Rubenstein v. Friedman Law - FL-Legal Trademark Complaint PDF

Case 1:16-cv-20792-KMW Document 1 Entered on FLSD Docket 03/03/2016 Page 1 of 23
UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF FLORIDA
CASE NO.: ____________________
RUBENSTEIN LAW, P.A.

Plaintiff,
v.
FRIEDMAN LAW ASSOCIATES, P.L.,
and PHILIP A. FRIEDMAN, an individual
Defendants
________________________________________/
COMPLAINT
Plaintiff, Rubenstein Law, P.A. (Rubenstein Law), for its Complaint against Friedman
Law Associates, P.L (Friedman Law) and Philip A. Friedman (Mr. Friedman) (collectively,
Defendants), alleges as follows and demands a trial by jury on all issues so triable:
Jurisdiction and Venue
1.
This action is for injunctive relief, damages and attorneys fees for trademark
infringement, false association, false designation of origin, unfair competition and cybersquatting
under Section 43 of the Lanham Act, 15 U.S.C. 1125, and for violations of Floridas
Registration and Protection of Trademarks Act, Fla. Stat. 495.001, et seq., and Floridas
Deceptive and Unfair Trade Practices Act (FDUTPA), Fla. Stat. 501.201, et seq.
2.
This action arises out of Defendants unlawful adoption and use of trademarks
and domain names in connection with their advertising and sale of legal services, which are
confusingly similar (and, in fact, nearly identical) to Plaintiffs 1-800-FL-LEGAL mark, with
full knowledge of Plaintiffs prior use and Florida registration of 1-800-FL-LEGAL as an
exclusive source indicator for Plaintiffs for high quality legal services.
3.
This Court has original subject matter jurisdiction over this action pursuant to
15 U.S.C. 1116, 1121, and 28 U.S.C. 1331, 1338, 1367.

4.
This Court has general personal jurisdiction over the Defendants because they are
citizens of Florida, and have conducted substantial and not isolated activity within Florida.
5.
Venue is proper under 28 U.S.C. 1391(b) and (c)(2) because a substantial part
of the events or omissions giving rise to the claims occurred in this district, and Defendants are
subject to personal jurisdiction in this District and, thus, are deemed to reside in this District.
The Parties
6.
Plaintiff Rubenstein Law is a Florida corporation with its principal place of
business in Miami-Dade County, Florida.

7.
Defendant Friedman Law is a professional limited liability company that has its
principal place of business in Tampa, Florida.

8.
Defendant Philip A. Friedman, is an individual and a Florida resident.
Mr. Friedman is the managing member of Friedman Law, and directed and/or materially
participated in the wrongful activities of Friedman Law.
Accordingly, Mr. Friedman and
Friedman Law are each jointly and severally liable for all wrongful acts alleged herein (either as
direct or contributory wrongdoers).
Plaintiffs Registered, Distinctive 1-800-FL-LEGAL Trademark
9.
Plaintiff owns all rights, title and interest in and to the trademark
1-800-FL-LEGAL (also referred to as Plaintiffs Mark) in connection with: attorney services,

legal services and litigation services (hereinafter, collectively referred to as, legal services).
10.
Plaintiffs 1-800-FL-LEGAL Mark is valid and subsisting under common law,
and is also registered with the State of Florida, as reflected by certificate of registration
no. P96000100099 (hereinafter, Plaintiffs Registration). A true and correct copy of Plaintiffs
Registration is attached hereto as Exhibit 1.
2
11.
Plaintiffs Mark is comprised of standard characters without any claim to a
particular font, style, size, or color.

12.
Plaintiff first used its 1-800-FL-LEGAL Mark in commerce at least as early as
October 2006.
13.
Plaintiffs Mark is a distinctive and exclusive indicator of source for Plaintiffs
high quality attorney, legal and litigation services.

14.
As a Florida registered trademark, Plaintiffs Mark is presumed distinctive, and
Plaintiff is presumed to have the exclusive right to use that mark in Florida. Nevertheless,
Plaintiffs Mark is either inherently distinctive, or has acquired distinctiveness among
consumers, in connection with Plaintiffs high quality attorney, legal and litigation services.
15.
Since at least as early as October 2006, Plaintiff has continuously used its
1-800-FL-LEGAL Mark in connection with the advertising, sale and performance of its high
quality legal services. Plaintiffs use and promotion of the 1-800-FL-LEGAL Mark predates
Defendants unauthorized use of their confusingly similar marks in commerce, by several years.
16.
Furthermore, Plaintiffs adoption, use, and promotion of the 1-800-FL-LEGAL
Mark predates the very existence of Friedman Law, which did not commence its existence until
January 1, 2010, according to its articles of organization on file with the State of Florida.
17.
Plaintiff has expended a tremendous amount of time, effort and money to promote
its 1-800-FL-LEGAL Mark and the legal services associated therewith, including but not limited
to by continuously and widely advertising and promoting the 1-800-FL-LEGAL Mark in
connection with legal services through, inter alia, television, billboards, radio, print media, and
Internet media (e.g., Plaintiffs website, social networking sites, and online video channels).
18.
Among
other
locations,
Plaintiffs
advertising
and
promotion
of
its
1-800-FL-LEGAL Mark has appeared on billboards and television channels in and/or serving the
Tampa, Florida market where Plaintiff maintains an additional office.
3
19.
Plaintiff has expended at least eight (8) million dollars on widely advertising and
promoting its 1-800-FL-LEGAL Mark in connection with legal services across various forms of
media.
20.
The following images are examples of Plaintiffs advertising, promotion and use
of the 1-800-FL-LEGAL Mark in commerce:

(a)
(b)
(c) You Tube video channel:
(d) Twitter social networking site:
(e) LinkedIn social networking site:
(f) Google+
(g) Facebook social networking site:
(h) Bus advertising:
Plaintiffs 1-800-FL-LEGAL brand of legal services have achieved substantial
21.
success in the legal services industry and, thus, the 1-800-FL-LEGAL Mark is widely recognized
as referring to Plaintiffs high quality legal services.
22.
Plaintiff
has
established
substantial
goodwill
associated
with
the
1-800-FL-LEGAL Mark, and that goodwill continues to grow with the success and demand for
Plaintiffs 1-800-FL-LEGAL brand of legal services among consumers.
Defendants have no right or interest in Plaintiffs 1-800-FL-LEGAL Mark and are
23.
not now, nor have they ever been, authorized to use the 1-800-FL-LEGAL Mark or otherwise
hold themselves out as the source of the 1-800-FL-LEGAL brand of legal services.
Plaintiffs Domain Name, Website, and Social Networking Presence
24.
In addition to the 1-800-FL-LEGAL Mark, Plaintiff is also the owner of the
following eight domain name registrations:

Domain Name
Date of Creation / Registration
Fllegal.com
July 9, 1997
1800fllegal.com
Nov. 1, 2006
1-800-fl-legal.com
Nov. 1, 2006
800fllegal.com
Feb 29, 2012
800-fl-legal.com
April 18, 2013
800-fllegal.com
April 18, 2013
1800-fllegal.com
April 18, 2013
1-800-fllegal.com
April 18, 2013
(the 800-FL-LEGAL Domains).
25.
Plaintiff has owned the 800-FL-LEGAL Domains since at least as early as the
dates shown in the table set forth above in Paragraph 24.

26.
Plaintiff directs all consumers Internet traffic for the 800-FL-LEGAL Domains to
its Internet website, which is accessible to consumers not only within Florida, but throughout the
United States and worldwide.
27.
Plaintiffs website prominently displays and advertises the 1-800-FL-LEGAL
Mark and the services offered in connection therewith, as shown in the following image:
Defendants Confusingly Similar Mark, Unfair Competition, and False Association

28.
Long after Plaintiffs first use in commerce of, and acquisition of rights in, the
1-800-FL-LEGAL Mark, the Defendants adopted and began using the confusingly similar (and
nearly identical) 888-FL-LEGAL mark in connection with their sale of legal services in
commerce.
29.
In addition to adopting the confusingly similar 888-FL-LEGAL mark, the
Defendants advertise and promote the 888-FL-LEGAL mark and legal services to consumers
through the same channels of trade and/or media used by Plaintiff, including but not limited to
Internet websites, Internet social networking sites (e.g., Google+ and Twitter), and billboards.
The following are examples of such advertising uses:
8
(a) Billboards:
(b) Defendants Internet website:
and
(c) Social media on the Internet:
(i)
Twitter:
(ii)
30.
Google+
Additionally, Defendants are displaying the infringing 888-FL-LEGAL mark on
an automobile along Florida roadways. That automobile displays the infringing 888-FL-LEGAL
mark as follows:
31.
Defendants undertook their use and promotion of the 888-FL-LEGAL mark in
connection with their legal services with knowledge of Plaintiffs prior use of the
1-800-FL-LEGAL Mark.
32.
Upon information and belief, Defendants undertook their use and promotion of
the 888-FL-LEGAL mark on their legal services with the intent to exploit the substantial
goodwill associated with Plaintiffs 1-800-FL-LEGAL Markespecially in light of the extensive
success and recognition achieved by Plaintiffs 1-800-FL-LEGAL brand of legal services, and
with the intent to create and financially exploit an association with Plaintiffs and its legal
services.
33.
In or about the end of June 2015, Mr. Friedman admitted to Plaintiffs principal,
Robert Rubenstein, during a telephone conversation that after seeing Rubenstein Laws
advertisements of the 1-800-FL-LEGAL Mark, he went out and bought the 888-FL-LEGAL
telephone number.
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34.
During that same conversation, Mr. Friedman asked Mr. Rubenstein if
Rubenstein Law would like to buy the 888-FL-LEGAL telephone number from him, but stating
that he would not let it go for chump change. Mr. Friedman stated that chump change for
his recently purchased competing 888-FL-LEGAL telephone number would be $ 250,000.
Alternatively, Defendants offered to sell their entire legal practice to Rubenstein Law.
35.
Plaintiff refused to pay the $250,000 Mr. Friedman demanded in exchange for the
888-FL-LEGAL telephone number, and refused to purchase Defendants legal practice.

36.
Thereafter, on or about September 26, 2015, as shown below, the homepage of
Friedman Laws Internet website did not display the infringing 888-FL-LEGAL mark.
Moreover, the phone number displayed in the upper right-hand corner of that homepage was 1800-984-9951, which does not equate to the infringing mark when the numbers are converted to
the corresponding letters using a telephones keypad.
37.
At some time between September 26, 2015 and January 12, 2016, Defendants
altered the homepage of Friedman Laws website to prominently feature the infringing
888-FL-LEGAL mark, as can be seen from the following image:
11
38.
The alteration to Friedman Laws Internet website referred to in Paragraph 37 was
made after Plaintiff had opened an office in Tampa.

39.
Defendants use of 888-FL-LEGAL in commerce in connection with legal
services has caused actual confusion and mistake, and is likely to continue to cause confusion or
mistake, among consumers as to the affiliation, connection or association of Defendants with
Plaintiff and/or as to the origin, sponsorship or approval Defendants legal services.
40.
Upon information and belief, Defendants knew that their use of the 888-FL-
LEGAL mark would directly injure Plaintiff by, among other things: (a) damaging the value of
Plaintiffs 1-800-FL-LEGAL Mark; (b) passing Defendants off as the source of Plaintiffs legal
services; (c) unfairly diverting sales of Plaintiffs legal services to Defendants legal services;
and/or (d) unfairly selling services to customers interested in Plaintiffs legal services.
[Balance of Page Intentionally Left Blank]
12
Defendants Cybersquatting through Bad Faith Domain Name Registration and Use
41.
In addition to adopting and using the confusingly similar 888-FL-LEGAL mark,
Mr. Friedman also recently registered the following nine domain names in bad faith:
42.
Domain Name
Registrant
800fllegalgroup.com
888fllegal.com
1800fllegalgroup.com
888-FL-Legal.com
866fllegalgroup.com
1866fllegal.com
1888fllegal.com
Philip Friedman
(no registrant organization)
Admin info: same
Philip Friedman
Admin info: same
Philip Friedman
Admin info: same
Philip Friedman
Admin info: same
Philip Friedman
Admin info: same
Philip Friedman
Admin info: same
Philip Friedman
Admin info: same
Philip Friedman
Admin info: same
Philip Friedman
Admin info: same
Date of Creation /
Registration
May 21, 2015
May 21, 2015
June 15, 2015
June 15, 2015
June 15, 2015
June 15, 2015
June 15, 2015
June 15, 2015
June 15, 2015
Previously, on April 22, 2008, Mr. Friedman had registered the domain name
fllegalgroup.com in bad faith.
13
43.
Hereinafter, Mr. Friedmans ten domain names listed in Paragraphs 41 and 42
shall be referred to, collectively, as the Infringing Domains.

44.
The Infringing Domains are identical or confusingly similar to Plaintiffs
45.
After Mr. Friedman registered the Infringing Domains, the Defendants
began using the Infringing Domains in bad faith to direct all consumers Internet traffic for
the Infringing Domains to Friedman Laws Internet website: http://fllegalgroup.com, which is
designed to advertise and promote Defendants legal services (the Infringing Website), and is
accessible to consumers both within Florida and throughout the United States and worldwide.
An image of the homepage of Defendants website is shown in Paragraph 29.
46.
Defendants use of the Infringing Domains is neither a bona fide noncommercial,
nor a fair use. Instead, Defendants use of the Infringing Domains is entirely commercial in
nature, as shown by the Infringing Website connected therewith.
47.
Plaintiffs 1-800-FL-LEGAL Mark was distinctive before Mr. Friedman
registered the Infringing Domains and before Friedman Law began using the Infringing
Domains.
48.
In registering and using the Infringing Domains, Defendants had a bad faith intent
to profit from Plaintiffs 1-800-FL-LEGAL Mark.

49.
Defendants continue to have a bad faith intent to profit from Plaintiffs
50.
Through registration and use of the Infringing Domains, and the Infringing
Website, the Defendants intend to divert consumers seeking Plaintiffs 1-800-FL-LEGAL brand
of legal services to Defendants Infringing Website, which is harmful to the goodwill represented
by Plaintiffs 1-800-FL-LEGAL Mark.
14
51.
Defendants registered and have used the Infringing Domains either for
commercial gain or with the intent to tarnish or disparage Plaintiffs 1-800-FL-LEGAL Mark, by
creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the
Defendants Infringing Website.
Actual Consumer Confusion Caused by Defendants Conduct
and Defendants Knowing Failure to Cease and Desist
52.
Defendants use and advertising of the confusingly similar 888-FL-LEGAL mark,
Infringing Domains, and Infringing Website associated therewith, have caused actual confusion
among consumers as to Friedman Laws association with Plaintiff.
53.
The actual confusion that has occurred indicates both forward confusion
(consumers mistakenly believing Defendants services are those of the Plaintiff) and reverse
confusion (consumers mistakenly believing Plaintiffs services are those of the Defendant).
54.
Mr. Friedman has stated that: the calls I have gotten were from my existing
clients who thought you were I. I have only received one call on the 888 line that I felt was
intended for you.
55.
Plaintiff has informed the Defendants of its rights in the 1-800-FL-LEGAL Mark,
and has demanded that the Defendants cease and desist their infringing conduct.
56.
However, despite Defendants knowledge of Plaintiffs registered rights in the
1-800-FL-LEGAL Mark, Defendants have not ceased their infringing activities.

57.
In light of Defendants willful misconduct and efforts to exploit Plaintiffs
1-800-FL-LEGAL Mark and consumers association of 1-800-FL-LEGAL with Plaintiffs legal

services, this is an exceptional case and warrants an award of attorneys fees as well as statutory
and exemplary/treble damages under, inter alia, 15 U.S.C. 1117(a) and Fla. Stat. 495.141.
58.
Unless restrained, Defendants unauthorized, unlawful use of Plaintiffs
1-800-FL-LEGAL Mark and the Infringing Domains will continue to cause the Plaintiff harm,
15
including irreparable harm for which there is no adequate remedy at law; therefore, Defendants
conduct should be enjoined.
59.
Plaintiff has performed all conditions necessary for the filing of this action that
have not been waived or excused.

60.
Plaintiff has retained the undersigned law firm to pursue the claims stated herein
against the defendant and, accordingly, is obligated to pay the undersigned law firm a reasonable
fee for its services.
FIRST CAUSE OF ACTION
Trademark Infringement under 15 U.S.C. 1125(a) against all Defendants
61.
Plaintiff restates and realleges all allegations in Paragraphs 1 through 60 as
though fully set forth in this Paragraph.

62.
Plaintiffs 1-800-FL-LEGAL Mark is a protectable, distinctive mark, which
serves as an exclusive source indicator for Plaintiffs high quality legal services.
63.
Defendants are not licensees or otherwise authorized to use Plaintiffs
1-800-FL-LEGAL Mark and have no right to hold themselves out as the source of Plaintiffs
1-800-FL-LEGAL brand of legal services through the use of the confusingly similar
888-FL-LEGAL mark, or any other confusingly similar mark.
64.
Defendants unauthorized use of Plaintiffs 1-800-FL-LEGAL Mark and/or of the
confusingly similar 888-FL-LEGAL mark in commerce in connection with the promotion and
sale of legal services is likely to cause confusion among consumersand, in fact, has caused
consumer confusionas to the source, sponsorship and/or authorization of the legal services
offered by Defendants.
65.
Defendants are engaging in the aforementioned conduct willfully and with full
knowledge and awareness of Plaintiffs prior and continuing trademark rights, and with the
purpose and intent of trading off the goodwill in Plaintiffs 1-800-FL-LEGAL Mark and
16
confusing the relevant consuming public into mistakenly believing that Defendants are the
source of Plaintiffs 1-800-FL-LEGAL brand of legal services or that Defendants legal services
are otherwise sponsored by, authorized by, or associated with Plaintiff.
66.
Defendants actions constitute trademark infringement in violation of Section 43
of the Lanham Act, 15 U.S.C. 1125(a), and have caused the Plaintiff injury, including without
limitation irreparable injury to the goodwill associated with Plaintiffs 1-800-FL-LEGAL Mark,
which will continue unless enjoined.
67.
Plaintiff is entitled to all the remedies available under the Lanham Act (e.g.,
15 U.S.C. 1117), including but not limited to: injunctive relief; compensatory damages to be
proven at trial; an accounting of Defendants profits from use of the confusingly similar
888-FL-LEGAL mark and disgorgement of same; reasonable attorneys fees; and exemplary,
treble damages due to the exceptional nature of this case.
SECOND CAUSE OF ACTION
Cybersquatting under 15 U.S.C. 1125(d) against all Defendants
68.

69.
Plaintiffs 1-800-FL-LEGAL Mark was distinctive before and at the time
Mr. Friedman registered the Infringing Domains

70.
Plaintiffs 1-800-FL-LEGAL Mark was also distinctive before and at the time
Defendants began using the Infringing Domains to direct consumers Internet traffic to the
Infringing Website in order to advertise and promote Defendants legal services.
71.
At the time of registering and commencing use of the Infringing Domains, the
Defendants knew that such domain names are comprised of or include Plaintiffs
72.
Mr. Friedman adopted and registered the Infringing Domains with the bad faith
intent to profit from Plaintiffs 1-800-FL-LEGAL Mark and to take commercial advantage of the
17
good reputation Plaintiff earned in the legal services industry under and in connection with its
73.
Friedman Law began using and is using the Infringing Domains with the bad faith
intent to profit from Plaintiffs 1-800-FL-LEGAL Mark and to take commercial advantage of the
good reputation Plaintiff earned in the legal services industry under and in connection with its
74.
Defendants actions constitute cybersquatting in violation of Section 43 of the
Lanham Act, 15 U.S.C. 1125(d) and have caused the Plaintiff damage and injury including, but
not limited to, irreparable injury to the goodwill associated with Plaintiffs 1-800-FL-LEGAL
Mark (for which it has no adequate remedy at law) and the expenditure of actual attorneys fees,
in an amount to be determined at the time of trial, which will continue unless enjoined.
75.
Plaintiff is entitled to all of the remedies available under the Lanham Act (e.g.,
15 U.S.C. 1117), including but not limited to: injunctive relief; transfer or cancellation of the
registrations for the Infringing Domains; statutory damages; compensatory damages to be proven
at trial; an accounting of Defendants profits and disgorgement of same; reasonable attorneys
fees; and exemplary, treble damages due to the exceptional nature of this case.
THIRD CAUSE OF ACTION
Unfair Competition, False Designation of Origin, and False Association
under 15 U.S.C. 1125 against all Defendants
76.

77.
Defendants use of the confusingly similar 888-FL-LEGAL mark in connection
with legal services, including but not limited to Defendants use of the 888-FL-LEGAL mark
and other confusingly similar designations in its Infringing Domains, on the Infringing Website,
on social networking sites, and in other media to advertise, promote and sell legal services is
misleading to consumers, and is likely to cause confusion or mistake, or to deceive, as to: (1) the
18
affiliation, connection, or association of Defendants with Plaintiff; (2) the origin, sponsorship, or
approval of the services or products Plaintiff sells under its 1-800-FL-LEGAL Mark; and/or
(3) the origin, sponsorship or approval of services or products Defendants sell under the
888-FL-LEGAL mark.
78.
By using the confusingly similar 888-FL-LEGAL mark to redirect or divert
consumers to Defendants 888-FL-LEGAL brand of legal services, consumers are likely to

believe (and, in fact, some have mistakenly believed) that Plaintiffs legal services originate with
Defendants and/or that Defendants or Defendants legal services are affiliated with Plaintiff, thus
causing confusion in the marketplace.
79.
By using the confusingly similar 888-FL-LEGAL mark in commerce in
connection with legal services, the Defendants are falsely conveying to consumersand are
likely to deceive consumers or potential consumers into believingthat Defendants are the
source of legal services, or that Defendants have granted Plaintiff the authority to represent itself
as 1-800-FL-LEGAL, or that Plaintiff has granted Defendants the authority to represent
Friedman Law as 888-FL-LEGAL, or that Defendants are otherwise associated with the Plaintiff.
80.
Defendants actions constitute unfair competition, false association, and false
designation of origin in violation of Section 43 of the Lanham Act, 15 U.S.C. 1125, and have
caused Plaintiff injury, including without limitation irreparable injury to the goodwill associated
with Plaintiffs 1-800-FL-LEGAL Mark, which will continue unless enjoined.
81.
Plaintiff is entitled to all the remedies available under the Lanham Act
(e.g., 15 U.S.C. 1117), including but not limited to: injunctive relief; compensatory damages to
be proven at trial; an accounting of Defendants profits and disgorgement of same; reasonable
attorneys fees; and exemplary, treble damages due to the exceptional nature of this case.
19
FOURTH CAUSE OF ACTION

Florida Trademark Infringement against all Defendants
under Fla. Stat. 495.001, et seq.
82.

83.
Plaintiffs 1-800-FL-LEGAL Mark is a registered, distinctive mark, which serves
as an exclusive source indicator for Plaintiffs high quality legal services.

84.
Defendants are not licensees or otherwise authorized to use Plaintiffs registered
1-800-FL-LEGAL Mark and have no right to hold themselves out as the source of Plaintiffs
1-800-FL-LEGAL brand of legal services through the use of the confusingly similar
888-FL-LEGAL mark, or any other confusingly similar mark.
85.
Defendants unauthorized use of Plaintiffs 1-800-FL-LEGAL Mark and/or of the
confusingly similar 888-FL-LEGAL mark in commerce in connection with the promotion and
sale of legal services is likely to cause confusion among consumersand, in fact, has caused
consumer confusionas to the source, sponsorship and/or authorization of the legal services
offered by Defendants.
86.
Defendants are engaging in the aforementioned conduct willfully and with full
knowledge and awareness of Plaintiffs prior and continuing trademark rights, and with the
purpose and intent of trading off the goodwill in Plaintiffs 1-800-FL-LEGAL Mark and
confusing the relevant consuming public into mistakenly believing that Defendants are the
source of Plaintiffs 1-800-FL-LEGAL brand of legal services or that Defendants legal services
are otherwise sponsored by, authorized by, or associated with Plaintiff.
87.
Defendants actions
constitute trademark infringement in
violation of
Fla. Stat. 495.001, et seq., and have caused the Plaintiff injury, including without limitation
irreparable injury to the goodwill associated with Plaintiffs 1-800-FL-LEGAL Mark, which will
continue unless enjoined.
20
88.
Plaintiff is entitled to all the remedies available under Floridas Registration and
Protection of Trademarks Act, including but not limited to: injunctive relief; compensatory
damages to be proven at trial; an accounting of Defendants profits from use of the confusingly
similar 888-FL-LEGAL mark and disgorgement of same; reasonable attorneys fees; and
exemplary, treble damages due to the exceptional nature of this case.
FIFTH CAUSE OF ACTION
Florida Deceptive and Unfair Trade Practices Act against all Defendants
Under Fla. Stat. 501.201, et seq.
89.

90.
Defendants acts, as described above, were performed by the Defendants in the
course of trade or commerce.

91.
Defendants acts, as described above, constitute unfair methods of competition,
unconscionable acts or practices, and/or unfair or deceptive acts or practices.

92.
Defendants acts, as described above, are likely to deceive consumers into
thinking that there is an affiliation between the Plaintiff and the Defendants, and/or that Plaintiff
endorses Defendants legal services and/or business practices.
93.
Defendants acts of unfair competition have caused, and will continue to cause,
Plaintiff irreparable harm for which Plaintiff has no adequate remedy at law. Therefore, Plaintiff
is entitled to injunctive relief.
94.
Defendants acts of unfair competition have caused Plaintiff to suffer losses in an
amount to be determined at trial. Plaintiff is entitled to actual damages, plus attorneys fees and
costs, pursuant to Fla. Stat. 501.2105 and 501.211.
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PRAYER FOR RELIEF

WHEREFORE, Plaintiff prays for an Order and Judgment as follows:
A.
That the Court issue preliminary and permanent injunctive relief against
Defendants, and that Defendants, their agents, representatives, servants, employees, attorneys,
successors and assigns, and all others in active concert or participation with Defendants, be
(individually and collectively) preliminarily and permanently enjoined and restrained from
making any further infringing use of Plaintiffs 1-800-FL-LEGAL Mark and Defendants
confusingly similar 888-FL-LEGAL mark, and any colorable imitation thereof on or in
connection with legal services;
B.
That the Court issue preliminary and permanent injunctive relief against
Defendants, and that Defendants, their agents, representatives, servants, employees, attorneys,
successors and assigns, and all others in active concert or participation with Defendants, be
(individually and collectively) preliminarily and permanently enjoined and restrained from
registering, maintaining and/or making any use of the Infringing Domains and any other domain
name that incorporates Plaintiffs 1-800-FL-LEGAL Mark or a colorable imitation of thereof;
C.
That the Court order, in accordance with 15 U.S.C. 1125(d), any domain name
registrar having control over registration of the Infringing Domains to cancel and/or transfer such
registrations to Plaintiff;
D.
That the Court order Defendants to pay Plaintiffs damages and disgorge
Defendants profits;
E.
That the Court order Defendants to pay Plaintiff exemplary damages pursuant to
15 U.S.C. 1117 and/or Fla. Stat. 495.141;

F.
That, in accordance with 15 U.S.C. 1117(d), Defendants be ordered to pay to
Plaintiff statutory damages between $1,000 and $100,000.00 per domain name;
G.
That the Court order Defendants to pay Plaintiff all reasonable attorneys fees
incurred as a result of Defendants infringement and unfair competition;

22
H.
That the Court order Defendants to reimburse Plaintiff the costs of this action;
I.
That the Court grant Plaintiff such other and further relief as is just and proper.
JURY DEMAND
Plaintiff demands a trial by jury on all issues and claims so triable.

Dated: March 3, 2016
Respectfully submitted,
FELDMAN GALE, P.A.
One Biscayne Tower, 30th Floor
2 South Biscayne Boulevard
Miami, Florida 33131
Telephone: (305) 358-5001
Facsimile: (305) 358-3309
By: /s _ Susan J. Latham__________
James A. Gale / Fla. Bar no. 371726
jgale@feldmangale.com
Susan J. Latham / Fla. Bar no. 687391
slatham@feldmangale.com
Attorneys for Plaintiff
23

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Case 1:16-cv-20792-KMW Document 1 Entered on FLSD Docket 03/03/2016 Page 1 of 23

UNITED STATES DISTRICT COURT

RUBENSTEIN LAW, P.A.

Case 1:16-cv-20792-KMW Document 1 Entered on FLSD Docket 03/03/2016 Page 2 of 23

15 U.S.C. 1116, 1121, and 28 U.S.C. 1331, 1338, 1367.

Plaintiff Rubenstein Law is a Florida corporation with its principal place of

business in Miami-Dade County, Florida.

principal place of business in Tampa, Florida.

Defendant Philip A. Friedman, is an individual and a Florida resident.

Accordingly, Mr. Friedman and

1-800-FL-LEGAL (also referred to as Plaintiffs Mark) in connection with: attorney services,

Plaintiffs 1-800-FL-LEGAL Mark is valid and subsisting under common law,

Case 1:16-cv-20792-KMW Document 1 Entered on FLSD Docket 03/03/2016 Page 3 of 23

Plaintiffs Mark is comprised of standard characters without any claim to a

particular font, style, size, or color.

Plaintiff first used its 1-800-FL-LEGAL Mark in commerce at least as early as

Plaintiffs Mark is a distinctive and exclusive indicator of source for Plaintiffs

high quality attorney, legal and litigation services.

As a Florida registered trademark, Plaintiffs Mark is presumed distinctive, and

Furthermore, Plaintiffs adoption, use, and promotion of the 1-800-FL-LEGAL

Case 1:16-cv-20792-KMW Document 1 Entered on FLSD Docket 03/03/2016 Page 4 of 23

of the 1-800-FL-LEGAL Mark in commerce:

Case 1:16-cv-20792-KMW Document 1 Entered on FLSD Docket 03/03/2016 Page 5 of 23

(c) You Tube video channel:

(d) Twitter social networking site:

(e) LinkedIn social networking site:

Case 1:16-cv-20792-KMW Document 1 Entered on FLSD Docket 03/03/2016 Page 6 of 23

(g) Facebook social networking site:

(h) Bus advertising:

Case 1:16-cv-20792-KMW Document 1 Entered on FLSD Docket 03/03/2016 Page 7 of 23

Plaintiffs 1-800-FL-LEGAL brand of legal services have achieved substantial

In addition to the 1-800-FL-LEGAL Mark, Plaintiff is also the owner of the

following eight domain name registrations:

Date of Creation / Registration

Feb 29, 2012

April 18, 2013

April 18, 2013

April 18, 2013

April 18, 2013

(the 800-FL-LEGAL Domains).

Case 1:16-cv-20792-KMW Document 1 Entered on FLSD Docket 03/03/2016 Page 8 of 23

dates shown in the table set forth above in Paragraph 24.

Plaintiffs website prominently displays and advertises the 1-800-FL-LEGAL

Defendants Confusingly Similar Mark, Unfair Competition, and False Association

In addition to adopting the confusingly similar 888-FL-LEGAL mark, the

Case 1:16-cv-20792-KMW Document 1 Entered on FLSD Docket 03/03/2016 Page 9 of 23

(b) Defendants Internet website:

Case 1:16-cv-20792-KMW Document 1 Entered on FLSD Docket 03/03/2016 Page 10 of 23

Additionally, Defendants are displaying the infringing 888-FL-LEGAL mark on

Defendants undertook their use and promotion of the 888-FL-LEGAL mark in

Case 1:16-cv-20792-KMW Document 1 Entered on FLSD Docket 03/03/2016 Page 11 of 23

During that same conversation, Mr. Friedman asked Mr. Rubenstein if

888-FL-LEGAL telephone number, and refused to purchase Defendants legal practice.

Thereafter, on or about September 26, 2015, as shown below, the homepage of

Case 1:16-cv-20792-KMW Document 1 Entered on FLSD Docket 03/03/2016 Page 12 of 23

The alteration to Friedman Laws Internet website referred to in Paragraph 37 was

made after Plaintiff had opened an office in Tampa.

Defendants use of 888-FL-LEGAL in commerce in connection with legal

[Balance of Page Intentionally Left Blank]

Case 1:16-cv-20792-KMW Document 1 Entered on FLSD Docket 03/03/2016 Page 13 of 23

In addition to adopting and using the confusingly similar 888-FL-LEGAL mark,

May 21, 2015