_IvvuL,Iu. A—uu\,u.aLuu.—5u-1\,uA.‘.A
`
`Case 1:06—cv—20475—tiLl~< Document 1
`United States Patent and Trademark Office
`
` Home I Site Index I Search I FAQ I Glossary I Guides I Contact: I esuslness I efllx alerts I News I Help
`
`Entered on FLSD Docket 02/28/2006
`
`Page 14 of 30
`
`Trademarks > Trademark Electronic Search System(Tess)
`
`TESS was last updated on Tue Feb 21 04:11:33 EST 2006
`
`IIEIEEE
`
`_i._qg_oi_ii
`
`I Please logout when you are done to release system resources allocated for you.
`
`Start
`
`*.‘List At:
`
`OR Jump Ito record: "I
`
`I-
`
`" Record 1 out of 2
`
`
`
`TESS)
`
`( Use the "Back" button of the Internet Browser to return to
`
`Assist/FjSell
`
`Word Mark
`Goods and Services
`
`ASSIST 2 SELL
`
`IC 036. US 101 102. G 8. S: real estate consulting and brokerage services. FIRST USE: 19900120. FIRST USE IN
`COMMERCE: 19900120
`
`IC 035. US 101. G & S: cooperative advertising and marketing services for real estate owners. FIRST USE: 19900120.
`FIRST USE IN COMMERCE: 19900120
`
`Mark Drawing Code
`Design Search Code
`
`Serial Number
`
`(3) DESIGN PLUS WORDS. LETTERS, AND/OR NUMBERS
`07.01.04 — Detached house
`26.07.13 - Diamonds, more than one: More than one diamond
`26.11.13 - More than one rectangle; Rectangles (more than one)
`26.11.21 - Rectangles that are completely or partially shaded
`74076972
`
`Filing Date
`Current Filing Basis
`Original Filing Basis
`Published for
`opposmon
`
`July 10, 1990
`1A
`1B
`
`.
`April 28, 1992
`
`°"“f‘9° ".‘
`Registration
`Registration Number
`Registration Date
`Owner
`
`CHANGE IN REGISTRATION HAS OCCURRED
`1743808
`December 29, 1992
`
`(REGISTRANT) USA ASSIST 2 SELL, INC. CORPORATION NEVADA 535 East Plumb Lane Reno NEVADA 89502
`
`(LAST LISTED OWNER) ASSlST—2—SELL, INC. CORPORATION BY CHANGE OF NAME FROM NEVADA 535 EAST
`PLUMB LANE RENO NEVADA 89502
`
`A“‘9""‘°"‘
`Recorded
`
`ASSIGNMENT RECORDED
`
`Attorney of Record
`Type of Mark
`Register
`Affidavit Text
`Renewal
`LiveIDeadlndicator
`
`WILLIAM M BORCHARD
`SERVICE MARK
`PRINCIPAL
`SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20020516.
`1ST RENEWAL 20020516
`LIVE
`
`EM
`
`1of2
`
`2/21/2006 6:13 PM
`
`

`
`Case 1:06—<:v—20475~JLi~<
`
`Docuam-ant 1
`
`Entered on FLSD Decks-at €32/'28/2606
`
`Page 15 of 30
`
`EXHIBIT B
`
`

`
`Case 1 :0E3—cv—2€3475wtELi«<_
`
`DOCLIiT1(-3r3t
`
`1%
`
`_3E:f1t<-are
`
`d on FLSD >D0c_ke-3t €32/28/2606
`._.,.4,,# g.‘
`'
`.:
`
` R V‘
`
`Au.bL»LLILa
`
`Page 16 of 30
`
`Florida Profit
`
`FIRST 2 SELL REALTY, INC.
`
`PRINCIPAL ADDRESS
`
`10855 SW 72 ST
`SUITE #20
`
`MIAMI FL 33173
`Changed 05/23/2002
`
`MAILING ADDRESS
`
`10855 SW 72 ST
`SUITE #20
`
`MIAMI FL 33173
`Changed 05/23/2002
`
`Document Number
`
`P99000106733
`
`FEI Number
`
`650966246
`
`State
`FL
`
`Status
`ACTIVE
`
`Date Filed
`
`12/ 09/ 1999
`
`Effective Date
`
`01/01/2000
`
`ent
`Re
`
`Name & Address
`MARTINEZ, JOSE A
`10855 SW 72 S'I‘
`STE #20
`MIAMI Fl. 33173
`
`Address Changed: 05/23/2002
`
`Officer Director Detail
`
`
`
`
`
`
`
`PD
`
`
`
`MARTINEZ, JOSEA
`10855 SW 72 ST. STE #20
`
`
` MIAMI FL 33173
`
`http://ccfcorp.d0s.state.fl.us/scripts/c0rdet.exe?a1=DETFIL&n1=P9900010673...
`
`2/21/2006
`
`

`
`Case 1:06—cv—20475—JLi< Document 1
`
`Entered on FLSD Docket €32/'28/2606
`
`Page 1? of 30
`
`;uou—v._
`
`Annual Reports
`
`
`
`
`
`
`
`
`
`
`
`]_
`
`Previous Filing
`
`.
`
`| Return to List___i
`
`I NextFi|ing
`
`No Events
`
`No Name History Information
`
`Document Images
`Listed below are the images available for this filing.
`
`04/13/2005 —— ANN REP/UNIFORM BUS REP
`
`01/23/2004 —— ANN REP/UNIFORM BUS REP
`
`12/09/1999 -- Domestic Profit
`
`05/05/2003 —— ANN REP/UNIFORM BUS REP
`
`05/23/2002 —— COR - ANN REP/UNIFORM BUS REP
`
`05/11/2001 —- ANN REP/UNIFORM BUS REP
`
`THIS IS NOT OFFICIAL RECORD; SEE DOCUMENTS IF QUESTION OR
`CONFLICT
`
` 1:1
`
`http://ccfc0rp.dos.state.fl.us/scripts/cordet.exe?a1=DETFIL&n1=P99oo010673... 2/21/2006
`
`

`
`Case 1:06—<:v—20475~JLi~<
`
`Docuam-ant 1
`
`Entered on FLSD Decks-at €32/'28/2606
`
`Page 18 of 30
`
`EXHIBIT C
`
`

`
`Case 1:06—<:v—20475~JLi~<
`
`Docuam-ant 1
`
`Entered on FLSD Decks-at €32/'28/2606
`
`Page 19 of 30
`
`

`
`Case 1:06—<:v—20475~JLi~<
`
`Docuam-ant 1
`
`Entered on FLSD Decks-at €32/'28/2606
`
`Page 20 of 30
`
`EXHIBIT D
`
`

`
`Entered on FLSD Docket €32./'28/2606
`
`Page 2": of 30
`-.._.
`A nun. any n
`
`1.
`
`.L\.a\.a
`
`-
`
`_,..
`
`Case 1 :06"CV"2G4'75“s.ii...i'< Document 1
`
`ya. _...
`
`-v nu.-vi
`
`pus/La
`
`AssistfiSell E
`
`July 14, 2005
`
`Jose A. Martinez
`First 2 Sell
`12568 North Kendall Drive
`
`Miami, FL 33186
`
`Re:
`
`FIRST 2' SELL
`
`Dear Mr. Martinez:
`
`I previously wroteito you regarding your use ofthe term “FIRST 2 SELL” as part
`of the trade name for your Exit Realty office.
`It is my understanding that you canceled
`your registration of the trade name Exit Realty First 2 Sell.
`
`However, it appears you‘ are continuing to use the term “FIRST 2 SELL" in
`connection with real estate services. As Imade clear in my previous letter, Assist-2-Sell,
`Inc. is the owner of federal registrations for the mark ASSIST 2 SELL® in connection
`with real estate consulting and brokerage services as well as cooperative advertising and
`marketing services for real estate owners. This mark has been in continuous use for
`nearly 15 years and has been {widely used throughout the State of Florida.
`
`' We maintain that your use of the terni,;fl7IRST 2 SELL” in connection with real
`estate services is likely to cause the ordinary consumer to be confiised as to the source,
`affiliation or sponsorship of you or your company. Therefore, we request that you
`.. immediately cease and desist from further use of this term as part of your trade name,
`Please execute the acknowledgment which follows this letter indicating your agreement
`to do so and return it to me on or before July 31, 2005.
`
`We look forward to receiving your prompt response in this matter.
`,/
`
`
`
`Assist-2—$e". '7":-
`1610 Meadow Wood Lane ' Reno, Nevada 89502 ' Tel. (775) 685-6050 ' Fax (775) 823-8862
`
`l'd 99€l'0N
`
`Wd6Zil
`
`9003
`
`

`
`Case 1:OE3—cv—2€3475—JLl<
`ug.
`.;v
`uu .;¢.uv-
`
`Docuam-ant 1
`
`Entered an FLSD Decks-at €32./'28/2606
`Page 22 of 30
`4 4.uu
`‘luv
`A uuvguuv L
`
`...-
`
`ACKNOWLEDGMENT
`
`I agree to imxncdiately cease and desist from any unauthorized use of the term
`FIRST 2 SELL or any other confusingly similar variations of any service marks or other
`intellectual propeny owned by Assist-2-Sell, Inc.
`
`By;
`Jose A. Manincz
`
`Dated:
`
`, 2005.
`
`8'd
`
`998l‘°N
`
`Wdflfill
`
`9003 ‘(F991
`
`

`
`Case 1:06—<:v—20475~JLi~<
`
`Docuam-ant 1
`
`Entered on FLSD Decks-at €32/'28/2606
`
`Page 23 of 30
`
`EXHIBIT E
`
`

`
`Case 1 :06"CV"2G475'xjLK Document 1
`
`Entered on FLSD Docket €32./'28/2606
`
`Page 24 of 30
`
`sin. A.V
`
`I./U 4-..uu
`
`Luvs:
`
`I
`
`.
`
`-
`
`‘use
`
`A vv-41 vuv n.
`
`auu
`
`Assist/fl\Sell
`
`September 2, 2005
`
`Arturo Dopazo
`Law Offices of Arturo Dopazo, III, PA.
`8353 SW 124 Street, Suite 104
`Miami, FL 33156
`
`Re:
`
`FIRST 2 SELL
`
`Dear Mr. Dopazo:
`
`I appreciate receiving your response to my letter dated July 14, 2005 regarding your
`client's use of the mark FIRST 2 SELL. While I appreciate the arguments set forth in your letter,
`I respectfully disagree with your position in this matter.
`
`As I indicated in my previous letter, Assist-2-Sell, Inc. is the franchisor of ASSIST 2
`SELL® real estate broker age ofliees tln ougliout the United States and Canada. Assist-2.-Sell,
`Inc. has used the ASSIST 2 SELL® mark for more than 15 years and obtained a registration of
`the mark on the Principal Register of the United States Patent and Trademark Office (“USPTO")
`more than 12 years ago. Our organization maintains more than 500 franchise units in 46 states,
`including more than 100 offices in Florida. Based on the extensive marketing and promotion of
`the ASSIST 2 SELL® mark throughout Florida and the rest of North America, our company has
`become widely recognlzedas a leading name in the real estate industry and has been featured in
`multiple editions of na