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Case 1:16-cv-01629-TCB

Document 1

Filed 05/20/16

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IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF GEORGIA ATLANTA DIVISION

TRUSTED COUNSEL ASHLEY, LLC,

)

)

Plaintiff,

)

)

Case No.: ____________

v.

)

)

____________________

ENTRUSTED COUNSEL, LLC,

)

)

Defendant.

)

COMPLAINT

Trusted Counsel Ashley, LLC, Plaintiff herein, files this Complaint stating

as follows:

I.

Introduction

1.

Trusted Counsel is the owner of an incontestable, federal trademark

registration for the trademark TRUSTED COUNSEL for use in connection with

“legal services.” (Exhibit A).

2.

Earlier this year, Defendant began using an infringing trademark,

ENTRUSTED COUNSEL, to offer a range of services, some of which are

identical to Trusted Counsel’s services and others which are closely related to

Trusted Counsel’s services.

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3.

Because the Parties’ respective services are both identical and closely related

and because their trademarks are nearly identical (i.e., TRUSTED COUNSEL and

ENTRUSTED COUNSEL), Trusted Counsel is being damaged and will continue

to be damaged by Defendant’s continued use of ENTRUSTED COUNSEL.

 

4.

Trusted Counsel has insisted that Defendant not use ENTRUSTED

COUNSEL as a trademark, but Defendant has nevertheless persisted.

 

5.

Trusted Counsel is compelled to file this lawsuit to prevent suffering further

damage by Defendant’s infringement.

 
 

II.

Parties

 
 

6.

Trusted Counsel Ashley, LLC is a limited liability formed under the laws of

the State of Georgia and having a principal place of business at 1201 Peachtree St.

NE, Suite 500, Atlanta, Georgia 30361.

 

7.

Entrusted Counsel, LLC is a limited liability formed under the laws of the

State of Georgia and having a principal place of business at 3200 Cobb Galleria

Parkway, Suite 200, Atlanta, Georgia 30339.

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III.

Personal Jurisdiction

8.

The Court has personal jurisdiction over Defendant because it is an entity

organized under the laws of the State of Georgia.

 

IV.

Venue

9.

Under 28 U.S.C. §1391(b) and

(c),

venue

is

proper herein because

Defendant has its principal place of business in this district and because all or

substantially all of the conduct giving rise to this lawsuit occurred in this district.

  • V. Subject Matter Jurisdiction

 

10.

Pursuant to 15 U.S.C. Section 1121, the Court has subject matter jurisdiction

over the claims herein, which are for declaratory relief and for infringement of

Trusted Counsel’s federal trademark registration.

 

VI.

Factual Background

a.

Trusted Counsel’s Use of and Rights in TRUSTED COUNSEL

 

11.

Trusted Counsel is a premier, woman-owned Atlanta-based law firm which

has been providing high-quality legal services to hundreds of clients for the past

twelve years.

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12.

Trusted Counsel began rendering legal services under TRUSTED

COUNSEL in interstate commerce as early as August 27, 2003.

 
 

13.

Trusted Counsel has used and invested extensively in its TRUSTED

COUNSEL trademark.

 

14.

Trusted Counsel has accumulated significant goodwill in TRUSTED

COUNSEL.

b.

Entrusted Counsel’s Use of ENTRUSTED COUNSEL

 

15.

Defendant was formed on March 7, 2016 and, like Trusted Counsel, is based

in Atlanta.

 

16.

Defendant promotes itself, among other things, as “A trusted legal services

partner.” (Exhibit B).

 

17.

Defendant uses ENTRUSTED COUNSEL to offer its services both on the

Internet and in the “real world.” For example, Trusted Counsel is aware that

Defendant promotes its services:

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  • a. on a webpage at the domain name <entrustedcounsel.com>;

  • b. on LinkedIn profiles for at least four different people affiliated with Defendant;

  • c. through an organization called, Women’s In-House Counsel Leadership Institute and on that organization’s website (wihcl.org) (Exhibit B); and

  • d. through the Atlanta Volunteer Lawyers Foundation, where Defendant’s CEO, Jennifer Jackson, is an At-Large Board Member; (Exhibit C).

 

18.

Defendant uses ENTRUSTED COUNSEL to promote a broad range of

services including:

  • a. legal services (Exhibit D);

  • b. “legal staffing services” (Exhibit E); and

  • c. advising customers on “effectively managing legal work” (Exhibit B).

c.

Defendant’s Uses Amount to Infringement of Trusted Counsel’s Registration

19.

Certain of Defendant’s services are identical to Trusted Counsel’s services;

specifically, both Parties provide “legal services.”

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20.

Certain of Defendant’s other services, such as “legal staffing,” are closely

related to Trusted Counsel’s services.

21.

Making the Parties’ respective marks even more similar, some of

Defendant’s displays of ENTRUSTED COUNSEL emphasize the word TRUST,

as shown in Exhibit D.

22.

The likelihood of confusion is also enhanced because Defendant is based in

Atlanta, which has been Trusted Counsel’s home city since it started in 2003. The

likelihood of confusion is further enhanced by the fact that both Trusted Counsel

and Defendant are woman-owned businesses and occasionally market themselves

as such.

23.

In terms of length, appearance, phonetics and meaning, TRUSTED

COUNSEL and ENTRUSTED COUNSEL are nearly identical.

24.

Trusted Counsel has repeatedly asked Defendant to stop using

ENTRUSTED COUNSEL, but Defendant has not.

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VII.

Counts

Count One - Declaratory Judgment of Trademark infringement

25.

Trusted Counsel incorporates into Count One, Paragraphs 1 through 24,

above.

26.

An actual controversy exists between Trusted Counsel and Defendant in that

Defendant’s ongoing use of ENTRUSTED COUNSEL creates a likelihood of

confusion between it and TRUSTED COUNSEL and otherwise infringes Trusted

Counsel’s Registration.

27.

Despite that, Defendant has refused to stop using ENTRUSTED COUNSEL

and maintained that it has a right to use that mark and that such use does not

infringe Trusted Counsel’s Registration.

28.

Trusted Counsel requests a judicial declaration that Defendant’s use of

ENTRUSTED COUNSEL infringes Trusted Counsel’s Registration.

29.

Such a declaration is necessary to determine the respective rights of the

Parties.

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Count Two - Infringement of Registered Trademark Under 15 U.S.C. §1114 of the Lanham Act

30.

Trusted Counsel incorporates into Count Two, Paragraphs 1 through 29,

above.

31.

Trusted Counsel’s Registration became incontestable on April 6, 2012.

32.

Defendant’s use of ENTRUSTED COUNSEL creates a likelihood of

confusion between it and Trusted Counsel’s use of TRUSTED COUNSEL and

otherwise infringes Trusted Counsel’s Registration.

33.

Additionally, Defendant’s use of ENTRUSTED COUNSEL is likely to

deceptively or mistakenly cause others to believe that Defendant’s services are

sponsored, approve or affiliated with Trusted Counsel.

Count Three - Cybersquatting under 15 U.S.C. §1125(d)

34.

Trusted Counsel incorporates into Count Three, Paragraphs 1 through 33,

above.

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35.

Defendant has a bad faith intent to profit from registration and use of

entrustedcounsel.com by creating the i llusion of an affiliation with Trusted

Counsel.

36.

Trusted Counsel has been damaged by Defendant’s registration and use of

the entrustedcounsel.com domain name and will continue to suffer irreparable

harm if such registration and use are not curtailed.

37.

This conduct by Defendant violates the Anti-Cybersquatting Consumer

Protection Act (15 U.S.C. § 1125(d)).

Count Four - Preliminary and Permanent Injunctive Relief

38.

Trusted Counsel incorporates into Count Four, Paragraphs 1 through 37,

above.

39.

Trusted Counsel has been and continues to be damaged in a manner that

cannot be fully measured or compensated monetarily, and for which there is no

adequate remedy at law.

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40.

Defendant’s use of ENTRUSTED COUNSEL have damaged and will

continue to damage Trusted Counsel’s rights, reputation and the goodwill in

TRUSTED COUNSEL.

 

41.

Such irreparable harm will continue unless Defendant is forced by the Court

to stop using ENTRUSTED COUNSEL.

 
 

VIII. Jury Demand

 

42.

Trusted Counsel requests a trial by jury on all issues so triable.

IX.

Prayer for Relief

 

43.

Trusted Counsel respectfully requests the following relief:

  • a. damages in an amount to be proven at trial;

  • b. preliminary and permanent injunctions preventing Defendant, and all others in active concert or participation with Defendant, from making further infringing use of ENTRUSTED COUNSEL or any confusingly similar trademark;

  • c. an order directing Defendant transfer registration of the entrustedcounsel.com domain name to Trusted Counsel;

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  • d. an order that this is an exceptional case and award Trusted Counsel the costs it has incurred in this litigation, including attorney fees;

  • e. an award of pre- and post-judgment interest to Trusted Counsel; and

  • f. all other relief the Court deems just and proper.

Respectfully submitted this 20 th day of May, 2016.

LILENFELD PC

Case 1:16-cv-01629-TCB Document 1 Filed 05/20/16 Page 11 of 11 d. an order that this is

David M. Lilenfeld Georgia Bar # 452399 Buckhead Centre 2970 Peachtree Road N.W., Suite 530 Atlanta, Georgia 30305 Telephone: (404) 201-2520 Facsimile: (404) 393-9710 David@LilenfeldPC.com

Attorney for Plaintiff