Case 1:16-cv-01629-TCB Document 1 Filed 05/20/16 Page 1 of 11

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF GEORGIA
ATLANTA DIVISION
TRUSTED COUNSEL ASHLEY, LLC,

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Plaintiff,
v.
ENTRUSTED COUNSEL, LLC,
Defendant.

Case No.: ____________

____________________

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 Counsels services and others which are closely related to
Trusted Counsels 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 Defendants 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 Defendants 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 Counsels federal trademark registration.
VI.
a.

Factual Background

Trusted Counsels 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 Counsels 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:

Case 1:16-cv-01629-TCB Document 1 Filed 05/20/16 Page 5 of 11

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, Womens In-House Counsel

Leadership Institute and on that organizations website (wihcl.org)
(Exhibit B); and

d.

through

the

Atlanta

Volunteer

Lawyers

Foundation,

where

Defendants 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.

Defendants Uses Amount to Infringement

of Trusted Counsels Registration
19.

Certain of Defendants services are identical to Trusted Counsels services;

specifically, both Parties provide legal services.

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20.
Certain of Defendants other services, such as legal staffing, are closely
related to Trusted Counsels services.
21.
Making the Parties respective marks even more similar, some of
Defendants 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 Counsels 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
Defendants ongoing use of ENTRUSTED COUNSEL creates a likelihood of
confusion between it and TRUSTED COUNSEL and otherwise infringes Trusted
Counsels 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 Counsels Registration.
28.
Trusted Counsel requests a judicial declaration that Defendants use of
ENTRUSTED COUNSEL infringes Trusted Counsels 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 Counsels Registration became incontestable on April 6, 2012.
32.
Defendants use of ENTRUSTED COUNSEL creates a likelihood of
confusion between it and Trusted Counsels use of TRUSTED COUNSEL and
otherwise infringes Trusted Counsels Registration.
33.
Additionally, Defendants use of ENTRUSTED COUNSEL is likely to
deceptively or mistakenly cause others to believe that Defendants 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 illusion of an affiliation with Trusted
Counsel.
36.
Trusted Counsel has been damaged by Defendants 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.
Defendants use of ENTRUSTED COUNSEL have damaged and will
continue to damage Trusted Counsels 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

entrustedcounsel.com domain name to Trusted Counsel;

of

the

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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 20th day of May, 2016.

LILENFELD PC

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