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LEGO Takes Aim at Gun Company with Cease and Desist

Famous kids’ toy manufacturer Lego sent a cease and desist letter to gun company Culper Precision regarding its sale and marketing of Glock handguns.  Culper Precision offered a Glock handgun with an aftermarket kit to transform the outside of the firearm with Lego bricks (a little tidbit, the plural of Lego is not Legos).  Aside from what famous gun manufacturer Glock might have to say about its brand being used by Culper as a not so playful “Block19”, it was not a wise decision for Culper to adorn the outside of a Glock handgun with Lego bricks.  The use of the Lego bricks makes the handgun look like a child’s toy and associates a kids toy company with firearms. 

The term Lego derives from the Danish words that mean “play well”.  Lego is a Danish company.  I do not think Culper was playing well with others with this ill-conceived Lego kit.  The term Lego is a famous brand for Lego bricks commonly found in homes across the world, particularly when you are walking barefoot in your home. 

Lego likely has a claim of dilution by tarnishing under the Federal Trademark Dilution Act (FTDA) and/or the more commonly known Lanham Act.  Dilution of a brand occurs when someone uses a famous mark (brand) that blurs or tarnishes the mark.  Dilution differs from a typical trademark infringement claim as dilution does not hinge upon whether consumers would be confused.  Traditional trademark law was designed to protect consumers from confusion.  While dilution is designed to protect the famous brand from being diminished by properly identifying and distinguishing its good or services. 

The FTDA in 2006 clarified that a mark is “famous” if it is widely recognized by the general consuming public as a designation of the source of the goods or services of the mark’s owner, and it allows the court to consider all relevant factors when determining whether a mark is famous, including: (1) the duration, extent, and geographic reach of advertising and publicity of the mark; (2) the amount, volume, and geographic extent of sales of goods or services offered under the mark; (3) the extent of actual recognition of the mark; and (4) whether the mark was registered on the principal register.

Here, Lego is clearly a famous mark.  The false association of its Lego bricks on firearms would tarnish its brand and reputation for kid’s toys (including theme parks).  Culper would be best served looking at the age difficulty on the Lego box before it tries to connect Legos with firearms. 

For more information about dilution or other Intellectual Property issues, please contact Greg M. Popowitz, Esq.


213 East Sheridan Street, Suite 3

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Main: 954.929.1899

Fax: 954.922.6662


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On Your (Trade)mark. Get Set. Nooooo! Not Available

According to New York University School of Law professors, Barton Beebe and Jeanne Fromer, the world is running out of trademarks.

This, in their opinion, is due to the consumption and clogging of trademarks, which has forced the use of marks concerned to be inferior in strength.  In 2020, the number of applications for new trademarks increased approximately 200,000 from the previous year, 459,000 in 2019 to 659,000 in 2020. This one-third increase in new applications supports Beebe and Fromer’s opinion and is especially remarkable given the mediocre state of the U.S. economy in the wake of the pandemic. This increase in numbers also impacts whether a new applicant may obtain the mark they wanted or has to settle for second or third-runner up because the mark they truly wanted has already found an owner

This opinion is backed by the increasing surge in trademark applications over the years, with 2020’s applications increasing by one-third despite a pandemic that severely crumbled the U.S. economy, going from 459,000 in 2019 to 659,000..

The 2020 surge in applications can largely be attributed to two components. A vivacious U.S. economy filled with hope was the first component. Trademark applications are a useful economic indicator. The number of applications increases when companies feel optimistic about consumer desire for new goods and services and decrease when that optimism fades. The second component was the Chinese market. China-based applicants made up nearly two-thirds of the increase in applications from 2019. In 2020, China-based applicants made up one-fourth of the total applicants, a startling difference from the eleven percent that market represented in 2017.

A consequence of this increase in trademark applications is that the clearance process is becoming progressively more drawn-out and costly. Lawyers are forced to spend more time assessing the multiplying number of marks and face a more complex legal analysis than in years prior. After all the work, if a client’s choice in a mark proves unavailable then lawyers must begin the process all over again.

The USPTO has a free data search engine to help determine if a prior conflicting mark exists. However, many companies and law firms turn to commercial search firms to handle clearance searches since these firms are better equipped to find marks that could have any potential conflict with the chosen mark. These firms hire specially trained analysts to detect potential conflicts and more recently, incorporate artificial intelligence to lower costs and accelerate the process. But using AI presents some challenges: AI’s algorithms tend to miss the “play on words” and intentional misspellings that may still be considered confusingly similar to a trademark’s more traditional counterpart. These AI tools have also been employed to detect conflicts with visual logos. The tools used depend on image recognition to detect conflicts between desired logos and existing ones by locating and comparing shapes and characteristics resembling one another. But these tools are not yet reliable since a computer does not translate an image in the same manner as a human eye.

The clogging of trademarks is not as appalling as the number of applications in 2020 suggests. While there has been a surge of Chinese applications, the marks being sought are, for the most part, unappealing to U.S. applicants. Many marks are simply a random series of letters or unspeakable “coined terms” such as FCEDAUS. The USPTO has suggested that this surge in China-based applications is due to the Chinese government’s incentivization of U.S. applications, offering subsidies that often exceed the cost of filing. Many think that Chinese applicants file for financial gain alone. But this spike in China-based applications does make it difficult for the USPTO to plan their workload since submissions of applications are unpredictable.

In an article for the New York Times, John Herrman proposed that Amazon is the culprit behind many China-based applicants applying for these seemingly bogus marks. Herrman claimed that Chinese entities make up close to half of Amazon’s top U.S. sellers and noted that trademark registration was a prerequisite to utilize Amazon’s Brand Registry, generating motive for foreign vendors to apply. He also noted the online explosion of strange marks like NERTPOW, concluding that the intrinsic allure of a mark appeared immaterial to a China-based vendor’s triumph on Amazon. Also, embracing random, incoherent marks is a fast and effective way to gain U.S. registration because it reduces the likelihood that the mark is obstructed by a prior similar mark.

Numerous China-based applicants offering evidence of U.S. trademark use in commerce are undeniably fake, with one famous example being an application for INSTAMARKET retail stores using a photoshopped image of a Walmart as supporting evidence. Professors Beebe and Fromer found that falsified specimens made up about seventy percent of China-based applications in 2017, that the USPTO approved roughly sixty percent of those, and that close to forty percent ultimately registered. The pair determined that fourteen percent of all applications in 2017 were false and that this fact exacerbated the problems with trademark clogging. The USPTO subsequently established additional rigorous measures to uncover false claims of use.

Trademark’s issues with overcrowding and clogging is due in large part to past marks that are still registered but no longer in use. These marks, known as “deadwood,” block a new mark’s application for a similar mark despite the fact that the old one was abandoned. Fortunately, the U.S. has a “use it or lose it” system to prevent trademark owners from retaining rights ad infinitum. Trademark owners must maintenance their marks with the USPTO by filing proof of continued use of the mark by the sixth, tenth, and successive ten year anniversary of registration. However, a pilot audit program in 2012 uncovered that about fifty percent of audited registrations could not provide actual proof of their claims of use. This finding prompted the Office to create a permanent audit program in 2017, increasing the number of registrants audited and creating financial penalties for fixing errors made in maintenance filings. Despite these measures, audits continue to confirm that approximately fifty percent of applicants were not really using their marks.

The Trademark Modernization Act of 2020 gives mark owners more power to get rid of “deadwood” registrations as well as those prior registrations obtained fraudulently. Although not available until December 2021, the most powerful tool within this Act is the ability for ANYONE to challenge a registration on the basis of non-use. A party would be able to purse provided that the mark is registered for at least three years, on the basis that the mark has never been used in commerce for some or all of the identified goods and services. Additionally, re-examination proceedings will target registrants no older than five years old on the basis that the mark were not used for some or all of the identified goods as of specific important dates, particularly the filing date of an application asserting use in commerce. These new tools could facilitate the clearance of new trademarks, providing a quicker and more affordable method of determining that old marks are “deadwood,” removing them as barriers. These tools would only be helpful to those applicants that have more time versus those that need to select their new mark quickly since the proceedings could take some time.

(Then the article breaks down the 1000 most frequently used words in the English language as they relate to their use in trademarks and common words that are now being trademarked.)

In the past, the shortage of more traditional “.com” domain names also played a significant role in selecting a mark. But companies have found a way around that by coining new marks, combining words, and getting creative through various other methods. Thinking outside the box and influencing consumers to familiarize themselves with these new methods have opened the doors to what can be available as a mark. Instead of being clogged, such novel ideas will open up the doors for new trademarks.

This blog article was written by Assouline & Berlowe PA Law Clerk Eva Sarmiento, 3rd Year Law Student at Florida International University School of Law, and only edited by Assouline & Berlowe, P.A. attorneys.


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Dania Beach, Florida  33004

Main: 954.929.1899

Fax: 954.922.6662


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U.S. Department of Labor Issues Final Rule To Update FLSA’s Joint Employer Regulations

In addition to all the other labor and employment updates in the law of the last week, the issue of “joint employment” has gone through an official transformation this past week. 

The issue of Joint Employer arises frequently in Fair Labor Standards Act (FLSA) cases when employees seek to hold more than one “employer” liable for overtime and other wages claimed to be owed.  Oftentimes, the question of whether entities can be considered joint employers is uncertain and differs from court to court.  In an effort to clarify the matter, the Department of Labor (DOL) has adopted a four-factor balancing test to determine joint employer status that is focused on decision-making (did the alleged employer have the right to hire and fire the employee?), supervision (did the alleged employer substantially control the conditions of employee’s employment?), payment (did the alleged employer set the employee’s pay?) and record-keeping (did the alleged employer maintain employment records?).

As with all balancing tests, no one factor is more important than the other.  The questions becomes whether, on balance, the employee performed work that benefitted more than one employer, and additional facts relevant to this inquiry may also be considered.

This final rule quietly went into effect on March 16, 2020 but was understandably overshadowed by critical issues surrounding COVID-19. 

Important to note that this rule is only applicable to joint employer issues arising under the FLSA and not to other federal laws impacting employment such as Title VII of the Civil Rights Act.

More information about the new rule can be found at

Of course, feel free to contact me if you have any questions.

Ellen M. Leibovitch

Board Certified Labor & Employment Lawyer


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Boca Raton, Florida 33431

Main: 561-361-6566
Direct: 561-948-2479

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Intellectual Property, Labor & Employment Law,  Real Estate, International Dispute Resolution, Commercial Litigation, Corporate Law, Bankruptcy, Trusts & Estates, Probate and Guardianship

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FL SMALL BUSINESSES (100 employees or less) BRIDGE LOANS – Gov. DeSantis Jump Starts Emergency Short Term No Interest Loans

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COVID-19 and Florida’s Small Business Emergency Bridge Loan Program

Available until May 8, 2020 to small businesses established before March 9, 2020, and limited to only those businesses having between 2 to 100 employees and maintaining its principal place in Florida, businesses that have suffered economic loss can apply to the State of Florida for a one-year short-term, interest-free loan for working capital. The loans bridge the gap until sufficient profits from normalized business operations, payments from insurance claims, or federal disaster assistance are received. The Program has helped more than 4,750 small businesses statewide to receive more than $157.5 million in assistance

The loans are for up to $50,000; but in special cases, may be up to $100,000.

Although interest free in the first-year, any unpaid balance thereafter is subject to a 12% per annum interest rate; and any default is subject to normal collection processes.

Below is the official Press Release from Florida’s Department of Economic Opportunity

Governor Ron DeSantis Activates Emergency Bridge Loan Program for Small Businesses Impacted by COVID-19

Mar 16, 2020

Tallahassee, Fla. – Today, Governor Ron DeSantis activated the Florida Small Business Emergency Bridge Loan Program to support small businesses impacted by COVID-19. The bridge loan program, managed by the Florida Department of Economic Opportunity (DEO), will provide short-term, interest-free loans to small businesses that experienced economic injury from COVID-19. The application period opens tomorrow, March 17, 2020 and runs through May 8, 2020.

“As we mitigate against the spread of COVID-19, the health, safety and well-being of Floridians comes first,” said Governor DeSantis. “I understand the harm mitigation strategies will have on small businesses throughout our state. By activating the Florida Small Business Emergency Bridge Loan, we are providing the opportunity for Florida’s small businesses to receive cash immediately to ensure they can lessen the impacts felt as a result of COVID-19.”

DEO will administer the Florida Small Business Emergency Bridge Loan Program in partnership with the Florida SBDC Network and Florida First Capital Finance Corporation to provide cash flow to businesses economically impacted by COVID-19. The short-term, interest-free loans help bridge the gap between the time the economic impact occurred and when a business secures other financial resources, including payment of insurance claims or longer-term Small Business Administration (SBA) loans. Up to $50 million has been allocated for the program.

“Governor DeSantis has been a true leader in the fight to prevent the spread of COVID-19 and has prioritized the safety of all Floridians,” said Florida Department of Economic Opportunity Executive Director, Ken Lawson. “The Florida Small Business Emergency Bridge Loan will help Florida’s small businesses get through this unsettling time. We appreciate the Governor’s efforts to keep Florida’s small businesses top of mind and our partners at the Florida SBDC Network and Florida First Capital Finance Corporation to help them recover.”

Small business owners with two to 100 employees located in Florida affected by COVID-19 can apply for short-term loans up to $50,000. These loans are interest-free for up to one year and are designed to bridge the gap to either federal SBA loans or commercially available loans. DEO will work with every borrower to ensure that repayment of the loan isn’t an overwhelming burden. To be eligible, a business must have been established prior to March 9, 2020 and demonstrate economic impacts as a result of COVID-19.

“Mitigating the spread of COVID-19 in Florida must be our number one priority,” said Florida SBDC Network CEO, Mike Myhre. “The Florida SBDC Network stands ready to assist Governor DeSantis and the Florida Department of Economic Opportunity to help small businesses recover as a result of the impacts of COVID-19.”

“We are ready to assist the Governor and state of Florida to deliver this vital assistance to the small business community we serve, as we have 23 times since 1992,” said Florida First Capital Finance Corporation President and CEO, Todd Kocourek.

DEO is currently surveying businesses throughout the state of Florida who have been impacted by COVID-19. Businesses and non-profits can access the Business Damage Assessment survey at FloridaDisaster.BIZ Select “COVID-19” from the drop-down menu on the survey page. Response to the Business Damage Assessment survey is not an application for assistance. Businesses interested in the bridge loan program must fill out a bridge loan application.

For more information on the program, visit For questions regarding the Emergency Bridge Loan Program, contact the Florida Small Business Development Center Network at 866-737-7232 or email The phone line will be answered during regular business hours; all voice mails and emails will be responded to within 24 hours.

Details on the Loan Program were also set forth on the web page.

Details from the web page follow:

The Florida Small Business Emergency Bridge Loan Program is currently available to small business owners located in all Florida counties statewide that experienced economic damage as a result of COVID-19.

These short-term, interest-free working capital loans are intended to “bridge the gap” between the time a major catastrophe hits and when a business has secured longer term recovery resources, such as sufficient profits from a revived business, receipt of payments on insurance claims or federal disaster assistance.

The Florida Small Business Emergency Bridge Loan Program is not designed to be the primary source of assistance to affected small businesses, which is why eligibility is linked pursuit to other financial sources.  Note: Loans made under this program are short-term debt loans made by the state of Florida using public funds – they are not grants. Florida Small Business Emergency Bridge Loans require repayment by the approved applicant from longer term financial resources.

Loan Details
      • Designated Disaster Areas: All Florida counties statewide per Executive Order 20-52.
      • Qualified Applicant: Applications will be accepted by qualified for-profit, privately held small businesses that maintain a place of business in the state of Florida. All qualified applicants must have been established prior to March 9, 2020, and suffered economic injury as a result of the designated disaster. Qualified small business applicants must be an employer business with 2 to 100 employees.
      • Amount: Up to $50,000 per eligible small business.  Loans of up to $100,000 may be made in special cases as warranted by the need of the eligible small business.
      • Term: 1 year.
      • Limitation: Only one loan may be made per eligible business. All previous bridge loans received MUST be paid in full.
      • Interest Rate: Loans will be interest-free for the loan term (1 year). The Interest rate will be 12% per annum on the unpaid balance thereafter, until the loan balance is repaid in full.  Loan default is subject to a normal commercial collection process.
      • Application Period: Applications will be accepted by qualified Florida small businesses under this program through May 8, 2020, contingent on the availability of funds.
Get Started
  1. Review eligibility requirements and loan process.
  2. Download, complete and sign the application form.
  3. Gather required support documentation.
  4. To submit completed applications and required documents, send by mail or courier to: Florida SBDC Network Headquarters, C/O Florida Emergency Bridge Loan Process, 220 West Garden Street, Suite 301 Pensacola, Florida 32502.  Applicants may also submit applications and required documents via email to or by fax to (850) 696-2693.
  5. For assistance in completing the application, contact your local Florida Small Business Development Center (SBDC) office. To locate your local Florida SBDC visit or contact us toll-free (866) 737-7232
Contact Information

For questions regarding the Emergency Bridge Loan Program, please contact the Florida Small Business Development Center (SBDC) Network Headquarters. Email:  Phone toll-free: (866) 737-7232.

About the Emergency Bridge Loan Program
The Florida Small Business Emergency Bridge Loan Program was first activated following Hurricane Andrew in 1992. It has been activated 26 additional times following disasters and has helped more than 4,750 small businesses statewide to receive more than $157.5 million in assistance.
Carl H. Perdue, Esq.
Eric N. Assouline, Esq.
Miami – Ft. Lauderdale – Boca Raton
Main Office: Miami, Florida
Telephone: 305-567-5576

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STAY THE COURSE – Employers on Edge with Labor and Employment Related COVID-19 Concerns

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SOUTH FLORIDA – First and foremost, we at Assouline & Berlowe hope this note finds you and your family, friends, employees and others safe and well.   

We have been hearing from many of our clients and colleagues with questions about the impact of the coronavirus on their businesses – such as: allowing employees to work from home; what to do for those employees who cannot work from home; whether such employees can/should/must be paid for their absences; etc. The questions are wide-ranging and require advice that is a mix of the legal and the practical.

 As most of you may have heard, Congress is currently poised to pass federal legislation that the president is intent to sign into law that will address some of these employment-related issues, including paid leave to employees (along with a corresponding tax credit to the employer), expanded rights under the Family and Medical Leave Act and enhanced unemployment benefits. 

Once the law is enacted, we will follow up this blast with specific details (the House version of the bill – “The Families First Coronavirus Response Act” – has yet to have been voted on by the Senate).

In the meantime, you may have specific issues unique to your business that the law may not address, that may be addressed by other laws or that you may not even know are covered by any law.  Regardless of the nature of the inquiry, we are here to help as best we can, so please feel free to reach out.

Although these are uncertain times, if we each “stay the course” – be safe and smart and look out for ourselves and each other, we will get through this.    

In the meantime, you may have specific issues unique to your business that the law may not address, that may be addressed by other laws or that you may not even know are covered by any law.  Regardless of the nature of the inquiry, we are here to help as best we can, so please feel free to reach out.

Ellen M. Leibovitch, Board Certified Labor & Employment Lawyer

ASSOULINE & BERLOWE, P.A., 2300 Glades Road, East Tower – Suite 135, Boca Raton, Florida 33431 Main: 561-361-6566
Direct: 561-948-2479




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BANKRUPTCY LAW – Small Business Reorganization Act, New Interim Rules Released

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The United States Bankruptcy Court for the Southern District of Florida, through its Chief Judge, Laurel M. Isicoff, issued several updates tonight regarding the new Small Business Reorganization Act (SBRA), which goes into effect TOMORROW!

As stated by the Chief Judge: “The SBRA creates a new subchapter V of chapter 11 for the reorganization of small business debtors.  It does not repeal existing chapter 11 provisions regarding small business debtors, but instead creates an alternative procedure that small business debtors may elect to use.”

The Court further stated that: The Committee on Rules of Practice and Procedure of the Judicial Conference of the United States has promulgated Interim Rules and Form Amendments to the Federal Rules of Bankruptcy Procedure as a result of the passage of the Small Business Reorganization Act.

Among the numerous orders, is Administrative Order 2020-02 In re: Adoption of Interim SBRA Bankruptcy Rules.  This is an important set of rules that bankruptcy practitioners in the Southern District of Florida must follow.

Amended Official Forms 101, 201, 309E (renumbered 309E1), 309F (renumbered as 309F1), 314 (use Local Form LF-33), 315, and 425A, and new Official Forms 309E2, and 309F2 become effective February 19, 2020. For changes in the Bankruptcy Forms please visit:

Additional SBRA Resource:

A Guide to the Small Business Reorganization Act of 2019” by U.S. Bankruptcy Judge Paul W. Bonapfel Northern District of Georgia.

Eric N. Assouline, Esq.


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Spring Training – Sponsorship of Little League Baseball

Miami – Competition is at the heart of any lawyer. It is natural that advocating for a client will require a competitive advancement of a position. As part of a long tradition of supporting organizations in the community, Assouline & Berlowe has sponsored and continues to sponsor a little league baseball team. Here is the start of another season of the “boys of summer”.

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“Brand” New Trademark Rules Starting 2/15/2020

TMThe United States Patent and Trademark Office (USPTO) will not issue a federal trademark registration without the applicant first proving the mark (brand) being protected is actually being used in commerce.  Whether the proof is submitted with the initial application (for actual use applications) or later in the application process (for intent to use applications), the applicant will need to submit specimen of use for the  brand.  The types of evidence varies depending on the type of class associated with the brand.  For products, the specimen must be on the product itself, the packaging, or manuals.  While service based classes can use marketing materials, such a flyers, websites, and signage.

On February 15, 2020, the USPTO is updating the rules of specimen that are submitted to prove use in commerce.  The rules are becoming stricter.  For goods, the goods themselves must be included with the packaging, labels, or displays.  For apparel, hang tags or labels must actually be connected to the apparel, not merely next to the products.

Screen shots of websites showing the mark and detailing the services provided have been relatively standard as specimen over the years.  Under the new rules, any such screenshots will now require the URL and a date of the screen print.

The purpose behind the new rules is to prevent the submission of fraudulent specimen for marks that actually are not in use.  This is why digital images and mock ups of marketing materials are often rejected by the USPTO.

While the purpose of the rules is to help thwart fraud, one of the rule updates requires the inclusion of an applicant’s email address, not only the attorney’s email address.  This was optional in the past.  There is a known issue with companies mining the USPTO public records for applicant physical addresses and mailing official looking invoices that mislead applicants to pay fees that provide little to no value.

While the intent of the USPTO to require applicant email addresses is to help communication channels between the USPTO and applicants, the result will be greater access to applicants to those companies that mine USPTO databases trying to mislead applicants directly.  As a result of significant push back from practitioners and the public at large, the USPTO is presently looking at ways to “mask” the applicant’s email addresses from public viewing.

For any questions about the new trademark rules or to look into protecting your brands, contact Greg Popowitz.

Greg M. Popowitz, Esq.

Registered Patent Attorney / Partner

Intellectual Property Litigation


213 East Sheridan Street, Suite 3

Dania Beach, Florida  33004

Main: 954.929.1899

Fax: 954.922.6662


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MIAMI – Assouline & Berlowe, P.A., The Business Law Firm, is pleased to announce that today it is celebrating its 17th Anniversary.

Started on February 10, 2003, through humble beginnings, in a small subleased space in Coral Gables, Assouline & Berlowe has weathered the many business climate changes and challenges of the past two decades.

Assouline & Berlowe is proud of its contributions to its communities in the tri-county area, as part of its presence with offices in Miami, Ft. Lauderdale/Dania Beach, and Boca Raton.  Assouline & Berlowe regularly supports both its legal community and numerous charitable organizations alike.

Assouline & Berlowe is strategically positioned to continue its expansion as a strong player in South Florida’s international business environment.

To all those that we have worked with in the past and to those we hope to work with in the future, we say thank you.

Layout 1Circa. Feb.10,2003

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BANKRUPTCY – China Finally Starts to Embrace Bankruptcy, U.S. Style, to Cushion a Slowing Economy. Wall Street Journal.

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