ESTTA Tracking number:
`
`ESTTA1350214
`
`Filing date:
`
`04/04/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
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`92084100
`
`Party
`
`Correspondence
`address
`
`Plaintiff
`Bekiares Eliezer LLP dba Founders Legal
`
`KENNINGTON GROFF
`BEKIARES ELIEZER LLP DBA FOUNDERS LEGAL
`2870 PEACHTREE RD. #512
`ATLANTA, GA 30305
`UNITED STATES
`Primary email: kgroff@founderslegal.com
`Secondary email(s): zeyster@founderslegal.com, klogan@founderslegal.com,
`mlane@founderslegal.com
`404-537-3686
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Motion to Suspend for Civil Action
`
`Kennington R. Groff
`
`kgroff@founderslegal.com
`
`/Kennington R. Groff/
`
`04/04/2024
`
`Attachments
`
`Motion to Suspend with exhibit.pdf(788417 bytes )
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of U.S. Trademark Registration No. 7134499
`For the Mark FC FOUNDERS COUNSEL
`Registered: August 8, 2023
`____________________________________
`
`
`
`
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`
`)
`BEKIARES ELIEZER LLP DBA
`)
`FOUNDERS LEGAL,
`
`
`)
`
`
`
`
`
`
`)
`Petitioner.
`
`
`
`)
`
`
`
`
`
`)
`v.
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`
`
`
`
`)
`
`SEBASTIAN ALEXANDER
`
`)
`GARCIA,
`
`
`
`
`)
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`
`
`
`
`
`)
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`
`
`
`
`
`)
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`Registrant.
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`)
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`Cancellation No. 92084100
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`PETITIONER’S MOTION TO SUSPEND FOR CIVIL ACTION
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`
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`Pursuant to TBMP § 510.02(a), Petitioner, Bekiares Eliezer LLP dba Founder
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`Legal (“Founders Legal”), respectfully requests that the Board enter an Order
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`suspending this Cancellation proceeding pending the resolution of a lawsuit filed by
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`Founders Legal against Registrant, Sebastian Alexander Garcia (“Garcia”) and
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`directed to issues that would be dispositive of this Cancellation.
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`
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`Garcia is the owner of U.S. Trademark Registration No. 7,134,499 (the “499
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`Registration”) for the design mark FOUNDERS COUNSEL that is the subject of
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`this Cancellation. Petitioner is the owner of U.S. Trademark Registration Nos.
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`4,746,784 the FOUNDERS LEGAL (the “784 Registration”) and 7,223,500 for
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`Page 1 of 6
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`

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`FOUNDHERS (the “500 Registration”) and Trademark Serial Nos. 97/632374 for
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`the standard character mark FOUNDERS in class 45, 98/056169, for the standard
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`character mark FOUNDERS BRIEF in class 45 and 97/938999 for the standard
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`character mark FUNDERS LEGAL in class 45 (the “Applications”).
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`
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`On April 3, 2024, Founders Legal filed a lawsuit styled Bekiares Eliezer LLP
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`dba Founders Legal v. Sebastian Alexander Garcia and Founders Counsel, LLC,
`
`Case No. 1:24-cv-21248 (the “Civil Action”), in the United States District Court for
`
`the Southern District of Florida. The Plaintiff in the Civil Action alleges federal
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`trademark infringement pursuant to 15 U.S.C. § 1114, infringement of trademark,
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`false designation of origin and unfair competition pursuant to 15 U.S.C. § 1125,
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`common law trademark infringement under Florida law, and unfair competition and
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`deceptive trade practices based on Florida law. A copy of the Complaint in the Civil
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`Action is attached as Exhibit “A” hereto. As a result, it is very likely that the same
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`subject matters, issues, testimony and other evidence in this opposition will be
`
`involved in the Civil Action, and determination of the Civil Action may be partly or
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`entirely dispositive of this proceeding.
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`
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`Most, if not all, of the issues in the opposition proceeding will be decided by
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`the district court. Accordingly, pursuant to 37 C.F.R. § 2.117, suspension of the
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`opposition proceeding is appropriate. See, 37 C.F.R. § 2.117 (“Whenever it shall
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`come to the attention of the Trademark Trial and Appeal Board that a party or parties
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`Page 2 of 6
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`

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`to a pending case are engaged in a civil action or another Board proceeding which
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`may have a bearing on the case, proceedings before the Board may be suspended
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`until termination of the civil action or the other Board proceeding.”). See also,
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`TBMP § 510.02(a) (“Ordinarily, the Board will suspend proceedings in the case
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`before it if the final determination of the other proceeding will have a bearing on the
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`issues before the Board”); Argo & Co. v. Carpetsheen Manufacturing, Inc., 187
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`USPQ 366, 367 (TTAB 1995) (suspension granted for opposition because state court
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`litigation which would decide applicant ’s ownership of mark “may have a bearing
`
`on the question of applicant’s right of registration”); WhopperBurger, Inc. v. Burger
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`King, Inc., 171 USPQ 805, 807 (TTAB 1971) (suspension granted in cancellation
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`proceeding where complaint sought to enjoin defendant from using mark and
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`requested cancellation of the mark). The district court’s resolution of the dispute
`
`would also decide issues not before the Board. For example, the Civil Action
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`involves inter alia claims of false designation of origin, and unfair competition and
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`seeks injunctive relief and monetary damages. The opposition proceeding cannot
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`dispose of all the issues before the district court, but the district court proceedings
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`can dispose of most, if not all, of the issues involved in the opposition proceeding.
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`
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`Finally, if both proceedings move forward simultaneously, two separate
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`forums would face the expense and effort of dealing with issues that could be better
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`Page 3 of 6
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`

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`resolved in one forum, the district court, because of its more comprehensive
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`jurisdiction to consider all of the issues.
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`CONCLUSION
`
`
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`The interests of judicial economy and judicial consistency require that the
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`Board suspend the present opposition proceeding until termination of the Civil
`
`Action. Accordingly, Founders Legal respectfully requests that the Board enter an
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`order suspending the opposition proceeding pending termination of the Civil Action.
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`BEKIARES ELIEZER, LLP
`
`/s/ Kennington R. Groff
`Kennington R. Groff
`GA Bar No.: 782901
`Zachary C. Eyster
`GA Bar No.: 192335
`Melanie K. Lane
`GA Bar No.: 831941
`
`2870 Peachtree Rd. #512
`Atlanta GA 30305
`Telephone: 404.537.3686
`
`Counsel for Petitioner
`
`Page 4 of 6
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`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of U.S. Trademark Registration No. 7134499
`For the Mark FC FOUNDERS COUNSEL
`Registered: August 8, 2023
`____________________________________
`
`
`
`
`
`
`)
`BEKIARES ELIEZER LLP DBA
`)
`FOUNDERS LEGAL,
`
`
`)
`
`
`
`
`
`
`)
`Petitioner.
`
`
`
`)
`
`
`
`
`
`)
`v.
`
`
`
`
`
`)
`
`SEBASTIAN ALEXANDER
`
`)
`GARCIA,
`
`
`
`
`)
`
`
`
`
`
`
`)
`
`
`
`
`
`
`)
`
`Registrant.
`
`
`)
`
`
`
`
`Cancellation No. 92084100
`
`
`
`
`
`
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`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that on April 4, 2024, I served the foregoing PETITIONER’S
`
`MOTION TO SUSPEND FOR CIVIL ACTION on Opposer by email as follows:
`
`Gilberto Garcia
`Gilberto13@me.com
`
`
`This 4th day of April, 2024.
`
`/s/Kennington R. Groff
`Kennington R. Groff
`
`
`
`
`
`Page 5 of 6
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`

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`Exhibit A
`Exhibit A
`
`
`
`Page 6 of 6
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`

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`Case 1:24-cv-21248-RAR Document 1 Entered on FLSD Docket 04/03/2024 Page 1 of 25
` CIVIL COVER SHEET
`JS 44 (Rev. 04/21) FLSD Revised 12/02/2022
`
`The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as provided
`by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the purpose of initiating
`the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.) NOTICE: Attorneys MUST Indicate All Re-filed Cases Below.
` I. (a) PLAINTIFFS
`
`DEFENDANTS
`
`Bekiares Eliezer LLP dba Founders Legal
`
`Sebastian Alexander Garcia et al.
`
`(b) County of Residence of First Listed Plaintiff
`Fulton, Georgia
`(EXCEPT IN U.S. PLAINTIFF CASES)
`
`County of Residence of First Listed Defendant
`Miami-Dade, Florida
`(IN U.S. PLAINTIFF CASES ONLY)
`IN LAND CONDEMNATION CASES, USE THE LOCATION OF
`THE TRACT OF LAND INVOLVED.
`
`NOTE:
`
`(c) Attorneys (Firm Name, Address, and Telephone Number)
`
` Attorneys (If Known)
`
`Mederos Legal, PLLC, 7000 W. Palmetto Park Rd. Ste. 210 Boca Raton, Diana Mederos
`
`(d) Check County Where Action Arose:
`
`
`
` MIAMI- DADE
`
` MONROE
`
` BROWARD
`
` PALM BEACH
`
` MARTIN
`
` ST. LUCIE
`
` INDIAN RIVER
`
` OKEECHOBEE
`
` HIGHLANDS
`
`II. BASIS OF JURISDICTION (Place an “X” in One Box Only)
`
`☐ 1 U.S. Government
`
`☐ 3
`
`Federal Question
`
`Plaintiff
`
`(U.S. Government Not a Party)
`
`III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X” in One Box for Plaintiff)
`(For Diversity Cases Only)
` and One Box for Defendant)
` PTF
` PTF DEF
` DEF
`☐ 1 ☐ 1
` ☐ 4
`
`Incorporated or Principal Place
`of Business In This State
`
`☐ 4
`
`☐ Citizen of This State
`
`☐ 2 U.S. Government
`Defendant
`
`☐ 4
`
` Diversity
`(Indicate Citizenship of Parties in Item III)
`
`☐ Citizen of Another State
`
`☐ 2 ☐ 2
`
`Incorporated and Principal Place
`of Business In Another State
`
`☐ 5
`
` ☐ 5
`
`Citizen or Subject of a
`Foreign Country
`
`☐ 3 ☐ 3 Foreign Nation
`
`☐ 6
`
` ☐ 6
`
`IV. NATURE OF SUIT (Place an “X” in One Box Only)
` Click here for: Nature of Suit Code Descriptions
`CONTRACT
`TORTS
`FORFEITURE/PENALTY
`BANKRUPTCY
`
`
`
`☐ 110 Insurance
` PERSONAL INJURY ☐ 625 Drug Related Seizure
`☐ 422 Appeal 28 USC 158
` PERSONAL INJURY
`☐ 310 Airplane
`☐ 120 Marine
`☐ 365 Personal Injury -
` of Property 21 USC 881 ☐ 423 Withdrawal
`☐ 315 Airplane Product
`☐ 130 Miller Act
` Product Liability ☐ 690 Other
` 28 USC 157
`☐ 140 Negotiable Instrument
`☐ 367 Health Care/
` Liability
`☐ 150 Recovery of Overpayment ☐ 320 Assault, Libel &
`
` Pharmaceutical
`
` & Enforcement of Judgment
`☐ 151 Medicare Act
`☐ 152 Recovery of Defaulted
`Student Loans
`
` Liability
`
` Slander
`☐ 330 Federal Employers’
`
` Personal Injury
` Product Liability
`
`368 Asbestos Personal
`Injury Product Liability
`
`☐
`
`INTELLECTUAL PROPERTY
`RIGHTS
`☐ 820 Copyrights
`☐ 830 Patent
`☐ 835 Patent – Abbreviated
`New Drug Application
`☐ 840 Trademark
`☐ 880 Defend Trade Secrets
`Act of 2016
`
`OTHER STATUTES
`☐ 375 False Claims Act
`☐ 376 Qui Tam (31 USC 3729(a))
`400 State Reapportionment
`☐ 410 Antitrust
`☐ 430 Banks and Banking
`☐ 450 Commerce
`☐ 460 Deportation
`☐ 470 Racketeer Influenced
`and Corrupt Organizations
`☐ 480 Consumer Credit
`(15 USC 1681 or 1692)
`☐ 485 Telephone Consumer
`Protection Act (TCPA)
`☐ 490 Cable/Sat TV
`☐ 850 Securities/Commodities/
`Exchange
`☐ 890 Other Statutory Actions
`☐ 891 Agricultural Acts
`☐ 893 Environmental Matters
`☐ 895 Freedom of Information Act
`☐ 896 Arbitration
`☐ 899 Administrative Procedure
`Act/Review or Appeal of
`Agency Decision
`☐ 950 Constitutionality of
`State Statutes
`
`V. ORIGIN
`☐ 1 Original
`Proceeding
`
` (Place an “X” in One Box Only)
`☐ 4 Reinstated
`☐ 2 Removed
`☐ 3 Re-filed
`from State
`or
`(See VI
`Court
`below)
`Reopened
`
`☐
`
`VI. RELATED/
`RE-FILED CASE(S)
`
`(See instructions): a) Re-filed Case ☐YES ☐ NO
` JUDGE:
`
`☐ 5
`
`Transferred from
`another district
`(specify)
`
`☐ 6 Multidistrict
`Litigation
`Transfer
`
`☐ 7 Appeal to
`District Judge
`from Magistrate
`Judgment
`b) Related Cases ☐YES ☐ NO
` DOCKET NUMBER:
`
`☐
`
`8
`
`
`
`Multidistrict
`☐ 9
`Litigation
`– Direct
`File
`
`Remanded from
`Appellate Court
`
`VII. CAUSE OF ACTION
`
`Cite the U.S. Civil Statute under which you are filing and Write a Brief Statement of Cause (Do not cite jurisdictional statutes unless diversity):
`15 U.S.C. 1114 - Trademark Infringement
`LENGTH OF TRIAL via
` days estimated (for both sides to try entire case)
`
`VIII. REQUESTED IN
`COMPLAINT:
`
`CHECK IF THIS IS A CLASS ACTION
`UNDER F.R.C.P. 23
`
`DEMAND $
`
`CHECK YES only if demanded in complaint:
`
`JURY DEMAND:
`
` ☐ Yes ☐ No
`
`ABOVE INFORMATION IS TRUE & CORRECT TO THE BEST OF MY KNOWLEDGE
`DATE
`SIGNATURE OF ATTORNEY OF RECORD
`
`April 3, 2024
`
`/s/ Diana Mederos
`
`FOR OFFICE USE ONLY : RECEIPT #
`
` AMOUNT
`
` IFP
`
` JUDGE
`
` MAG JUDGE
`
`(Excl. Veterans)
`
`☐ 340 Marine
`
`☐ 153 Recovery of Overpayment ☐ 345 Marine Product
`
`of Veteran’s Benefits
`☐ 160 Stockholders’ Suits
`☐ 190 Other Contract
`☐ 195 Contract Product Liability
`☐ 196 Franchise
`
` REAL PROPERTY
`☐ 210 Land Condemnation
`
` Liability
`☐ 350 Motor Vehicle
`☐ 355 Motor Vehicle
` Product Liability
`☐ 360 Other Personal
` Injury
`☐ 362 Personal Injury -
`Med. Malpractice
`CIVIL RIGHTS
`☐ 440 Other Civil Rights
`
`☐ 220 Foreclosure
`
`☐ 441 Voting
`
`☐ 240 Torts to Land
`☐ 245 Tort Product Liability
`☐ 290 All Other Real Property
`
`LABOR
`SOCIAL SECURITY
` PERSONAL PROPERTY ☐ 710 Fair Labor Standards Acts ☐ 861 HIA (1395ff)
`☐ 370 Other Fraud
`☐ 720 Labor/Mgmt. Relations ☐ 862 Black Lung (923)
`☐ 371 Truth in Lending
`☐ 740 Railway Labor Act
`☐ 863 DIWC/DIWW (405(g))
`☐ 380 Other Personal
`☐ 751 Family and Medical
`☐ 864 SSID Title XVI
`☐ 865 RSI (405(g))
`Property Damage
` Leave Act
`☐ 790 Other Labor Litigation
`☐ 385 Property Damage
`☐ 791 Employee Retirement
`Product Liability
`Income Security Act
`
` PRISONER PETITIONS
`
`Habeas Corpus:
`
`FEDERAL TAX SUITS
`☐ 870 Taxes (U.S. Plaintiff or
`Defendant)
`☐ 871 IRS—Third Party 26 USC
`7609
`
`☐ 463 Alien Detainee
`☐ 510 Motions to Vacate
`☐ 230 Rent Lease & Ejectment ☐ 442 Employment
`Sentence
`☐ 443 Housing/
`☐ 530 General
`Accommodations
`☐ 445 Amer. w/Disabilities - ☐ 535 Death Penalty
`IMMIGRATION
`☐ 462 Naturalization Application
` Employment
`Other:
`☐ 446 Amer. w/Disabilities - ☐ 540 Mandamus & Other ☐ 465 Other Immigration
`☐ 550 Civil Rights
` Other
` Actions
`☐ 448 Education
`☐ 555 Prison Condition
`560 Civil Detainee –
`Conditions of
`Confinement
`
`■
`

`

`Case 1:24-cv-21248-RAR Document 1 Entered on FLSD Docket 04/03/2024 Page 2 of 25
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF FLORIDA
`MIAMI DIVISION
`
`
`
`BEKIARES ELIEZER LLP DBA
`
`FOUNDERS LEGAL
`
`
`
`
`
`
`
`
`Plaintiff
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`SEBASTIAN ALEXANDER GARCIA
`and FOUNDERS COUNSEL, LLC
`
`
`
`
`
`
`
`
`Defendants.
`
`
`
`
`
`)
`)
`
`
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`)
`)
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`)
`)
`)
`)
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`)
`)
`
`COMPLAINT
`
`Case No.: 1:24-cv-21248-XXXX
`
`
`
`
`
`Bekiares Eliezer LLP d/b/a Founders Legal, (“Founders Legal” or “Founders”) files this
`
`Complaint against Sebastian Alexander Garcia and Founders Counsel, LLC (hereinafter
`
`“Defendants”), showing the court as follows:
`
`Introduction
`
`1. In seeking legal services, it is vital that clients not be confused as to the lawyers and
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`representatives they hire. The consequences of confusion are grave and may include ineffective
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`representation and prejudicial client outcomes.
`
`2. For nearly a decade, Founders Legal has provided legal services under the federally registered
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`mark FOUNDERS LEGAL and has developed an extensive and highly respected reputation as a
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`legal provider targeting growing organizations, including startups and nascent businesses, world-
`
`wide.
`
`3. Founders’ clients and their competitors, the United States Patent and Trademark Office
`
`(USPTO) and its officials, and members of the general public have come to associate the mark
`
`FOUNDERS LEGAL strongly with Founders, and Founders has dedicated significant resources
`
`to promote and protect its rights in the FOUNDERS LEGAL mark and its other marks and
`
`1
`
`

`

`Case 1:24-cv-21248-RAR Document 1 Entered on FLSD Docket 04/03/2024 Page 3 of 25
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`branding.
`
`4. Founders recently discovered the existence of Defendants and Defendants’ infringing conduct,
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`offering services targeting new businesses that are quasi legal or legal in nature considering
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`Defendant Garcia is an attorney himself, under the mark FOUNDERS COUNSEL (the
`
`“Infringing Mark”).
`
`5. Founders has no relationship whatsoever with Defendants, and, therefore, no control as to the
`
`quality or purpose of the services purported to be offered under the Infringing Mark by
`
`Defendants.
`
`6. Defendants’ infringing conduct has caused, and is likely to continue to cause, confusion
`
`among the trade and consuming public as to the source or origin of Defendants’ services offered
`
`under the Infringing Mark, thereby causing irreparable harm to Founders.
`
`7. Founders understands that its industry exists because of the trust clients place in attorneys and
`
`representatives. If a client is confused as to the representative with which it is engaging, the
`
`consequences can be extremely dire for the client, and Founders’ loss of its control of its own
`
`reputation and identity as FOUNDERS LEGAL would certainly be irreparable.
`
`8. Founders Legal is forced to file this action because Defendants refuse to discontinue use of
`
`clearly infringing trademarks.
`
`9. Clearly, FOUNDERS COUNSEL is confusingly similar to FOUNDERS LEGAL. Yet, despite
`
`Founders Legal’s federal registration of FOUNDERS LEGAL and in disregard of Founders
`
`Legal’s urgings which began at least as early as November 22, 2023, Defendants have continued
`
`to use FOUNDERS COUNSEL to promote their services.
`
`Parties
`
`10. Bekiares Eliezer LLP d/b/a Founders Legal is a Georgia limited liability partnership, formed
`
`2
`
`

`

`Case 1:24-cv-21248-RAR Document 1 Entered on FLSD Docket 04/03/2024 Page 4 of 25
`
`in July, 2014.
`
`11. Defendant Sebastian Alexander Garcia (“Garcia”) is an individual residing in Florida at 9195
`
`Collins Avenue, Unit 404, Surfside, Florida 33154.
`
`12. Defendant Founders Counsel, LLC (“Founders Counsel”) is a Florida limited liability
`
`company, formed on August 30, 2022 with its principal place of business at 9195 Collins
`
`Avenue, Apt 404, Surfside, Florida 33154.
`
`13. Defendant Founders Counsel can be served with process through its registered agent
`
`Sebastian Garcia at 9195 Collins Avenue, Apt 404, Surfside, Florida 33154.
`
`Jurisdiction
`
`14. This action arises under the Lanham Trademark Act (15 U.S.C. §§ 1051-1127). This Court
`
`has jurisdiction over this action pursuant to 28 U.S.C. § 1331 and 28 U.S.C. § 1338, and under
`
`its supplemental jurisdiction of 28 U.S.C. § 1367, the counts of which concern acts of trademark
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`infringement, false designation of origin, and unfair competition under the Lanham Act, and
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`trademark infringement and unfair competition under the laws of the State of Florida.
`
`15. The Court has supplemental jurisdiction over Founders Legal’s state law claims based on 28
`
`U.S.C. § 1367, because the state law claims are so related to the federal subject-matter claims
`
`that they form part of the same case or controversy and derive from a common nucleus of
`
`operative fact.
`
`16. Defendants are all residents of the state of Florida and are thus subject to the general personal
`
`jurisdiction of the courts located in Florida.
`
`17. The Court has personal jurisdiction over Defendant Founders Counsel because Defendant
`
`Founders Counsel owns, uses and possesses real property in the State of Florida and transacts
`
`business within the State of Florida. Further, this court has personal jurisdiction over Defendants
`
`3
`
`

`

`Case 1:24-cv-21248-RAR Document 1 Entered on FLSD Docket 04/03/2024 Page 5 of 25
`
`because Defendants have deliberately and intentionally marketed and sold or caused to be
`
`marketed and sold the infringing services in the State of Florida and to Plaintiff’s customers
`
`therein.
`
`18. Defendants are cognizant that their wrongful conduct harmed and continues to harm
`
`Founders Legal in Florida, where Founders Counsel is based.
`
`19. The Defendants are also subject to personal jurisdiction in this Court because they committed
`
`tortious acts (namely, trademark infringement and unfair competition) in the State of Florida and
`
`have committed a tortious injury in this state and regularly transacts and solicits business in the
`
`State of Florida.
`
`Venue
`
`20. Venue is proper here because Defendants reside and have its principal place of business in
`
`this judicial district. Venue is also proper because a substantial part of Defendants’ infringing
`
`activities that give rise to this dispute occurred in this judicial district. (28 U.S.C. §§ 1391(a)(2)
`
`and 1391(b)(2)).
`
`Statement of Facts
`
`Founders Legal and its Federally Registered and Common Law Trademark
`
`21. Founders Legal started operating on July 28, 2014.
`
`22. The business has grown from a modest law firm specializing in intellectual property with
`
`tech founders backgrounds, to an award-winning business and IP firm retaining national and
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`international clients, including many in Florida.
`
`23. Founders Legal is the owner of several federal trademarks, including the registration for
`
`FOUNDERS LEGAL, for use in connection with legal services.
`
`24. Founders Legal began using its federally registered trademark FOUNDERS LEGAL on
`
`4
`
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`Case 1:24-cv-21248-RAR Document 1 Entered on FLSD Docket 04/03/2024 Page 6 of 25
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`August 24, 2014 in connection with legal services due to its connection and close relation to
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`technology founders associated with the law firm.
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`25. On August 22, 2014, Founders Legal filed an application to register the mark FOUNDERS
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`LEGAL with the United States Patent and Trademark Office. The mark was registered with the
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`Trademark Office on June 2, 2015 (the “Founders Mark”). A true and correct copy of the
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`Certificate of Registration is attached hereto as Exhibit A.
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`26. To promote its business, Founders Legal has used the Registered Mark in many ways,
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`including on its website at <founderslegal.com>, on social media sites including, Facebook
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`(facebook.com/FoundersLegal), LinkedIn (linkedin.com/company/founders-legal) and Instagram
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`(instagram.com/founderslegal_lawfirm), through continued learning events, on business cards
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`and on other marketing materials including but not limited to magazine and newspaper articles.
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`27. In addition to its Founders Mark, Founders Legal owns a suite of related marks, including
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`FOUNDHERS, U.S. Registration No. 7223500, FOUNDERS, U.S. Application Serial No.
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`97632374, FOUNDERS BRIEF, U.S. Application Serial No. 98056169, and FUNDERS
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`LEGAL, U.S. Application Serial No. 97938999, all in connection with legal services (the
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`“Founders Legal Marks”).
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`28. Founders Legal markets its legal services to individuals and businesses around the country
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`looking for legal counsel and services in several different areas of law, including but not limited
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`to, intellectual property, corporate work, litigation, and more.
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`Defendants and their Infringement
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`29. Defendants began using the name FOUNDERS COUNSEL in commerce on or around April
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`17, 2022. Defendants’ services include legal and business services (the “Infringing Mark”).
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`30. Defendants use the Infringing Marks to promote their legal services at least in the following
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`Case 1:24-cv-21248-RAR Document 1 Entered on FLSD Docket 04/03/2024 Page 7 of 25
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`ways: on their website <founderscounsel.com>, on social media sites including Facebook
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`(facebook.com/profile.php?id=100086430292338) and Instagram
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`(instagram.com/founderscounsel/).
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`31. Defendants provide an identical service – although of inferior quality – as Founders Legal
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`does, and Defendants market their services under the trademark FOUNDERS COUNSEL.
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`32. In addition to Defendants’ Infringing Marks being nearly identical in appearance to Founders
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`Legal’s Marks, the trade channels are the same considering Plaintiff has clients in Florida.
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`33. On information and belief, Defendants have intentionally attempted to purloin and copy
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`Founders Legal’s trademarks and customers, with the deliberate intent of confusing the
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`marketplace and trading on Founders Legal’s nonpareil reputation for quality.
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`34. On information and belief, Defendant Garcia directs, controls, ratifies, participates in and is
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`the moving, conscious force behind the use of the Infringing Mark and actively and knowingly
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`caused the infringement.
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`35. Clients are extraordinarily likely to be confused by Defendants’ unauthorized use of the
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`Founders Legal Mark and adopt the mistaken belief that Founders Legal is affiliated with
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`Defendants.
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`Additional Background
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`36. On information and belief, Defendants deliberately intended to trade on Founders Legal’s
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`goodwill and reputation in the industry in which Plaintiff and Defendants both operate.
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`37. The infringing services manifestly intend to create an association between the name
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`FOUNDERS LEGAL and services in the legal field.
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`38. Defendants have never obtained permission to use or license the Founders Legal Marks, or
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`any other marks or designs confusingly similar thereto, for use on or in connection with any
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`Case 1:24-cv-21248-RAR Document 1 Entered on FLSD Docket 04/03/2024 Page 8 of 25
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`goods or services, including on the infringing services.
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`39. Founders Legal has corresponded in good faith with Defendants on several occasions to
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`demand that Defendants immediately cease all marketing and sales of the infringing services
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`under the Infringing Mark.
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`40. Notwithstanding Defendants’ awareness of Founders Legal’s rights in the Founders Legal
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`Marks and Founders Legal’s business, Defendants have refused to cease their unlawful actions.
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`41. By using the Infringing Mark in connection with their competing and infringing services,
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`Defendants seek to confuse and deceive the trade and the consuming public as to the source or
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`origin of the infringing services and the genuine Founders Legal’s services.
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`42. On information and belief, Defendants intended to free-ride on the goodwill represented by
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`the Founders Mark developed by Founders Legal when they adopted the Infringing Mark.
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`43. Defendants culpably disregarded the risk of confusion to the public in their adoption of the
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`Infringing Mark.
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`44. On information and belief, Defendants therefore knowingly, willfully, intentionally, and
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`maliciously adopted and used the Infringing Mark for marketing and selling the infringing
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`services, knowing that such use would mislead, deceive, and generate confusion among the
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`consuming public.
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`The Harm to Founders Legal as a Result of Defendants’ Unlawful Conduct
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`45. Both Founders Legal and Defendants provide identical services to identical customers in the
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`legal field.
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`46. Upon information and belief, Defendants have intentionally and willfully directed their
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`advertising, promotional and sales efforts at the same customers as Founders Legal’s, including
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`through the use of the infringing website and social media pages, in an effort to capitalize on
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`Case 1:24-cv-21248-RAR Document 1 Entered on FLSD Docket 04/03/2024 Page 9 of 25
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`Founders Legal’s commercial goodwill.
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`47. Defendants’ infringing services are identical to the services offered under the Founders Legal
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`Marks.
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`48. Thus, Defendants’ use of the Infringing Mark is likely to cause the consuming public to be
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`deceived and to erroneously assume that the parties’ respective services are in some way
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`connected with one another.
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`49. Given Defendants’ cavalier attitude toward intellectual property infringement and Founders
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`Legal’s manifestly superior rights in the Founders Legal Marks, Defendants put at risk and
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`damage Founders Legal’s reputation, goodwill, and ability to market and promote its goods and
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`services.
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`50. Defendants’ unauthorized use of the Infringing Mark has injured Founders Legal’s interests
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`and will continue to do so unless enjoined. Specifically, Defendants (a) have damaged and
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`continue to damage Founders Legal’s rights and valuable goodwill in the Founders Legal Marks;
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`and (b) have injured and continue to injure Founders Legal’s right to use and license the
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`Founders Legal Marks as the exclusive indicia of origin of Founders Legal’s services.
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`51. All conditions precedent to the filing of this action have occurred or have been waived or
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`excused.
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`52. As a result of the wrongful conduct by Defendants alleged herein, Founders Legal has been
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`forced to engage its counsel of record to enforce its rights in connection with the trademarks at
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`issue. Its counsel is accordingly entitled to its reasonable attorneys’ fees and costs in connection
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`with these legal services.
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`COUNTS
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`Count I
`Infringement of Federal Registered Mark (15 U.S.C. §1114)
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`53. Plaintiff repeats and realleges the allegations in the paragraphs above as if fully set forth
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`herein.
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`54. The Founders Legal Registration for FOUNDERS LEGAL is valid and subsisting, and is
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`prima facie evidence of the validity of the FOUNDERS LEGAL mark, of Founders Legal’s
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`ownership of the FOUNDERS LEGAL mark, and of Founders Legal’s exclusive right to use the
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`FOUNDERS LEGAL mark for the services enumerated in the Founders Legal Registration,
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`including but not limited to legal services. By virtue of the Founders Legal Registration, the
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`FOUNDERS LEGAL mark is entitled to protection under the Lanham Act, 15 U.S.C. §§ 1051, et
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`seq.
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`55. Defendants’ use of FOUNDERS COUNSEL, a confusingly similar mark, is certain to
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`continue to cause confusion, deception, and mistake by creating the false and misleading
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`impression that Defendants’ services are provided by Founders Legal, affiliated with Founders
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`Legal, are associated with Founders Legal or otherwise connected to Founders Legal, or have
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`Founders Legal’s sponsorship, endorsement, or approval for use.
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`56. Defendants’ actions – most significantly, its refusal to stop use of the Infringing Mark (as
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`described above) – demonstrate that its infringement is intentional, willful, and malicious, and
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`was for the purpose of misleading the consuming public. These willful actions are in violation of
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`the Lanham Act, 15 U.S.C. § 1114(1).
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`57. As a result of Defendant’s infringement, as described above, the consuming public is certain
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`to continue to be confused and deceived as to the source, sponsorship, affiliation, or approval of
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`Defendants’ services marketed under the FOUNDERS COUNSEL name.
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`58. Founders Legal has been damaged by the aforementioned acts in an amount to be determined
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`at trial. Defendants’ adoption and use of the FOUNDERS COUNSEL name for competing legal
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`Case 1:24-cv-21248-RAR Document 1 Entered on FLSD Docket 04/03/2024 Page 11 of 25
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`services is confusingly similar to Plaintiff’s FOUNDERS LEGAL mark and was undertaken by
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`Defendants intentionally, willfully, and in bad faith. Therefore, Founders Legal is entitled to
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`recover from Defendants treble damages and attorneys’ fees.
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`59. In addition, Defendants’ conduct, if it continues, will result in irreparable harm to Founders
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`Legal and, specifically, to the goodwill associated with the Founder Mark, unless such conduct is
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`enjoined.
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`COUNT II
`Infringement of Trademark, False Designation of Origin and Unfair Competition under
`the Lanham Act (15 U.S.C. § 1125)
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`60. Plaintiff repeats and realleges the allegations in the paragraphs above as if fully set forth
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`herein.
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`61. Through Founders Legal’s long-standing, widespread, continuous, and exclusive use of the
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`Founders Mark in commerce along with all the Founders Legal Marks, produced Plaintiff’s
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`Founders Legal Marks have become impressed upon the minds of the relevant trade and
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`consuming public as identifying Founders Legal and indicating the source of origin of the
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`Founders Legal services as coming from Plaintiff.
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`62. Founders Legal has built a valuable business in its use of the Founders Legal Marks, and the
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`goodwill associated with Founders Legal, and Founders Legal alone, is of great value to
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`Founders Legal. The Founders Mark has developed secondary meaning in the minds of the
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`consuming public in the field of legal services, and have come to indicate to the consuming
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`public that the particular services bearing the Founders Mark originate from Founders Legal.
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`63. Founders Legal has used the FOUNDERS LEGAL mark continuously in commerce since at
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`least 2014.
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`64. Defendants’ use of the Infringing Mark results in direct confusion as to the origin of
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`Case 1:24-cv-21248-RAR Document 1 Entered on FLSD Docket 04/03/2024 Page 12 of 25
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`Founders Legal’s services.
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`65. Defendants’ use of FOUNDERS COUNSEL constitutes false designation of origin and/or a
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`false or misleading description or representation of fact on or in connection with its services
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`which is certain to continue to cause confusion, mistake or deception as to the affiliation,
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`connection, or association of Defendants with Founders Legal, and/or as to the origin,
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`sponsorship or approval of Defendants’ services, in violation of the Lanham Act, 15 U.S.C. §
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`1125(a). Defendants’ conduct as described herein also constitutes an attempt to trade on the
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`substanti