ESTTA Tracking number: ESTTA1467106
`Filing date: 10/02/2025
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Proceeding no. 91301445
`Party Defendant
`Shiner Law Group, P.A.
`Correspondence
`address
`KATHERINE KOENIG
`KOENIG IP WORKS, PLLC
`2208 MARINER DR.
`FORT LAUDERDALE, FL 33316
`UNITED STATES
`Primary email: mail@koenigipworks.com
`No phone number provided
`Submission Answer
`Filer's name Elissa A. Tisdahl
`Filer's email ptomail@weisbergiplaw.com, etisdahl@weisbergiplaw.com, jkamenet-
`sky@weisbergiplaw.com, carbelaez@weisbergiplaw.com
`Signature /Elissa A. Tisdahl/
`Date 10/02/2025
`Attachments Answer to Complaint and Affirmative Defenses.pdf(77323 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BROAD
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`DISMUKE LAW, PLLC )
` ) Opposition No. 91301445
`Opposer, )
` ) Mark: DAVE GOT ME…
`v. )
` ) Serial No. 98/668,434
`SHINER LAW GROUP, P.A. )
` )
`Applicant. )
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`APPLICANT SHINER LAW GROUP, P.A.’S ANSWER AND AFFI RMATIVE
`DEFENSES TO OPPOSER’S NOTICE OF OPPOSITION
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`Applicant, Shiner Law Group, P.A. (hereinafter “App licant”), by and through its
`undersigned counsel, hereby files its Answer and Affirmative Defenses to Opposer, Dismuke
`Law, PLLC’s (hereinafter “Opposer”) Notice for Oppo sition and states:
`ANSWER TO NOTICE OF OPPOSITION
`FACTUAL ALLEGATIONS
`1. Opposer is a professional limited liability company in the business of providing legal
`services, with a particular focus on the provision of legal services in the field of personal injury
`law in the Central Florida (“ Opposer’s Services”).
` RESPONSE: Applicant is without information to admit or deny these allegations
`about Opposer and therefore denies these allegations.
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`2. Opposer and its predecessors in interest have used the marks ASK DAVE and 1-
`800-ASK DAVE in the provision of Opposer’s Services continuously since at least June 2004.
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`RESPONSE: Applicant is without information to admit or deny these allegations
`about Opposer and therefore denies these allegations.
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`3. Opposer is the owner of U.S. Trademark Registration No. 5170604 for the mark ASK
`DAVE covering “legal services” in International Cla ss 45 (the “ ASK DAVE Mark”).
` RESPONSE: Admitted that Opposer claims to be the owner of U.S. Trademark
`Registration No. 5170604 (hereinafter the ‘’604 Reg istration”), otherwise denied.
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`4. Opposer is the owner of U.S. Trademark Registration No. 5170603 for the mark 1-
`800-ASK DAVE covering “legal services” in Internati onal Class 45 (the “ 1-800-ASK DAVE
`Mark”).
`RESPONSE: Admitted that Opposer claims to be the owner of U.S. Trademark
`Registration No. 5170603 (hereinafter the ‘’603 Reg istration”), otherwise denied.
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`5. The registrations for the ASK DAVE Mark and the 1-800-ASK DAVE Mark
`(collectively, the “ Opposer’s Marks”) are valid and subsisting. They are also incontes table
`under 15 U.S.C. § 1065. Attached as Exhibit A is a printout of the USPTO TSDR record
`showing the current status and title of the Opposer’s Marks.
`RESPONSE: Applicant note that no Exhibit A is attached. Further, Applicant is
`without information to admit or deny the remaining allegations about Opposer and
`therefore denies these allegations.
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`6. Opposer is the owner of valid and subsisting Florida State Trademark Registration No.
`T24000001051 for the mark ASK DAVE covering “legal services,” filed on September 9, 2024,
`and claiming a date of first use in Florida as June 14, 2004, and a date of first use anywhere of
`June 14, 2004.
`RESPONSE: Admitted that Opposer claims to be the owner of Florida State
`Trademark Registration No. T24000001051 (hereinafter the ‘’051 Florida Registration”),
`otherwise denied.
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` 7. Opposer is the owner of valid and subsisting Fl orida State Trademark Registration No.
`T24000001167 for the mark 1.800.ASK.DAVE for “legal services,” filed on October 9, 2024,
`and claiming a date of first use in Florida as June 14, 2004, and a date of first use anywhere of
`June 14, 2004.
`RESPONSE: Admitted that Opposer claims to be the owner of Florida State
`Trademark Registration No. T24000001167 (hereinafter the ‘’167 Florida Registration”),
`otherwise denied.
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`8. In addition to its registered marks, Opposer has established common law rights in the
`use of “DAVE” by itself as a source identifier for Opposer’s personal injury legal services in
`Central Florida. Through longstanding use and extensive advertising, consumers in Florida
`associate “DAVE” alone with Opposer’s provision of personal injury legal services.
` RESPONSE: These allegations are denied.
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`9. Opposer’s Marks are inherently distinctive.
`RESPONSE: These allegations are denied.
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`10. Opposer has prominently and extensively used Opposer’s Marks and has sold and
`continues to sell substantial quantities of legal services in the United States, particularly in
`Florida. Opposer has also spent substantial time, effort and money advertising and promoting the
`sale of its legal services under Opposer’s Marks, and Opposer and its legal services have
`received and continue to receive substantial unsolicited media attention.
`RESPONSE: These allegations are denied.
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`11. By virtue of Opposer's long and continuous use, sales, advertising, and promotion of
`Opposer’s Marks in the United States, and particularly Florida; the publicity and media attention
`accorded the mark; and the inherently distinctive nature of Opposer’s Marks, Opposer’s Marks
`have become well-known amongst potential consumers of personal injury law services in Central
`Florida.
`RESPONSE: These allegations are denied.
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`12. Despite Opposer's long prior common law and statutory rights in Opposer’s Marks,
`Shiner Law Group, P.A. (“ Applicant”), with at least constructive notice of Opposer's federal
`registrations, filed an application to register the mark DAVE GOT ME…on an intent-to-use
`basis for “Attorney services; Legal services” in In ternational Class 45, as set forth in the Notice
`of Publication.
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`RESPONSE: These allegations are denied.
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` 13. Applicant’s mark was published for opposition on March 11, 2025. Opposer filed for
`Extensions of Time to Oppose on March 11, 2025, and June 25, 2025, and was granted
`extensions of time to oppose until September 7, 2025.
`RESPONSE: These allegations are admitted.
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`14. Opposer's Marks have priority over Applicant’s mark because the filing date of the
`Opposer's Marks is August 15, 2016, and Opposer's date of first use of the Opposer’s Marks is at
`least as early as June 14, 2004, well prior to the July 26, 2024 filing date of Applicant's intent-to-
`use application for Applicant’s mark.
`RESPONSE: Applicant admits that the DAVE GOT ME… t rademark application
`was filed on July 26, 2024 and that based upon the records in the United States Patent and
`Trademark Office Opposer’s Marks ASK DAVE, the ‘604 Registration, and 1-800-ASK
`DAVE, the ‘603 Registration have a filing date of August 15, 2016, otherwise denied.
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`COUNT I – LIKELIHOOD OF CONFUSION
`Lanham Act, Section 2(d) (15 U.S.C. § 1052(d))
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`15. Opposer repeats and realleges each and every allegation set forth in the above
`paragraphs.
` RESPONSE: Applicant adopts and realleges its respon ses to paragraphs 1-14 as
`through set out verbatim herein.
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`16. Applicant’s mark is highly similar to Opposer’s Marks in sound, appearance, and
`commercial impression.
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`RESPONSE: These allegations are denied.
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`17. Applicant’s mark and Opposer’s Marks share the dominant element DAVE.
`Consumers seeking personal injury legal services are more likely to focus on the DAVE portion
`of each mark because it is the only distinctive element that identifies a specific source. By
`contrast, the accompanying words ASK and GOT ME… me rely suggest an action, not a source.
`As a result, both marks create the immediate impression of a personal connection with an
`individual named Dave who provides personal injury legal services.
`RESPONSE: These allegations are denied.
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`18. Opposer’s Marks suggest consumers ask Dave for help with personal injury legal
`matters, while Applicant’s mark suggests that Dave consumers have been thankful for Dave’s
`help with personal injury legal matters. Despite the difference in wording, both marks convey the
`same essential commercial message: Dave is the trusted attorney to turn to for help with personal
`injury legal matters.
`RESPONSE: These allegations are denied.
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`19. Opposer and Applicant both primarily provide and advertise personal injury legal
`services in the State of Florida. Consumers are therefore likely to encounter Opposer’s Marks
`and Applicant’s mark in the same geographic markets and through the same advertising
`channels, further heightening the likelihood of confusion between (i) the Florida-based DAVE
`personal injury law firm that they should ask for help; and (ii) the Florida-based DAVE personal
`injury law firm that gets them help.
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`RESPONSE: These allegations are denied.
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`20. The services set forth in Applicant’s application are identical to those covered by
`Opposer’s marks, as each includes “legal services”. In the actual marketplace, both Applicant
`and Opposer specialize in the identical subfield of personal injury legal services in the State of
`Florida.
`RESPONSE: These allegations are denied.
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`21. As a result, Applicant’s mark, if used in conjunction with the services set forth in its
`application, is likely to cause confusion, mistake, or deception within the meaning of 15 U.S.C. §
`1052(d).
`RESPONSE: These allegations are denied.
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`COUNT II – FALSE SUGGESTION OF CONNECTION WITH A PE RSON
`Lanham Act, Section 2(a) (15 U.S.C. § 1052(a))
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`22. Opposer repeats and realleges each and every allegation set forth in the above
`paragraphs.
` RESPONSE: Applicant adopts and realleges its respon ses to paragraphs 1-21 as
`through set out verbatim herein.
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`23. Applicant’s mark is the same as, or a close app roximation of, Opposer’s name and
`identity. Opposer’s Marks, Florida state registered trademarks, and common-law rights all
`prominently feature the name DAVE, and consumers in Opposer’s market identify DAVE as
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`Opposer in connection with personal injury legal services.
`RESPONSE: These allegations are denied.
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`24. When used in connection with personal injury legal services in the geographic
`markets of Opposer, Applicant’s mark would be recognized as pointing uniquely and
`unmistakably to Opposer.
`RESPONSE: These allegations are denied.
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`25. In the legal services industry, firms are typically identified by surnames or initials,
`not by an informal diminutive first name. Opposer’s longstanding and highly visible use of
`DAVE as a source identifier, including through Opposer’s Marks and extensive advertising of
`DAVE, has conditioned consumers to associate DAVE alone with Opposer. Accordingly,
`consumers encountering Applicant’s mark are likely to assume it refers to the same DAVE
`identified in Opposer’s Marks and common law rights.
`RESPONSE: These allegations are denied.
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`26. Opposer is not connected with Applicant or any services performed or to-be-
`performed by Applicant under Applicant’s mark, and Opposer has not sponsored, endorsed, or
`authorized Applicant’s use of DAVE in connection wi th personal injury legal services.
`RESPONSE: These allegations are admitted.
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`27. The fame or reputation of Opposer and Opposer’s Marks is such that, when
`Applicant’s mark is used in connection with personal injury legal services in Opposer’s
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`geographic markets, a connection with Opposer would be presumed within the meaning of 15
`U.S.C. § 1052(a).
`RESPONSE: These allegations are denied.
`28. Accordingly, registration of Applicant’s mark s hould be refused under 15 U.S.C. §
`1052(a) on the ground that it falsely suggests a connection with Opposer.
`RESPONSE: These allegations are denied.
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`29. By reason of the foregoing, Opposer will be irreparably damaged by the registration
`of Applicant’s mark, and Applicant is not entitled to the registration of Applicant’s mark
`pursuant to the Trademark Act.
`RESPONSE: These allegations are denied.
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`DENIAL OF ALL ALLEGATIONS NOT ADMITTED
` Applicant denies that Registrant is entitled to an y of the relief requested in its
`WHEREFORE clause. Any allegations contained in this Notice of Opposition not specifically
`admitted are hereby denied.
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`AFFIRMATIVE DEFENSES
`First Affirmative Defense: Unclean Hands
` Registrant’s claims for relief are barred, in whol e or in part, by the doctrine of unclean
`hands, including without limitation Registrant’s co nduct before the USPTO in connection with
`U.S. Trademark Registration Nos. 5170604 and 5170603. There are numerous other individuals
`that are involved in the personal injury legal community and have long been using the term
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`“DAVE” in association with their personal injury le gal services. A brief online search reveals
`numerous other usages of the term DAVE in association with legal services including DAVE
`brand personal injury services at https://www.demanddave.com/attorneys/, the Law
`Offices David M. Brandwein, P.A. uses “(877) DAVE L AW” as part of their personal
`injury branded legal services at https://877davelaw.com/personal-injury, and the Law Offices of
`Tragos, Sartes & Tragos has the MEET DAVID branded personal injury legal services on their
`website at https://www.tragoslaw.com/our-attorneys/daveneiser/.
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`Second Affirmative Defense: Abandonment and Failure to Police
`Registrant’s claims are barred, in whole or in part, by the doctrines of abandonment and
`failure to police trademarks. For many years, Registrant did not police or enforce its purportedly
`exclusive rights to the ASK DAVE, the 1-800-ASK DAVE, and the 1.800.ASK.DAVE
`trademarks, which have allowed the public to use the marks in association with legal services.
`There are other uses of trademarks in association with legal services that include the term DAVE
`in association with legal services. A brief online search reveals numerous other uses of the term
`DAVE in association with legal services including DAVE brand personal injury services at
`https://www.demanddave.com/attorneys/, the Law Offices David M. Brandwein, P.A. uses
`“(877) DAVE LAW” as part of their personal injury b randed legal services at
`https://877davelaw.com/personal-injury, and the Law Offices of Tragos, Sartes & Tragos has the
`MEET DAVID branded personal injury legal services on their website at
`https://www.tragoslaw.com/our-attorneys/daveneiser/. Consumers in the market view the
`entirety of the trademark in identifying the source of the legal services that use a trademark with
`the term DAVE.
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`Third Affirmative Defense: Waiver/Acquiescence
` The Registrant’s claims for relief are barred, in whole or in part, by the doctrines of
`Waiver and Acquiescence. There are other long time uses of trademarks in association with
`legal services that include the term DAVE in association with legal services. A brief online
`search reveals numerous other uses of the term DAVE in association with legal services
`including DAVE brand personal injury services at https://www.demanddave.com/attorneys/, the
`Law Offices David M. Brandwein, P.A. uses “(877) DA VE LAW” as part of their personal
`injury branded legal services at https://877davelaw.com/personal-injury, and the Law Offices of
`Tragos, Sartes & Tragos has the MEET DAVID branded personal injury legal services on their
`website at https://www.tragoslaw.com/our-attorneys/daveneiser/. Consumers in the market view
`the entirety of the trademark in identifying the source of the legal services that use a trademark
`with the term DAVE.
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`Fourth Affirmative Defense: Estoppel
` The Registrant’s claims for relief are barred, in whole or in part, by the doctrine of
`estoppel. There are other long time uses of trademarks in association with legal services that use
`the term DAVE in association with legal services. A brief online search reveals numerous other
`uses of the term DAVE in association with legal services including DAVE brand personal injury
`services at https://www.demanddave.com/attorneys/, the Law Offices David M. Brandwein, P.A.
`uses “(877) DAVE LAW” as part of their personal inj ury branded legal services at
`https://877davelaw.com/personal-injury, and the Law Offices of Tragos, Sartes & Tragos has the
`MEET DAVID branded personal injury legal services on their website at
`https://www.tragoslaw.com/our-attorneys/daveneiser/. Consumers in the market view the
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`entirety of the trademark in identifying the source of the legal services that use a trademark with
`the term DAVE.
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`Fifth Affirmative Defense: Failure to State a Claim, Made As to All Counts
` Registrant’s claims fail, in whole or in part, bec ause of the Notice of Opposition, and
`each and every claim stated therein fails to state a claim upon which relief can be granted.
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`Sixth Affirmative Defense: No Likelihood of Confusion, Made as to Count I
` Registrant’s claims fail, in whole or in part, bec ause there is no likelihood of confusion,
`mistake, or deception between Applicant’s DAVE GOT ME… trademark, on the one hand, and
`the marks of Opposer on the other hand.
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`Seventh Affirmative Defense: No False Suggestion or Connection with a Person, Made as to
`Count II
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`Registrant’s claims fail, in whole or in part, because there is no false suggestion or
`connection with a person between Applicant’s DAVE GOT ME… trademark, on the one hand,
`and the marks of Opposer on the other hand.
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`Eighth Affirmative Defense, Naked Licensing
` Registrant’s claims fail, in whole or in part, bec ause Registrant has abandoned its
`allegedly acquired common law marks due to Registrant’s failure to properly police its rights
`various trademarks including the ASK DAVE, the 1-800-ASK DAVE, and the
`1.800.ASK.DAVE trademarks.
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`ADDITIONAL DEFENSES
` Applicant reserves the right to supplement or amen d this Answer, including but not
`limited to the addition of further affirmative defenses, based upon further investigation and
`discovery in this action.
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` WHEREFORE, Applicant respectfully requests that th e Notice of Opposition be
`dismissed and that all of the relief requested by Opposer by denied.
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` Respectfully Submitted,
`Dated: October 2, 2025 /s/Elissa A. Tisdahl/
`Elissa A. Tisdahl, Esq.
`Florida Bar No. 85521
`etisdahl@weisbergiplaw.com
`Jeffrey Kamenetsky, Esq.
`Florida Bar No. 114571
`jkamenetsky@weisbergiplaw.com
` Weisberg I.P. Law, P.A.
` 1232 N. University Drive
` Plantation, FL 33322
` Telephone: 954-828-1488
` Facsimile: 954-828-9122
` Email:
`ptomail@weisbergiplaw.com
` Attorneys for Applicant
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`CERTIFICATE OF SERVICE
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`I hereby certify that on October 2, 2025, a true and correct copy of the foregoing
`Applicant Shiner Law Group, P.A.’s Answer and Affir mative Defenses to Opposer’s Notice of
`Opposition is being filed electronically with the Trademark Trial and Appeal Board via ESTAA
`on October 2, 2025 and that an additional electronic copy is being served on Applicant’s
`Attorney by electronic mail as follows:
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`Erica Allen
`DiAngelo Law
`1112 Channelside Drive, Suite 3
`Tampa, FL 33602
`Telephone: (813) 551-2484
`erica@diangelolaw.com
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`/s/ Monica Rodriguez
`Monica Rodriguez
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`1546198
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