ESTTA Tracking number:
`
`ESTTA1385225
`
`Filing date:
`
`09/23/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91293299
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Defendant
`Demand The Limits, PLLC
`
`MICHAEL B. CHESAL
`PERETZ CHESAL & HERRMANN, P.L.
`1 S.E. 3RD AVENUE, SUITE 1820
`MIAMI, FL 33131
`UNITED STATES
`Primary email: trademarks@pch-iplaw.com
`305-341-3000
`
`Answer
`
`Albert Alvarez
`
`aalvarez@pch-iplaw.com, emontane@pch-iplaw.com, trade-
`marks@pch-iplaw.com, ttabgroup@pch-iplaw.com
`
`/Albert Alvarez/
`
`09/23/2024
`
`Attachments
`
`Answer to Notice of Opposition D23.PDF(106123 bytes )
`
`
`
`ESTTA1385225
`
`Filing date:
`
`09/23/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91293299
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Defendant
`Demand The Limits, PLLC
`
`MICHAEL B. CHESAL
`PERETZ CHESAL & HERRMANN, P.L.
`1 S.E. 3RD AVENUE, SUITE 1820
`MIAMI, FL 33131
`UNITED STATES
`Primary email: trademarks@pch-iplaw.com
`305-341-3000
`
`Answer
`
`Albert Alvarez
`
`aalvarez@pch-iplaw.com, emontane@pch-iplaw.com, trade-
`marks@pch-iplaw.com, ttabgroup@pch-iplaw.com
`
`/Albert Alvarez/
`
`09/23/2024
`
`Attachments
`
`Answer to Notice of Opposition D23.PDF(106123 bytes )
`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`THE EHRLICH LAW FIRM, P.A.
`
`
`
`
`
`Opposer,
`
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`DEMAND THE LIMITS, PLLC,
`
` Applicant.
`
`
`
`
`
`Opposition No.: 91293299
`
`Application No.: 98035107
`
`Mark: DON’T SETTLE FOR LESS
`DEMANDTHELIMITS.COM
`
`
`
`
`
`
`
`
`
`
`
`ANSWER TO NOTICE OF OPPOSITION
`
`
`Demand The Limits, PLLC ("Applicant"), by and through its undersigned
`
`counsel, hereby answers the Notice of Opposition filed by The Ehrlich Law Firm,
`
`P.A. ("Opposer") against the registration of Applicant's mark DON’T SETTLE FOR
`
`LESS DEMANDTHELIMITS.COM, Application Serial No. 98035107, and states as
`
`follows1:
`
`1.
`
`Denied. In 2009, Opposer began using the DON’T SETTLE FOR
`
`ANYTHING LESS mark to identify the legal services rendered by the Opposer,
`
`namely The Ehrlich Law Firm P.A. On about or before 2019, the DON’T SETTLE
`
`FOR ANYTHING LESS mark had been adopted by and was being used by the
`
`Felice/Ehrlich law firm to identify legal services. And on about or before 2024, the
`
`DON’T SETTLE FOR ANYTHING LESS mark had been adopted by and was being
`
`used by the Erlich & Naparsek law firm to identify its legal services. Consequently,
`
`1 To the extent not explicitly admitted, all allegations in the Notice of Opposition are denied.
`
`
`
`
`
`
`
`
`
`from 2009 to the present, Opposer has not used the DON’T SETTLE FOR
`
`ANYTHING LESS mark to continuously identify the same source of legal services.
`
`2.
`
`Applicant admits that Opposer is listed in the United States Patent
`
`and Trademark Office’s (“USPTO”) records as the owner of U.S. Trademark
`
`Registration No. 3696493 for the mark DON’T SETTLE FOR ANYTHIING LESS in
`
`connection with “legal services” in International Class 45. The remainder of the
`
`allegations contained in Paragraph 2 are denied.
`
`3.
`
`Applicant admits that it filed the application subject to this Opposition
`
`on
`
`June
`
`9,
`
`2023
`
`for
`
`the mark DON’T SETTLE FOR LESS
`
`DEMANDTHELIMITS.COM
`
`in connection with the services referenced
`
`in
`
`Paragraph 3. Applicant lacks sufficient knowledge or information to form a belief
`
`as to the truth of the remaining allegations contained in Paragraph 3 and,
`
`therefore, denies them.
`
`4.
`
`5.
`
`6.
`
`Admitted.
`
`Denied.
`
`Denied. There is no likelihood of confusion caused by Applicant’s use of
`
`the phrase “Don’t settle for less” because, among other reasons, (a) “Don’t settle for
`
`Less” is a phrase commonly used by personal injury attorneys to promote their legal
`
`services, (b) Applicant uses the phrase “Don’t settle for less” as part of a composite
`
`mark that also uses applicant’s existing federally-registered mark DEMAND THE
`
`LIMITS®, (c) Applicant’s DEMAND THE LIMITS® mark also serves as Applicant’s
`
`house mark and domain name, (d) Applicant’s mark – “DON’T SETTLE FOR LESS
`
`DEMANDTHELIMITS.COM” – disclaims the “DON’T SETTLE FOR LESS” portion
`
`
`
`
`
`
`
`of the mark, and (e) there are no known instances of actual confusion in the
`
`marketplace.
`
`7.
`
`Denied. Applicant incorporates by reference its narrative response
`
`from Paragraph 6.
`
`AFFIRMATIVE DEFENSE – ABANDONMENT
`
`Opposer’s incidental and de minimus use of its DON’T SETTLE FOR
`
`ANYTHING LESS mark for a prolong period of time before Applicant commenced
`
`its use
`
`in
`
`commerce
`
`of
`
`the mark
`
`“DON’T SETTLE FOR LESS
`
`DEMANDTHELIMITS.COM” resulted in an abandonment of Opposer’s mark
`
`because Opposer’s token use did not constituted a bona fide use of its mark in the
`
`ordinary course of trade, and improperly sought merely to reserve its alleged rights
`
`in its mark.
`
`WHEREFORE, Applicant requests that judgment be entered in its favor and
`
`that Application Serial No. 98035107 for the mark DON’T SETTLE FOR LESS
`
`DEMANDTHELIMITS.COM be allowed to proceed to registration.
`
`Dated: September 23, 2024
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`Steven Peretz
`Albert Alvarez
`PERETZ CHESAL & HERRMANN, P.L.
`Attorneys for Applicant
`1 Southeast 3rd Avenue, Suite 182
`Miami, Florida 33131
`Telephone: (305) 341-3000
`Facsimile: (305) 371-6807
`
`By: /s/ Albert Alvarez
`
`Albert Alvarez
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`I hereby certify that on September 23, 2024 a copy of the foregoing was
`
`served via email to the following address:
`
`
`
`
`Mark D. Passler
`Victoria J. B. Doyle
`AKERMAN, LLP
`777 South Flagler Drive
`West Tower, Suite 1100
`West Palm Beach, Florida 33401
`Tel: 561-653-5000
`Email: masterdocketlit@akerman.com
`
`
`
`
`
`By: /s/ Albert Alvarez
`
`Albert Alvarez
`
`
`
`
`
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
