Lawsuit, LegalForce Trademarkia v. LegalZoom, Inc. (Third Amended Complaint)

RAJ V.
ABHYANKER, California SBN 233284

Email: raj@legalforcelaw.com
WENSHENG MA, California SBN 299961
Email: vincent@legalforcelaw.com
LEGALFORCE RAPC WORLDWIDE, P.C.

1580 W. El Camino Real, Suite 10
Mountain View, CA 94040
Telephone: (650) 965-8731
Facsimile: (650) 989-2131
Attorneys for Plaintiff,

LegalForce, Inc.
UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
LEGALFORCE, INC., Case No. 3:17-cv-07194-MMC
Plaintiff, THIRD AMENDED COMPLAINT FOR:
v. 1. DECLARATORY JUDGMENT, 28
U.S.C. § 2201;
LEGALZOOM.COM, INC., 2. TRADEMARK INFRINGEMENT, 15
U.S.C. § 1114;
3. TRADEMARK INFRINGEMENT,
Defendant. FALSE DESIGNATION OF ORIGIN,
AND UNFAIR COMPETITION, 15
U.S.C. § 1125(a);
4. TRADEMARK DILUTION, 15 U.S.C. §
1125(c);
5. CYBERPIRACY, 15 U.S.C. § 1125(d);
6. CALIFORNIA UNFAIR COMPETITION
IN VIOLATION, CAL. BUS. & PROF.
CODE § 17200 ET SEQ;
7. TRADEMARK INFRINGEMENT,
CALIFORNIA COMMON LAW;
8. UNFAIR COMPETITION,
CALIFORNIA COMMON LAW; and
9. CALIFORNIA TRADEMARK
DILUTION, CAL. BUS. & PROF.
CODE § 14247.
JURY TRIAL DEMANDED
1
THIRD AMENDED COMPLAINT
CASE NO.: 3:17-CV-07194-MMC
1. Plaintiff LegalForce, Inc. (“Trademarkia”) alleges as follows upon actual
knowledge with respect to themselves and their own acts, and upon information and
belief as to all other matters.
NATURE OF ACTION
2. Trademarkia is a market leader in the field of trademark search solutions,
trademark monitoring services, general legal information, and domain name
registration services. Trademarkia provides these services online at set prices, making
them readily available and affordable to small businesses and general consumers
across the United States. Since introducing its website in September 2009,
Trademarkia has grown to become the leading, nationally recognized trademark
website for small businesses and consumers.
3. Trademarkia is the owner of three United States trademark and service mark
registrations and common law rights for at least three TRADEMARKIA formative marks
(collectively, the “TRADEMARKIA marks”):
Mark Reg. No. Ser. No. Goods/Services

Reg. Date Filing Date
Trademarkia 3965290 85126556 Advertising,

May 24, 2011 September 10, marketing and
Decl. 2010 promotion services.
Incontestable. (35, 42)
LegalForce 4227650 85483252 Legal services,

October 16, November 30, 2011 namely, law firm
2012 services
specializing in
administrative,
transactional,
litigation, civil and
2
criminal matters;
legal document
preparation and
research services
for attorneys;
providing general
information in the
field of legal
services via a
global computer
network. (45)
LegalForce Common law November 30, 2011 Website

Trademarkia rights till date Trademarkia owned
by LegalForce.
4. As a result of Trademarkia’s exclusive, extensive, continuous and nationwide

use of the TRADEMARKIA marks, the TRADEMARKIA marks have come to signify the
leading provider of online trademark search and watch services for small businesses
and consumers and have achieved such widespread public recognition that the use of
the suffix “markia” anywhere in all industries across the United States is now
associated with Trademarkia.
5. As an industry leader, licensees of the Trademarkia platform have expended
well over ten million dollars promoting the need for trademark search services,
educating and raising awareness among consumers, and advertising and promoting
the TRADEMARKIA marks.
6. In order to build and maintain its status as the leading nationally-recognized
brand, Trademarkia has promoted the TRADEMARKIA marks through advertising
3
across the media of video, radio, and the Internet.
7. This action is necessitated by the fact that Defendant LegalZoom.com, Inc.
(“Defendant” or “LegalZoom”) is seeking to trade on the TRADEMARKIA marks’ fame
and goodwill by registering and using the domain LEGALZOOMTRADEMARKIA.COM
to advertise trademark search and watch services over the Internet.
8. Trademarkia often uses the phrase “LegalForce Trademarkia” combined
together and has used this phrase together in emails and on the web pages of
Trademarkia.com every day continuously since 2012. In addition, Trademarkia has
continually owned the domain LegalForceTrademarkia.com since 2013 and has
redirected traffic from this domain to www.trademarkia.com. Further, the domain
LegalForce.com is owned by Trademarkia and itself redirects to www.trademarkia.com.
9. On information and belief, Defendant consciously and willfully adopted the
LEGALZOOMTRADEMARKIA.COM domain, which is confusingly similar to the
TRADEMARKIA marks, in a deliberate attempt to capitalize on the goodwill associated
with the TRADEMARKIA marks. By offering similar services over the same channels of
commerce to the same group of customers under confusingly similar marks, Defendant
is intentionally attempting to capitalize on the hard-earned fame and reputation of the
TRADEMARKIA marks. Defendant’s actions are willful and unlawful, are calculated to
deceive consumers, and will irreparably harm the valuable goodwill Trademarkia has
built up over almost the past decade as a result of hard work and considerable
investment of time and money.
10. In other words, LegalZoom knowingly intends to mislead consumers into
thinking they are going to Trademarkia.com when they enter
LegalZoomTrademarkia.com (confusingly similar to LegalForceTrademarkia.com and
“LegalForce Trademarkia”), or that LegalZoom and Trademarkia are affiliated. By these
acts LegalZoom intentionally trades on Trademarkia’s fame and goodwill in defiance of
the law.
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11. Accordingly, Defendant must be ordered to stop its infringing activities, to pay
damages to Trademarkia in an amount to be determined at trial, and to disgorge any
profits it has made as a result of its willful and bad faith infringement of the
TRADEMARKIA marks.
12. Both Trademarkia and LegalZoom are non-attorney C corporations having
principal places of business in California. They compete to provide small businesses
with affordable access to trademark watch and monitoring services of registered U.S.
trademarks. These services are utilized by customers who are actively policing their
existing trademarks. Such customers are also likely to file new U.S. trademark
applications using the assistance of trademark filing service providers. Trademarkia
does not provide trademark filing services because it believes that such services
inherently and necessarily involve the unauthorized practice of law (“UPL”) based on
the United States Patent and Trademark Office (“USPTO”)’s own definition of the
practice of law. LegalZoom, on the other hand, provides non-attorney trademark filing
services1 which Trademarkia believes to be unlawful and constituting UPL. LegalZoom
bundles its unlawful trademark filing service with its trademark monitoring service and
unfairly competes with Trademarkia.
13. Both Trademarkia and LegalZoom use technology and innovation to provide
non-attorney trademark watch and monitoring services for hundreds of dollars instead
of the thousands of dollars that traditional law firms charge. They are the two biggest
competitors for non-attorney trademark watch and monitoring services for small
businesses.
14. But while Trademarkia has innovated within the existing regulatory framework
by (1) building legal automation and docketing technology; (2) refusing to engage in the
unauthorized practice of law, LegalZoom has unfairly increased its lifetime revenue per
trademark watch customer by gaining revenue from bundled trademark watch services
provided by unlawful means; and (3) building a revenue model based on automated
1
LegalZoom
also has an independent attorney network trademark service, which is of
no concern here.
5
trademark watch and monitoring services rather than filings.2
15. By bundling an unlawful service with trademark watch services, LegalZoom is
able to earn more revenue from trademark watch services than Trademarkia.
Customers who purchase trademark watch services have high likelihood to file new
trademarks through the same service provider. In addition, after new trademarks are
filed, customers have high likelihood to purchase additional trademark watch services
through the same service provider to monitor their newly-filed trademarks. Through this
bundling scheme, LegalZoom is able to snowball its revenue to unfairly compete with
Trademarkia.
16. In addition, LegalZoom’s advertisements for trademark watch and monitoring
services deceive consumers because, when a consumer clicks on LegalZoom’s
Google advertisement for trademark watch and monitoring services, the consumer is
misdirected to the landing pages offering its unlawfully-provided trademark application
filing services. Often times, customers choose to purchase LegalZoom’s trademark
watch service instead of Trademarkia’s because LegalZoom bundles the watch service
with trademark filing services. Not only does this allow LegalZoom to unfairly sell more
trademark watch services, but also allow LegalZoom to spend more on advertising to
acquire trademark watch customers using the illegally-gained profits from its unlawful
trademark filing services.
17. Trademark watch and monitoring services are of material importance to
Trademarkia. Trademarkia has offered the services continuously for nearly a decade
and has spent large amount of money promoting and building its trademark watch
services.
18. As a direct result of LegalZoom’s conduct, Trademarkia suffered lost revenue
and market share, reduced asset value and increased advertising costs. Specifically,
Trademarkia’s independent revenue for trademark watch and monitoring services has
2
Trademarkia does not make any revenue from trademark filing services offered by
law firm licensees and advertisers on the Trademarkia.com website including
LegalForce RAPC Worldwide P.C.
6
dropped from the high of approximately $1,545,775.00 in 2012 when it was growing at
a compounded annual growth rate of over 30%, down to just $455,016.00 in 2017 -- a
precipitous 70% decline in revenue over a six-year period.
ABBREVIATED BACKGROUND
19. Trademarkia and LegalZoom are not strangers. First in 2011, and continuing for
a year, LegalZoom actively pursued an acquisition, investment, or partnership with
Trademarkia.3 Moreover, LegalZoom’s CEO actively courted Trademarkia, visiting the
company’s offices in Mountain View California and inviting managers of Trademarkia to
LegalZoom headquarters in Glendale California. During these discussions and in the
years afterward, LegalZoom falsely represented itself to Trademarkia as a self-help
legal website that offered no legal advice other than through independent attorneys
and independent law firms. Only in the past year has Trademarkia learned that these
representations were patently false, and LegalZoom has employed aggressive and
illegal methods to gain an unfair advantage over Trademarkia by bundling illegal
trademark filing services offered by internal LegalZoom non-lawyers with automated
trademark watch services offered by both Trademarkia and LegalZoom.
20. During the acquisition talks, on November 8, 2011, Trademarkia shared financial
summaries of its business plan with LegalZoom under an executed non-disclosure
agreement. A week later, on November 15, 2011, Trademarkia provided user interface
mockups to LegalZoom senior executives via email demonstrating what the
Trademarkia website might look like if it were rebranded as “LegalZoom Trademarkia.”
The email was sent to numerous members of LegalZoom’s senior leadership including
CEO John Suh, CFO Fred Krupica, General Counsel Chas Rampenthal, VP of
Attorney Services Carter Gaffney, VP of Operations Adam Thomas, co-founder Brian
3
By
way of example, LegalZoom’s CEO wrote to Trademarkia’s CEO on November 7,
2011 “But to be clear, we are exploring a partnership up to and including acquisition.”
In addition, that same day, LegalZoom CFO Fred Krupica wrote “The LZ team is
excited to meet and discuss the opportunities between our companies” and “We trust
that things go well tomorrow and that both Raj and John decide to take it to the next
level at which we would discuss terms, price, etc.”
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Liu and others. Along with the user interface designs emailed as attachments, Raj
Abhyanker, CEO of Trademarkia wrote that day to LegalZoom’s senior management:
“Imagine.. see attached. 18 million unique visitors and more than 36
million page views a year seeing the Legalzoom brand this way.
Trademarkia now drives more than 1.5 million unique visitors and 3
million page views. While our traffic is mostly organic, it is not diluted
like Docstoc. Mostly businesses and entrepreneurs click on
Trademarkia pages, as they are interested in a brands, trademarks,
and/or products. Our organic audience is mostly small businesses
that need a lot of the services that Legalzoom offers. Also, with this,
even more than 50% of Americans will know the Legalzoom brand very
soon! In addition, the branding should pay for itself through increased
$ sales. If you check Alexa, Trademarkia traffic today reached 6,315
(8,700 overall worldwide and 3100 in the U.S.). By branding
LegalZoom on Trademarkia, the Legalzoom brand would be seen on
effectively twice as many pages as our traffic rankings are virtually
equal now according to Alexa. Trademarkia continues to grow very
fast, and our traffic now dwarfs Rocketlawyer, Logoworks, and we're a
little bigger than even Justia etc. We expect Trademarkia site traffic
to double by this time next year (many cool features in our pipeline!).”
21. A couple of weeks later, Trademarkia and LegalZoom broke off acquisition and
partnership negotiations on December 11, 2011.
22. Less than six months later, on or about June 8, 2012, LegalZoom purchased
the abandoned domain name LegalZoomTrademarkia.com but did not use it. A couple
of years later, on or about April 21, 2014, LegalZoom began diverting traffic from
LegalZoomTrademarkia.com to its website LegalZoom.com. To hide its conduct, ten
months later on or about February 28, 2015, LegalZoom implemented GoDaddy’s
WHOIS privacy guard service to hide its ownership of this domain from public view by
paying a separate fee to a company called DomainsByProxy LLC. Only after being
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caught in April 2018 did LegalZoom stop diverting web traffic from
LegalZoomTrademarkia.com to LegalZoom.com and hide its identity as an owner
through privacy guard.4
23. It should be noted that there are dozens of domains owned by LegalZoom for
which LegalZoom keeps its identity for public view such as “legalzoom.com” and
“legalzoom.cm”). However, LegalZoom applies privacy guard selectively, to domains
LegalZoom owns such as LegalZoomTrademarkia.com and IntuitIncorporation.com,
containing trademarks of its competitors including LegalForce, Inc. and Intuit, Inc., and
both of which redirect to LegalZoom.com. Additionally, LegalZoom owns and blocks
from public view domains such as “legalzoom-quickbooks”,
“legalzoom-quickbooks2.com”, “legalzoom-quickbooks3.com”, and
“legalzoom-quickbooks4.com” corresponding to a trademark of Intuit, Inc. related to its
popular Quickbooks software. Tellingly, LegalZoom even secretly owns and redirects
website traffic of its domain IllegalZoom.com to LegalZoom.com.
24. Moreover, LegalZoom knew its conduct is unlawful because it has been involved
in trademark infringement litigation in the past as a plaintiff as well as a defendant. In
addition, upon information and belief, LegalZoom was asked to reassign a wide range
of domains associated with Priceline.com over domains it owned on and redirected.5
Most shockingly, LegalZoom continues to create confusion between itself and the
4
Through April 11, 2018, nearly four months after the initial complaint in this case was
filed, Plaintiff LegalForce, Inc. discovered that LegalZoom covertly owns the domain
LegalZoomTrademarkia.com and misdirects it to LegalZoom.com. Only after
LegalForce, Inc. informed LegalZoom of this through a public filing Case
3:17-cv-07194-MMC Document 105 on April 11, 2018 did LegalZoom remove its
misdirecting link and start offering the website as “available” implying they are now
trying to sell it.
5
At one point, LegalZoom owned domains associated with competitor PRICELINE
including pfriceline.com, pricelihne.com, pricelinde.com, pricelineairfaredeals.com,
pricelineairline.com, pricelineauctions.com, pricelinediscounts.com,
pricelinehostels.com, pricelinehoteldeals.com, pricelinehotles.com, pricelineoffer.com,
pricelineplanetickets.com, pricelinepromos.com, pricelinerates.com, pricelinesale.com,
pricelinfe.com, pricelinle.com, pricelinq.com, priceljine.com, pricelpine.com,
priceluine.com, priclline.com, pricneline.com, pricseline.com, pridceline.com,
prifceline.com, prijceline.com, and prikceline.com.
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United States federal government which owns www.uspto.gov by registering and
redirecting the domain and www.uspxo.com to LegalZoom for many years. Through
May 2018, www.uspxo.com continued to redirect to LegalZoom.com.
THE PARTIES
The Plaintiff
25. Trademarkia is a Delaware corporation having its principal place of business at
1580 W. El Camino Real, Suite 9, Mountain View, CA 94040. Trademarkia is not a law
firm in the United States and is not authorized to practice law in any state. Trademarkia
is not a registered or bonded legal document assistant under California Business and
Professions Code, § 6400 et seq.
The Defendant
26. LegalZoom is a Delaware corporation having its principal place of business at
101 N. Brand Blvd., Glendale, CA 91203. LegalZoom is not a law firm in the United
States and is not authorized to practice law in any state. LegalZoom is not a registered
or bonded legal document assistant under California Business and Professions Code,
§ 6400 et seq.
JURISDICTION AND VENUE
27. This Court has subject-matter jurisdiction over this action under 28 U.S.C. §§
2201, 1331, and 1346(a) because this action arises under the Lanham Act, 15 U.S.C. §
1125. This Court has supplemental jurisdiction over the state law claims under 28
U.S.C. § 1367 because they arise from the same nucleus of operative facts as the
federal claim.
28. This Court has general personal jurisdiction over LegalZoom because
LegalZoom’s principal place of business is in California. Alternatively, this Court has
specific personal jurisdiction over LegalZoom because LegalZoom purposefully
directed its advertisements or promotions at consumers in California and caused harm
to Trademarkia in California. LegalZoom thus has minimum contacts with the State of
California and those contacts are related to this lawsuit. Moreover, LegalZoom has
10
waived any objection by filing a responsive pleading.
29. Venue is proper in the United States District Court for the Northern District of
California under 28 U.S.C. § 1391 because a substantial part of the events or
omissions giving rise to this action occurred in this district.
ALLEGATIONS COMMON TO ALL CLAIMS FOR RELIEF
A. Trademarkia’s Creation, Continuous Use And Acquired Fame Of The
Trademarkia Marks.
30. Trademarkia was founded in 2009. The Trademarkia website, available at
www.trademarkia.com, went live on or about September 15, 2009.
31. Since that time, Trademarkia has served approximately 50,000,000 (fifty million)
visitors throughout the United States, and has assisted more than 100,000
(one-hundred thousand) small business owners in the search and monitoring of their
trademark applications from more than 80 countries.
32. In 2017 alone, Trademarkia users placed over 10,000 orders on or through the
website.
33. Trademarkia is cited as a trusted source for corporate history and branding in at
least 700 Wikipedia pages for leading brands including Disney, Samsung, Coca Cola,
Anheuser-Busch, Tesla, Kleenex, Dreamworks and hundreds of iconic brands.
34. As a result of its efforts and expenditures, Trademarkia’s TRADEMARKIA mark
has become widely recognized by the general consuming public of the United States
as a source indicator for trusted and independently verifiable, leading news source for
new product products and services through “breaking news” for the world’s largest and
most followed celebrities, sports teams, musicians, politicians, and companies across
the United States through automatic dissemination of alerts whenever such brands
start, are about to start, or abandon a marketing campaign through a story told through
trademark rights.
//
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11
35. For nearly a decade, Trademarkia has advertised extensively over the Internet,
and in other advertising channels. Trademarkia advertises in markets throughout the
country, including the largest markets, such as Boston, New York, Chicago, San
Francisco and Los Angeles.
36. Additionally, and almost from Trademarkia’s inception, the TRADEMARKIA
marks have been featured and discussed in publications and on television programs
and Internet websites all over the United States, including but not limited to on
Bloomberg, FastCompany, Fox Business, New York Times, TechCrunch, FORBES,
CNBC, The World Trademark Review, TIME Magazine / Fortune, CNN, Wall Street
Journal, Washington Post, and in the ABA Journal.
37. The Trademarkia website generates hundreds of thousands of hits per week.
Critically, the TRADEMARKIA marks are prominently displayed on the Trademarkia
webpages.
38. Trademarkia has achieved fame and recognition for its TRADEMARKIA marks
by innovating within the bounds of the regulations governing the legal profession:
a. Docketing system. Trademarkia has aggregated trademark data from
nearly a dozen countries and indexes tens of millions of trademarks daily
for updates. It has become a “docketing system” for the world, enabling,
for free, thousands of entrepreneurs to be kept up to date on deadlines for
trademarks, oppositions, renewals and more. Previously, access to such
tools were reserved for wealthy corporations with access to sophisticated
tools from LexisNexis, Thomson Reuters, and others. Trademarkia has
made these tools free to the world.
b. Search Technology. Trademarkia has helped to answer the basic question
that many entrepreneurs have, which is “is my business name available to
trademark”, by making a knockout search from its databases of millions of
trademarks, refreshed daily, freely accessible from its home page, through
a search engine-like search box with little commercial advertising on its
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home page. As a result, Trademarkia now attracts over 23.2 million page
views and approximately 9.4 million visitors to Trademarkia.com each
year, making it one of the Internet’s largest legal-oriented websites.
c. Competitive and Breaking News. Trademarkia automatically publishes
free alerts for millions of trademarks in various countries making it a
leading and primary news source for breaking business news whenever
new products are soon to be released and whenever new marketing
campaigns launch across the world.
d. Catalog of American ingenuity and corporate history. Trademarkia was the
first to publicly index trademark data as old as the year 1872, making it a
deep and rich repository of American history and corporate evolution. As a
result, Trademarkia is cited as a trusted source for corporate history and
branding in at least 750 Wikipedia pages for leading brands including
Coca Cola, Budweiser, Kellogg, and hundreds of iconic brands.
e. Innovative logo search engine. Trademarkia has built what is the Internet’s
largest logo search engine based on design code identification of
trademarks, spanning over 4 million logos that can be deeply searched by
“what is inside” each logo for creative inspiration and brand development,
free of charge. As a result, thousands of branding agencies and
entrepreneurs use Trademarkia.com each month to find and discover new
inspiration for their brands.
f. Keeping trademark bullies accountable. Trademarkia has built what is the
Internet’s first catalog of large company trademark bullies, hecklers, and
their victims based on the number of trademarks they oppose, threaten to
oppose, and are challenged by, through its annual rankings of those
companies that actively overextend their trademark rights. This data is
offered for free through automated annual rankings based on government
data and published annually by Trademarkia.
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g. Reducing infringement of trademarks when registering domains.
Trademarkia has built the world’s first domain registration service for small
businesses that automatically checks for availability of trademark rights
when registering domains, to assist in reducing cyber-piracy claims and
reducing wasteful federal litigation, free of charge.
h. Global automated trademark docketing reports. Trademarkia has built
automated and semi-automated trademark reports for most of the 100+
countries through which Trademarkia offers trademark filings. As a result,
companies and entrepreneurs around the world can uniquely and centrally
harmonize trademark portfolio management and access global trademark
protection markets through a single website.
i. Trademark opposition window tracking. Trademarkia has enabled small
businesses to easily track their 30-day opposition window for trademarks
filed with the USPTO in real time through its free opposition watch service.
Prior to Trademarkia, such tools were reserved for rich corporations using
expensive enterprise software by companies such as Thomson Reuters,
Wolters Kluwer, and LexisNexis.
j. Bifurcated Supply Chain Management. Trademarkia applied best
manufacturing practices to legal services by taking all non-attorney work
off of attorneys’ plates and globalizing it to improve quality while reducing
costs.
39. As a result of its efforts and expenditures, prior to LegalZoom’s first use of the
TRADEMARKIA mark in 2014, Trademarkia was cited as a trusted source for
corporate history and branding in hundreds of Wikipedia pages for leading brands such
as Coca Cola, Budweiser, Kellogg, and dozens of others. By 2014, Trademarkia’s
TRADEMARKIA mark had become widely recognized by the general consuming public
of the United States as a source indicator for trusted and independently verifiable,
14
leading news source for new product products and services through “breaking news”
for the world’s most famous and most followed celebrities, sports teams, musicians,
politicians, and companies across the United States through automatic dissemination
of alerts whenever such brands started, were about to start, or abandoned a new
product or service as witnessed through a marketing campaign foretold through alerts
from automated news alerts through trademark filings.
40. The TRADEMARKIA mark became famous for at least the following reasons:
a. The TRADEMARKIA mark was enormously famous and distinctive at
the time of LegalZoom’s first use. The TRADEMARKIA mark was at
the time of LegalZoom’s first use of the term in 2014, and continues to be
through this day, a widely recognized brand by the general consuming
public in the United States as a source of the goods and services of
Trademarkia. Prior to LegalZoom’s first use of the Trademarkia mark,
thousands of social media posts and tweets mentioned the Trademarkia
website in popular culture and fashion as the source for leading brand
information on sites such as Twitter and Facebook. Particularly,
Trademarkia had become a leading news indicator, often cited by major
media and television as a source for breaking news prior to 2014 because
it uniquely was the first to index the USPTO’s trademark records through
static URLs and breadcrumb structures to transform the status changes of
trademark applications into breaking news across all verticals whenever
any brand having mass following, whether in music, sports, television,
radio, or celebrity first was deciding to come out with a product or service
or abandon it. As a result, the website Trademarkia.com and the mark
TRADEMARKIA had achieved widespread fame across the United States
prior to 2014.
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15
b. The TRADEMARKIA mark achieved widespread recognition across
the United States, and across many different industries and popular
culture, for many years before LegalZoom’s first use of the term
Trademarkia. Trademarkia had become among the largest websites in
the United States, having website traffic approaching some of the largest
websites on the Internet including LegalZoom by the time LegalZoom first
started using the TRADEMARKIA mark, which included millions of page
views and unique visitors on its website each and every month as of 2014.
41. The TRADEMARKIA marks are of material importance to Trademarkia.
Trademarkia has used the original TRADEMARKIA marks continuously for nearly a
decade and has spent large amounts of money promoting those marks.
42. Because of the invaluable goodwill that the TRADEMARKIA marks represent,
and its importance to the company, Trademarkia aggressively protects the
TRADEMARKIA marks.
B. LegalZoom’s Use Of The Trademarkia Marks In Violation Of Trademarkia’s
Rights In The Trademarkia Marks.
43. LegalZoom demonstrates that Trademarkia is a direct competitor through its
own conduct. For example, Trademarkia has just recently discovered that LegalZoom
hid its identity as an owner and intentionally redirected website traffic from its
trademark infringing domain LegalZoomTrademarkia.com to LegalZoom.com for nearly
four (4) years.
44. LegalZoom intentionally creates this consumer confusion by playing upon the
Plaintiff’s use of the word “LegalForce Trademarkia” to describe website and its
services. TRADEMARKIA marks are registered U.S. trademarks of Trademarkia.
LegalZoom purchased its LegalZoomTrademarkia.com domain after the names
TRADEMARKIA marks were used in commerce by Trademarkia.
//
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C. LegalZoom Advertisements And Other Promotional Statements Are False And
Misleading To Reasonable Consumers.
45. LegalZoom and Trademarkia are among the largest providers of non-attorney
trademark watch and monitoring services.
46. LegalZoom’s advertisements and other promotional statements are false and
misleading to reasonable consumers.
47. For example, LegalZoom used advertising links for its “trademark watch service”
that appear to be describing trademark watch and monitoring service as a bait to
attract consumers to click on them, but then directs these same consumers to its
non-attorney trademark filing service called “Peace of Mind”. LegalZoom changed this
practice only after the initial complaint of this action was filed.
48. LegalZoom’s advertising specifically targets Trademarkia because Trademarkia
is LegalZoom’s largest competitor for online trademark watch and monitoring services.
D. An Uneven Playing Field And The Unfair Competition
49. Trademarkia’s non-attorney trademark watch and monitoring services are built
on superior technology, are more innovative, and provide more qualified, higher quality
services than LegalZoom at the same price. But Trademarkia is losing the battle
because LegalZoom has created an uneven playing field. Trademarkia cannot bundle
trademark filing service with its watch service because, if it did, that would constitute
the unauthorized practice of law. However, LegalZoom disregards the legal boundaries
by tacking on and/or bundling its illegally-provided trademark filing service onto its
trademark watch service through false and misleading advertising.
50. Through this illegal and unfair practice, LegalZoom is able to sell more
trademark watch and monitoring services than Trademarkia could and is also able to
unfairly grow faster by spending much more on advertising to acquire more trademark
watch customers than Trademarkia could.
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17
LegalZoom’s Unlawful Acts And Practices
51. LegalZoom unlawfully practices law when providing its non-attorney trademark
filing service “Peace of Mind”. LegalZoom concedes that the services are performed by
non-attorney “trademark specialists” instead of licensed attorneys. LegalZoom and its
“specialists” perform the following: pre-filing trademark searches; create and review the
trademark application; make legal determinations about classification and other
matters; advise clients on problems with their applications including recommending
changes to classifications and goods and services descriptions; and filing the
trademark application on the client’s behalf.
52. The USPTO defines the practice of law to include6:
a. Consulting with or giving advice to an applicant or registrant in
contemplation of filing a trademark application or application-related
document;
b. Preparing or prosecuting an application, response, post-registration
maintenance document, or other related document;
c. Advising applicants on proper responses to USPTO actions;
d. Conducting pre-filing searches for potentially conflicting trademarks;
e. Analyzing or pre-approving documents before filing; and
f. Advising applicants on substantive examination issues, such as the
acceptability of specimens and classification of goods and services.
53. California courts have defined the practice of law to include, among other things:
a. Providing legal advice and counsel.
b. Preparing legal instruments and contracts that secure legal rights.
//
//
6
See
https://www.uspto.gov/trademark/trademark-updates-and-announcements/warning-una
uthorized-lawpractice; and
https://www.uspto.gov/learning-and-resources/support-centers/trademark-assistance-c
enter.
18
54. LegalZoom admits that its non-attorney “trademark specialists” practice law
when it states on its website7: “Our trademark specialists will develop a detailed and
unique search monitoring strategy based on your needs. In addition, our monitoring
service alerts you to more than direct conflicts. Each trademark specialist is trained to
create monitoring strategies designed to catch the following:
a. “Deceptively similar trademarks: Words that sound alike or have the same
root, such as Polk Audio and Poke Audio.
b. Misspellings: Differences in one or two letters, such as Divine and Devine.
c. Different classes: We monitor all classes of goods and services. This
means even if your Advantage Jeans trademark is used for clothing, we
will notify you if someone uses Advantage for jewelry.”
55. The following facts demonstrate LegalZoom’s non-attorney “specialists” provide
legal advice:
a. LegalZoom specialists conduct pre-filing searches for potentially
conflicting marks.
b. LegalZoom specialists modify template descriptions from the USPTO ID
Manual.
c. LegalZoom specialists sometimes advise by narrowing the classification to
two potential classes for purposes of the pre-filing search that would be
conducted at the next step.
d. For application purposes, LegalZoom specialists sometimes advise to
leave the class blank because of the consequences of the USPTO review
process.
e. LegalZoom specialists sometimes advise that additional items be
incorporated into the description of goods and services.
f. LegalZoom specialists sometimes advise that the results of state and
federal trademark searches would not likely prevent registration of the
See
7
www.legalzoom.com/trademark-monitoring/trademark-monitoring-pop-up-process.html
19
mark.
g. LegalZoom specialists sometimes advise (erroneously) that only similar
marks within the same international trademark classification of goods and
services would pose a risk to obtaining a federal trademark registration.
56. Moreover, the following facts demonstrate LegalZoom’s non-attorney staff
engage in unlawful or illegal conduct when providing trademark filing service:
a. LegalZoom staff check a box on the application that waive confidentiality
rights and grant permission for the USPTO to make each application and
ownership information publicly available without their customers’ express
consent when paying government fees on behalf of customers for
trademark filings.
b. LegalZoom take steps to conceal its legal advice by noting “problems with
your order” on its website and robo-calling customers, rather than creating
an email “paper trail” of unauthorized legal advice.
c. LegalZoom deceptively used the corporate designee process to complete
the applications, which is designed for use by employees of corporations
who do not have binding authority. That process allowed LegalZoom to
enter their customers’ as the owners, while it received USPTO
confirmation emails directly from the USPTO and repackaged links in
these automated USPTO emails as their own “LegalZoom” branded
emails to give their customers the appearance that LegalZoom is
managing a process that is in fact automated by the USPTO.
57. Most astonishingly, a preliminary search of public data reveals that LegalZoom
has been submitting directly or aiding and abetting their customers in submitting
dozens of fraudulent specimens to the USPTO.
58. LegalZoom has submitted numerous clearly fraudulent specimens including
ones listing Adam M. Thomas, non-attorney investor in LegalZoom, former member of
the “senior leadership” at LegalZoom, and former Vice President of Fulfillment
20
Operations - Intellectual Property Division at LegalZoom. Knowingly making fraudulent
statement to the USPTO is a federal crime carrying a maximum penalty of 5 years.8
These fraudulent specimens include fabricated proofs of use submitted to the USPTO
on behalf of customers of LegalZoom. Despite submitting fraudulent specimens, Mr.
Thomas was regularly promoted at LegalZoom and endorsed by corporate officers at
LegalZoom on Mr. Thomas’s Linkedin profile9, including Chas Rampenthal,General
Counsel of LegalZoom, and Ken Friedman, Vice President of Legal and Government
Affairs at LegalZoom. As a result, upon reason and belief, LegalZoom, knowingly
permits their staff to submit fraudulent specimens by aiding and abetting customers to
knowingly commit a federal crime.
59. One former USPTO trademark examining attorney who reviewed approximately
13,000 trademark applications over the course of more than a decade at the USPTO,
explained that she would receive applications that appeared to be pro se but were
really LegalZoom applications:
a. The applications were typically rife with problems, and the applicant was
often “floored” to learn of it;
b. Many applicants would say “LegalZoom didn’t tell us this”;
c. Many applicants relied on faulty advice by “specialists” that actually
harmed their application such that they would have been more likely to
successfully prosecute their application by themselves through the
8
See 8 U.S.C. § 1001; Nationstar Mortg. LLC v. Mujahid Ahmad, 2014 TTAB LEXIS
1
350, *9 (Trademark Trial & App. Bd. Sep. 30, 2014) (“Fraud in procuring a trademark
registration occurs when an applicant knowingly makes false, material representations
of fact in connection with its application with intent to deceive the USPTO.”).
9
For example, see fake specimens on U.S. trademark serial numbers 86237568,
85211418, 85131032, 85638020, and 85014088, all listing Adam M. Thomas, a former
Vice President of LegalZoom. While Adam Thomas’s resume indicates that he went to
Whittier Law School and received a Juris Doctorate degree, it does not appear that he
is a licensed attorney in the State of California or in any state. Mr. Thomas lists among
his duties through his 12 years at LegalZoom between 2002 and 2014 on his resume
as including “Directly accountable for Intellectual Property division operations
management and product fulfillment, a department of over 85 employees across two
U.S. and international locations.”
21
USPTO website;
d. Mistakes resulting from faulty advice given by non-attorney “trademark
specialists” often diminished the scope of potential protection for
successful applications because they were too specific.
60. In short, consumers unwittingly gravitate to LegalZoom because LegalZoom
represents that they “know the ropes” and can provide “legal help” through legal
means. LegalZoom trumpets their “peace of mind” trademark service through an
endorsement by famous criminal defense attorney Robert Shapiro, of O.J. Simpson
murder case infamy, at only a fraction of the cost of a traditional trademark law firm.
In realty, LegalZoom is a federal racket that employs a fraudulent scheme to
deceptively compete with the Trademarkia through illegally bundling trademark filing
services along with trademark watch services.
FIRST CLAIM FOR RELIEF

DECLARATORY JUDGMENT ACT, 28 U.S.C. § 2201;
(Against LegalZoom)
61. Trademarkia repeats each and every allegation contained in the paragraphs
above and incorporate by reference each preceding paragraph as though fully set forth
herein.
62. An actual controversy has arisen and now exists between Trademarkia and
LegalZoom because of LegalZoom’s violation of false advertising and unfair
competition. To answer the question of whether LegalZoom unfairly competes with
Trademarkia by bundling its unlawfully-provided trademark filing service with its
trademark watch service, the Court must first answer a fundamental question: whether
LegalZoom’s trademark filing service violates the unauthorized practice of law.
63. As a direct result of LegalZoom’s unfair competition in trademark watch service,
Trademarkia has suffered injury in fact including lost revenue and market share,
reduced asset value, and increased advertising costs over the past six years.
22
64. Trademarkia’s injury is fairly traceable to LegalZoom’s conduct of bundling its
unlawfully-provided trademark filing service with trademark watch service. By bundling
an unlawful service with trademark watch service, LegalZoom was able to sell more
trademark watch services than Trademarkia could. Customers who purchase
trademark watch service have high likelihood to file new trademarks through the same
service provider. After the new trademarks are filed, the customers have high likelihood
to purchase more trademark watch services through the same service provider to
monitor their newly-filed trademarks. Therefore, LegalZoom is able to snowball its
customer base of both trademark watch service and unlawfully-provided trademark
filing services.
65. While LegalZoom bundles trademark filing service with trademark watch
services, Trademarkia cannot do what LegalZoom does because LegalZoom’s
trademark filing service constitutes UPL. Furthermore,Trademarkia cannot gain
additional revenue from its trademark watch service customers through referrals to
LegalForce RAPC Worldwide P.C. for trademark filing because that would constitute
unlawful fee-sharing between lawyers and non-attorneys.
66. Trademark’s injury will be redressed by the Court’s declaration addressing the
question of whether LegalZoom’s trademark filing service violates the unauthorized
practice of law. If the answer to this question is affirmative, then LegalZoom can no
longer bundle its unlawful trademark filing service with its trademark watch service.
Trademarkia will be able to effectively compete with LegalZoom on a level playing field.
If the answer to this question is negative, then Trademarkia will be able to offer
trademark filing service as LegalZoom does, and will also be able to bundle its
newly-offered trademark filing service with its existing trademark watch service, and will
also be able to effectively compete with LegalZoom on a level playing field.
//
//
//
23
67. Therefore, Trademarkia seeks a declaration from this Court that LegalZoom’s
trademark filing service violates the unauthorized practice of law. Specifically,
Trademarkia seeks a declaration from this Court that LegalZoom’s following conduct in
trademark filing service constitute UPL:
68. Conducting pre-filing trademark searches;
69. Advising applicants on substantive examination issues, such as acceptability of
specimens, suitability of trademark descriptions, and the classification of goods and
services;
70. Identifying problems with applications and advise applicants on how to address
those problems to avoid rejection or office action;
71. Analyzing or pre-approving documents before filing;
72. Controlling and monitoring the application process by registering as the
applicant’s corporate representative; and
73. Otherwise consulting with or giving advice to a client in contemplation of filing a
trademark application or other document with the USPTO.
74. Alternatively, Trademarkia seeks a declaration from this Court that Trademarkia
is permitted to employ non-attorney assistants to recommend and advise on selection
of classifications of goods and services for trademark applications sought to be filed
with the USPTO directly to customers, modify standard descriptions from the USPTO
ID manual directly for customers, and pay government fees on behalf of customers
who are not represented by a lawyer as an add on service to trademark watch
services.
//
//
//
//
//
//
24
SECOND CLAIM FOR RELIEF
TRADEMARK INFRINGEMENT, 15 U.S.C. § 1114
(Against LegalZoom)
herein.
76. Trademarkia is the sole and exclusive owner of valid and registered trademarks.
Trademarkia has overseen, controlled, and directed goods and services manufactured,
marketed, advertised, promoted, and sold under the TRADEMARKIA marks including
the registered U.S. marks for the federally registered trademark TRADEMARKIA filed
on September 10, 2010 and registered on May 24, 2011 and declared incontestable
through Reg. No. 3965290 and the federally registered trademark LEGALFORCE filed
on November 30, 2011 and registered on October 16, 2012 through Reg. No. 4227650.
Collectively, registered U.S. trademarks for TRADEMARKIA and LEGALFORCE are
referred to as “Trademarkia’s Registered Trademarks”.
77. Trademarkia has priority of use in commerce for the TRADEMARKIA marks over
LegalZoom.
78. LegalZoom has used, and continued to use until about April 2018,
Trademarkia’s registered trademarks in commerce by registering domain names
confusingly similar to the TRADEMARKIA marks and redirecting them to LegalZoom’s
own website and by using Trademarkia’s Registered Trademarks as search terms to
place advertisements for LegalZoom’s goods and services above the organic listings
for Trademarkia and the Trademarkia marks.
79. LegalZoom’s use of Trademarkia’s registered trademarks as alleged herein was
done without the authorization or consent of Trademarkia and continues without the
authorization or consent of Trademarkia.
80. Such use is likely to cause initial interest confusion of consumers who are in fact
searching solely for Trademarkia and/or Trademarkia’s registered trademarks and is
25
highly likely to cause confusion, mistake and deception among the general public as to
the origin of LegalZoom's goods and services and/or as to the sponsorship by,
affiliation with, and/or connection to Trademarkia.
81. By using Trademarkia’s registered trademarks, and by selling, offering for sale,
distributing, and/or advertising goods and services to the general public in connection
with Trademarkia’s registered trademarks, for profit, LegalZoom has caused and,
unless enjoined by this Court, will continue to cause a likelihood of confusion and
deception of members of the public, and additional injury to Trademarkia’s exclusive
right to control,and benefit from, its registered trademarks, as well as Trademarkia’s
goodwill and reputation as symbolized by the Trademarkia Registered Trademarks for
which Trademarkia has no adequate remedy at law.
82. LegalZoom’s conduct demonstrates an intentional, willful, and malicious intent to
trade on the goodwill associated with Trademarkia’s registered trademarks to
Trademarkia’s great and irreparable injury.
83. LegalZoom has caused and is likely to continue causing substantial injury to the
public and to Trademarkia, and Trademarkia is entitled to injunctive relief and to
recover LegalZoom’s profits, actual damages, enhanced profits and damages, costs
and reasonable attorneys' fees under 15 U.S.C. §§ 1114, 1116 and 1117.
THIRD CLAIM FOR RELIEF
TRADEMARK INFRINGEMENT AND FALSE DESIGNATION OF ORIGIN
LANHAM ACT, 15 U.S.C. § 1125(a)
(Against LegalZoom)
herein.
85. Trademarkia is the sole and exclusive owner of valid, protectable
TRADEMARKIA marks, and has overseen, controlled, and directed goods and services
manufactured, marketed, advertised, promoted, and sold under the TRADEMARKIA
marks. As a result of this authorized marketing, advertising, promotion and use of the
26
TRADEMARKIA marks, the TRADEMARKIA marks have come to represent the
platinum standard of trademark search and monitoring services for small businesses.
86. Trademarkia has priority of use in commerce for the TRADEMARKIA marks over
LegalZoom.
87. Defendant used the TRADEMARKIA marks in connection with the sale and
advertising of services in a manner that is likely to cause confusion, mistake, and/or
deception among consumers as to affiliation, connection, or association with
Trademarkia or as to the origin, sponsorship, or approval of Defendant's products and
services by Trademarkia.
88. Defendant's adoption and use of the TRADEMARKIA marks has been made
notwithstanding LegalZoom' s well-known rights in the famous TRADEMARKIA marks
and with both actual and constructive notice of Trademarkia’s federal registration rights
under 15 U.S.C. § 1072.
89. Defendant has intentionally adopted the TRADEMARKIA marks with the intent
and result of causing confusion, mistake, or deception of the public as to the identity
and origin of Trademarkia’s products and services.
90. As a direct and proximate result of Defendant's infringing activities, Trademarkia
has suffered irreparable injury to Trademarkia 's business, reputation, and goodwill in
its federally registered TRADEMARKIA marks and will continue to suffer such injury
unless Defendant is enjoined by this Court from continuing its infringing activities.
91. Trademarkia has no adequate remedy at law unless this Court enjoins
Defendant's infringing conduct.
92. LegalZoom’s use of the name and term “trademarkia,” including, without
limitation, in connection with the LegalZoomTrademarkia.com Domain website
purporting to provide a "trademark watch” services are likely to cause confusion,
mistake or deception among users and the public as to the source, origin, sponsorship
or quality of LegalZoom’s websites and purported services.
//
27
93. LegalZoom’s use of the TRADEMARKIA mark is likely to confuse consumers,
Internet users (including actual and potential users of the Company's services) and the
public into believing that the Trademarkia is the source, origin or sponsor of
LegalZoom’s websites, that Trademarkia.com is the source or a sponsor of
LegalZoom’s activities, or that the Trademarkia otherwise approves of or has an
affiliation with LegalZoom, all in violation of 15 U.S.C. § 1125(a), thereby causing loss,
damage and injury to the Company and to the public.
94. The Lanham Act prohibits any false or misleading description or representation,
including words or other symbols tending falsely to describe or represent the same,
made in connection with any goods or services entered into commerce.
95. LegalZoom violates the Lanham Act prohibitions on false or misleading
description or representation because it used advertising links for its “trademark watch
service” that appear to be describing trademark watch and monitoring service as a bait
to attract consumers to click on them, but then directed these same consumers to its
96. In addition, LegalZoom violates the Lanham Act prohibitions on false or
misleading advertising by making a false and misleading advertisement through
conjoining the words LegalZoom and Trademarkia together in commerce containing
the express falsehood that somehow defendant LegalZoom is affiliated with plaintiff
Trademarkia. From around 2014 until about April 2018, when a user clicked on
LegalZoomTrademarkia.com, the user was redirected to LegalZoom.com. LegalZoom’s
redirection to a different website is a “bait and switch” technique and constitutes false
advertising.
97. LegalZoom’s false and misleading advertisements have deceived a substantial
segment of the audience exposed to it, or have the capacity for such deception, and
have influenced, or are likely to influence, consumer purchasing decisions.
//
28
98. LegalZoom sells, offers for sale, distributes, and/or advertises goods and
services to consumers that directly compete with Trademarkia for trademark watch
services.
99. LegalZoom’s conduct demonstrates an intentional, willful, and malicious intent to
deceive consumers and unfairly compete with Trademarkia.
100. LegalZoom’s false and misleading advertisements have caused and, unless
enjoined, will continue to cause immediate and irreparable harm to Trademarkia for
which there is no adequate remedy at law. In addition, as a result of LegalZoom’s
false and misleading advertisement, Trademarkia has been injured, including but not
limited to, decline in sales and market share, loss of goodwill, and additional losses
and damages. Furthermore, LegalZoom has been unjustly enriched at the expense of
Trademarkia as a consequence of LegalZoom’s false and misleading advertising.
Accordingly, Trademarkia is entitled to injunctive relief and to recover actual damages,
enhanced profits and damages, costs, LegalZoom’s profits, and reasonable attorneys’
fees under 15 U.S.C. §§ 1114, 1116, and 1117.
101. These misrepresentations are likely to cause confusion or mistake, or to
deceive as to the affiliation, connection or association of LegalZoom’s
LegalZoomTrademarkia.com Domain website with Trademarkia, or as to the origin,
sponsorship, or approval of LegalZoom’ LegalZoomTrademarkia.com Domain website
by the Trademarkia.
102. They also misrepresent the nature, characteristics, and qualities of
LegalZoom’s LegalZoomTrademarkia.com Domain and Trademarkia’s
www.trademarkia.com website and service.
103. As a direct result of LegalZoom’s conduct, LegalZoom has unjustly traded on
the Plaintiff’s goodwill. LegalZoom was aware of the Plaintiff’s marks and reputation
before engaging in his conduct as alleged herein. LegalZoom deliberately redirected its
website LegalZoomTrademarkia.com to its home page and included false claims of its
connection to the Trademarkia.com website, for the purpose of harassing the Plaintiff,
29
misappropriating its substantial goodwill, and causing confusion, mistake and
deception among Internet users and the public.
104. Plaintiff is entitled to recover LegalZoom’s profits from the infringing use of
the Trademarkia’s TRADEMARKIA marks.
105. If LegalZoom’s infringement is permitted to continue, the Plaintiff faces the
risk of irreparable harm. The Plaintiff’s remedy at law is not by itself adequate to
remedy LegalZoom’s actions, and irreparable harm suffered by Trademarkia will
continue unless this Court enjoins LegalZoom. Trademarkia therefore is entitled to
protection by injunctive relief.
106. The statements relate to descriptions or representations of fact that
misrepresent the nature, characteristics, and quality of LegalZoom’s services, as well
as the nature, characteristics, and quality of Trademarkia’s services.
107. A substantial segment of consumers are likely to be and actually have been
deceived by LegalZoom’s statements as explained throughout this complaint.
108. LegalZoom advertisements and other promotional statements are false and
misleading to reasonable consumers.
109. For example, LegalZoom used advertising links for its “trademark watch
service” that appear to be describing trademark watch and monitoring service as a bait
to attract consumers to click on them, but then directs these same consumers to its
110. LegalZoom’s advertising specifically targets its attorney competitors because
LegalForce and Trademarkia are the two largest websites in terms of numbers of users
for small businesses looking to watch and monitor their trademarks
111. LegalZoom made false and misleading descriptions and representations of
fact as described herein.
//
//
30
112. The statements are commercial advertisements or promotions because:
a. They were designed to promote the services of LegalZoom;
b. They propose commercial transactions, including but not limited to the
purchase of LegalZoom’s trademark watch service;
c. They promote LegalZoom’s commercial activities;
d. They were motivated by LegalZoom’s economic interests;
e. The statements were sufficiently disseminated to the relevant purchasing
public, namely consumers seeking trademark protection assistance; and
f. Most, but not all, of the statements were made in a traditional advertising
format (in an internet advertisement or on a promotional pre-purchase
webpage at LegalZoom.com).
113. The statements were made in connection with services offered by
LegalZoom and, in the case of its advertisements targeting Trademarkia, in connection
with services offered by Trademarkia.
FOURTH CLAIM FOR RELIEF
TRADEMARK DILUTION UNDER 15 U.S.C. § 1125(c)
(Against LegalZoom)
herein.
115. TRADEMARKIA Mark is a famous and distinctive mark as alleged in this
Amended Complaint.
116. By using LEGALZOOM TRADEMARKIA, LegalZoom is actively impairing,
and are likely to impair, the TRADEMARKIA Mark’s capacity to identify and distinguish
the services of Trademarkia.
117. LegalZoom is actively tarnishing, and are likely to tarnish, the reputation of
Trademarkia and the TRADEMARKIA Mark. These acts of LegalZoom dilute the
TRADEMARKIA Mark and cause injury to Trademarkia in violation of 15 U.S.C. §
31
1125(c) because these acts, which commenced after Plaintiff’s TRADEMARKIA Mark
became famous, has diluted and continues to dilute the TRADEMARKIA Mark by
blurring and tarnishment.
118. LegalZoom’s use is likely to dilute the TRADEMARKIA mark by blurring
and tarnishment. There is complete similarity between LegalZoom’s use of the
TRADEMARKIA mark and the famous trade name owned by Trademarkia. At time
time of LegalZoom’s first use of the Trademarkia name, the TRADEMARKIA mark had
already acquired widespread distinctiveness in popular culture, and TRADEMARKIA
mark had already received widespread recognition on permanent source links for the
world’s most popular brand history pages such as Disney, Samsung, Coca Cola,
Anheuser-Busch, Tesla, Kleenex, Dreamworks on Wikipedia. Through its connection
as an often cited news source, Trademarkia had received widespread recognition
across a wide spectrum of popular culture by the time of LegalZoom’s first use in 2014.
LegalZoom sought to blur the distinction between itself and the famous
TRADEMARKIA mark and tarnish the goodwill associated with the TRADEMARKIA
mark by purposefully buying a domain in which it tried to claim ownership of the
TRADEMARKIA brand by putting its name before Trademarkia when buying and
redirecting the domain www.legalzoomtrademarkia.com.
119. LegalZoom’s had a bad faith intent to actually create an association
with the famous TRADEMARKIA mark. There is complete similarity between
LegalZoom’s use of the TRADEMARKIA mark. The extent to which the owner of the
famous mark is engaging in substantially exclusive use of the mark. Moreover,
LegalZoom sought to and actually did harm the famous TRADEMARKIA mark and the
reputation of the famous Trademarkia by bundling illegally offered trademark filing
services along with trademark watch services as described herein.
120. Through their misconduct the LegalZoom intentionally, willfully, and
maliciously diluted and continue to dilute the TRADEMARKIA Mark. The intentional,
willful, and malicious violation entitles Trademarkia to monetary relief in an amount that
32
Trademarkia will prove at trial.
121. As a direct and proximate result of LegalZoom’s dilution of the Trademarkia
Mark, in violation of 15 U.S.C. §§ 1125(c), Trademarkia has suffered and will continue
to suffer irreparable harm. Trademarkia believes, and therefore alleges, that
LegalZOom threaten to continue deliberately to dilute the Trademarkia Mark, as set
forth above and will continue to do so unless this Court restrains and enjoins
LegalZoom. Trademarkia’s remedy at law is not by itself adequate to compensate
Trademarkia for the harm inflicted and threatened by LegalZoom. Trademarkia thus
deserves protection by injunctive relief.
FIFTH CLAIM FOR RELIEF
CYBERPIRACY IN VIOLATION OF
15 U.S.C.A. § 1125(D)(1)
(Against LegalZoom)
herein.
123. LegalZoom registered the LegalZoomTrademarkia.com Domain and used it
to redirect visitors to its own legalzoom.com website.
124. The LegalZoomTrademarkia.com Domain is nearly identical to and
confusingly similar to the Plaintiff’s distinctive TRADEMARKIA marks, and to the
Plaintiff’s registered domains www.legalforce.com and www.trademarkia.com.
125. On information and belief, LegalZoom has a bad faith intent to profit from the
LegalZoomTrademarkia.com domain. Bad faith is evidenced by, inter alia, their
registration of the domain only after the success of the Plaintiff’s www.trademarkia.com
website and www.legalforce.com website, their redirecting of the
LegalZoomTrademarkia.com domain to LegalZoom.com, and their description now
saying “website coming soon!” “Please check back soon to see if the site is available.”
The word “available” indicates that LegalZoom may soon sell this domain now that it
has been caught.
33
126. LegalZoom’s bad faith intent is demonstrated by the following factors:10
● Factor 1: LegalZoom’s domain “legalzoomtrademarkia.com”
incorporates the intellectual property rights in the trademarks and trade
names “Trademarkia” literally and exactly by incorporating this entire term
in its “legalzoomtrademarkia.com” domain, and purchased the domain
after the term “Trademarkia” as already distinctive, had achieved
significant international fame, and was registered as a U.S. trademark.
LegalZoom has no trademark or IP rights in or to the TRADEMARKIA
marks.
● Factor 2: The Plaintiff, LegalForce, Inc., had a previous legal business
name of Trademarkia, Inc. in 2012 at the time LegalZoom registered the
www.legalzoomtrademarkia.com domain, and therefore the domain
directly infringed on the legal name of the Plaintiff. That LegalZoom claim
to have chosen an acronym that happens to coincide with Trademarkia’s
well-known mark is preposterous and indicative of LegalZoom’s bad
intent.
● Factor 3: LegalZoom intended to divert consumers from the website
Trademarkia.com of the Plaintiff, the trademark owner, to a site
accessible under the domain name www.legalforcetrademarkia.com that
could harm the goodwill represented by the TRADEMARKIA marks for
commercial gain with an intent to tarnish and disparage the
TRADEMARKIA marks by creating a likelihood of confusion as to the
source, sponsorship, affiliation and endorsement of the
www.legalzoom.com website by Plaintiff by redirecting traffic to this
domain from www.legalzoomtrademarkia.com. LegalZoom does not have
any prior use of the legalzoomtrademarkia.com domain name that would
predate Trademarkia’s trademark rights in the TRADEMARKIA marks or
10
Based on the nine statutory factors set forth in 15 U.S.C. § 1125(d)(1)(B).
34
Trademarkia’s trademarkia.com website.
● Factor 4: LegalZoom has offered to transfer, sell, or otherwise assign
the domain www.legalzoomtrademarkia.com to third parties by writing
“Please check back soon to see if the site is available” after being caught
by Trademarkia in April 2018 when mentioning the redirection in a Reply
brief to the motion to file a SAC in this case. LegalZoom does not make
noncommercial or fair use of the TRADEMARKIA mark at
legalzoomtrademarkia.com.
● Factor 5: LegalZoom misled the public by concealing their ownership of
the www.legalzoomtrademarkia.com domain shortly after starting to divert
traffic to www.legalzoom.com using this domain. Specifically, to hide its
conduct, ten months later on or about February 28, 2015, LegalZoom
implemented GoDaddy’s WHOIS privacy guard service to hide its
ownership of this domain from public view by paying a separate fee to a
company called DomainsByProxy LLC.11
● Factor 6: LegalZoom waited two years to start redirecting traffic to their
LegalZoom.com website after registering this domain and purposely
masked their ownership identity. Specifically, on or about June 11,
2012, LegalZoom purchased the abandoned domain name
LegalZoomTrademarkia.com but did not use it. A couple of years later,
on or about April 21, 2014, LegalZoom began diverting traffic from
LegalZoomTrademarkia.com to its website LegalZoom.com.
● Factor 7: LegalZoom has purchased domains related to at least one
other major competitor Intuit.com and misdirected traffic to
LegalZoom.com.
//
//
11
It should be noted that LegalZoom has over 50 domains in which they do not actively
hide their contact information as of April 12, 2018.
35
● Factor 8: LegalZoom has sought registration and acquisition of multiple
domain names which LegalZoom knows are identical or confusingly
similar to marks of others that are distinctive at the time of registration of
such domain names, and dilutive of famous marks of others such as the
USPTO, Inc. (uspxo.com), Intuit, Inc. (intuitincorporation.com), and
Priceline, Inc. (pfriceline.com, pricelinediscounts.com) that were famous
at the time of registration of such domain names, without regard to the
goods or services of the parties.
● Factor 9: LegalZoom sought to surreptitiously hide its identity as an
owner of the LegalZoomTrademarkia.com domain as well as other marks
identical or confusingly similar to marks of others. There are dozens of
domains owned by LegalZoom.com, Inc. for which LegalZoom keeps its
identity for public view such as “legalzoom.com” and “legalzoom.cm).
However, LegalZoom applies privacy guard selectively, to domains
LegalZoom owns such as LegalZoomTrademarkia.com and
IntuitIncorporation.com, containing trademarks of its competitors
including LegalForce, Inc. and Intuit, Inc., and both of which redirects to
LegalZoom.com. Additionally, LegalZoom owns and blocks from public
view domains such as “legalzoom-quickbooks”
“legalzoom-quickbooks2.com” “legalzoom-quickbooks3.com” and
“legalzoom-quickbooks4.com” corresponding to a trademark of Intuit,
Inc.’s related to its popular Quickbooks software.
127. Moreover, LegalZoom intended to profit from the
LegalZoomTradeamrkia.com domain by redirecting it to LegalZoom.com which offered
a wide range of services in direct competition with the LegalForce, Inc. including
trademark watch services.
128. After Trademarkia’s counsel let LegalZoom know of their intent to file this
amended complaint adding these allegations on April 11, 2018, LegalZoom stopped
36
redirecting traffic from LegalZoomTrademarkia.com to their LegalZoom.com home
page, and instead put up a message indicating that the domain may soon be
“available”.
129. Thus, LegalZoom has used the LegalZoomTrademarkia.com Domain and
the registration of that domain name and his use of that domain name have been in
bad faith.
130. LegalZoom's actions constitute cyberpiracy in violation of the Trademarkia’s
rights 28 under section 43(d)(1) of the Lanham Act, 15 U.S.C. § 1125(d)(1). Those
actions have been knowing, deliberate, willful, intentional, and flagrantly malicious in
light of the Trademarkia’s rights and global fame.
131. Pursuant to 15 U.S.C. § 1117, Trademarkia is further entitled to treble
damages and attorneys’ fees and costs.
132. LegalZoom’s cyberpiracy in violation of 15 U.S.C. § 1125(d)(1) is a direct
and proximate cause of LegalZoom’s unjust enrichment in an amount not yet
ascertained.
133. Pursuant to 15 U.S.C. § 1117(d), Trademarkia may elect, at any time before
final judgment is entered by the trial court, to recover, instead of actual damages and
profits for Trademarkia violation of 15 U.S.C. § 1125(d)(1), an award of statutory
damages up to $100,000 per domain name, as the Court considers just.
134. Accordingly, Trademarkia is entitled to recover restitution for LegalZoom’s
unjust enrichment in an amount to be determined at trial.
135. If LegalZoom’s cyberpiracy in violation of 15 U.S.C. § 1125(d)(1) is permitted
to continue, the Trademarkia faces the risk of irreparable harm. Plaintiff s remedy at
law is not by itself adequate to remedy LegalZoom’s actions, and irreparable harm
suffered by Trademarkia will continue unless this Court enjoins LegalZoom.
Trademarkia therefore is entitled to protection by injunctive relief, including forfeiture or
cancellation of the LegalZoomTrademarkia.com Domain or transfer of the
LegalZoomTrademarkia.com Domain name to the Company.
37
SIXTH CLAIM FOR RELIEF
CALIFORNIA UNFAIR COMPETITION
CAL. BUS. & PROF. CODE § 17200 ET SEQ.
(Against LegalZoom)
herein.
137. LegalZoom’s conduct violates the unlawful and unfair prong of the California
Unfair Competition law in § 17200 et. seq., in that the practices alleged are unfair.
138. LegalZoom has violated the unlawful prong of UCL because of, and not
limited to, the following:
a. LegalZoom’s non-attorney staff engage in unauthorized practice of law by:
(1) developing search strategy to catch potentially conflicting marks; (2)
performing pre-filing searches for potentially conflicting marks and
delivering search results directly to customers; (2) advising and selecting
classifications of trademarks for customers; (3) modifying goods and
services descriptions of trademarks for customers; (4) advising customers
on whether a trademark is registrable.
b. LegalZoom violates USPTO rules by waiving customers’ confidentiality
and privacy rights.
c. LegalZoom violates USPTO rules by deceptively using USPTO’s
corporate designee process to complete customer’s trademark
applications.
d. LegalZoom staff violate 18 U.S.C. § 1001 and USPTO rules by submitting
directly or aiding and abetting customers to submit fraudulent specimens
to the USPTO.
139. By offering the trademark filing services unlawfully, LegalZoom is able to sell
more watch and monitoring services because customers want a bundled service and
38
therefore Trademarkia loses sales. LegalZoom has unfairly attempted to increase their
lifetime revenue per trademark watch customer by engaging in the unauthorized
practice of law by offering U.S. trademark filing services. Through this method,
LegalZoom is able to unfairly grow faster by spending more on advertising to acquire
trademark watch customers.
140. LegalZoom has violated the unfair prong of UCL because of, and not limited
to, the following:
a. LegalZoom’s advertisements related to trademark watch and monitoring
services deceive consumers into believing that when they want to
purchase LegalZoom’s trademark watch services, and click on an
advertisement in Google for this service, they are “baited and switched” to
landing pages offering U.S. trademark application filing services. Often
times, such customers purchase both U.S. trademark application filing
services as well as trademark watch services thereby allowing LegalZoom
to acquire more customers for trademark watch services by aggressively
justifying advertising through revenue acquired through filing services.
b. Misdirecting website traffic from its www.legalforcetrademarkia.com
domain to LegalZoom.com for about 4 years from the years 2014 to 2018.
141. Trademarkia is informed and believes that LegalZoom, as a competitor to
Trademarkia, performed the acts alleged herein for the purpose of injuring
Trademarkia. The acts alleged herein continue to this day and present a threat to
Trademarkia, the general public, the trade and consumers.
142. As a result of LegalZoom’s wrongful acts, Trademarkia has suffered and will
continue to suffer loss of income, profits and valuable business opportunities and if not
preliminarily or permanently enjoined, LegalZoom will have unfairly derived and will
continue to derive income, profits and business opportunities as a result of its wrongful
acts including harm to the market for trademark applications by California applicants.
143. Trademarkia seeks an order of this Court under California Business &
39
Professions Code § 17200 that preliminarily and permanently enjoins LegalZoom from
continuing to engage in the unfair acts or practices set forth herein, as well as
restitution.
SEVENTH CLAIM FOR RELIEF

TRADEMARK INFRINGEMENT UNDER CALIFORNIA COMMON LAW
(Against LegalZoom)
herein.
145. Trademarkia is the sole and exclusive owner of the trademark rights in the
TRADEMARKIA marks.
146. Trademarkia has priority of use in commerce for the TRADEMARKIA marks
over LegalZoom.
147. By its acts as described above, Defendant has created a likelihood of
confusion, mistake, and/or deception among consumers as to affiliation; connection, or
association with Trademarkia or as to the origin, sponsorship, or approval of
Defendant's products and services by Trademarkia.
148. Absent injunctive relief, Trademarkia has no means by which to control
Defendant's infringing activities. Trademarkia is thus entitled to preliminary and
permanent injunctive relief prohibiting Defendant from continuing to commit such acts.
149. In performing the conduct described herein, on information and belief,
Defendant acted with oppression and malice, intending to injure Trademarkia and to
wrongfully advantage itself at Trademarkia’s expense. Trademarkia is entitled to an
award of compensatory and punitive damages against Defendant, in an amount to be
determined at trial.
40
EIGHTH CLAIM FOR RELIEF
UNFAIR COMPETITION UNDER CALIFORNIA COMMON LAW
(Against LegalZoom)
herein.
151. LegalZoom’s acts have impaired the goodwill in the TRADEMARKIA marks,
have created a likelihood of confusion, diluted the distinctiveness of the
TRADEMARKIA marks, and have otherwise adversely affected Trademarkia' s
business and reputation by use of unfair business practices and false association.
These acts constitute unfair competition and unfair business practices under California
common law.
152. In performing the conduct described herein, on information and belief
Defendant acted with oppression and malice, intending to injure Trademarkia and to
wrongfully advantage itself at Trademarkia's expense. Trademarkia is thus entitled to
an award of compensatory and punitive damages against Defendant, in an amount to
be determined at trial.
NINTH CLAIM FOR RELIEF
CALIFORNIA TRADEMARK DILUTION UNDER Cal. Bus. & Prof. Code § 14247
(Against LegalZoom)
herein.
154. By registering and using the LegalZoomTrademarkia.com domain name, and
using the name and mark TRADEMARKIA, LegalZoom has blurred and tarnished, and
therefore diluted, and will continue to dilute, the famous and distinctive quality of the
Trademarkia Mark, and have lessened the capacity of the TRADEMARKIA Mark to
identify and distinguish Trademarkia’s goods and services, causing injury to
41
Trademarkia in violation of California Business and Professions Code §14247.
155. As a direct and proximate result of LegalZoom’s dilution of the
TRADEMARKIA Mark, in violation of California law, Trademarkia has suffered and will
continue to suffer irreparable harm.
156. Trademarkia is informed and believes, and therefore alleges, that
LegalZoom threatens to continue deliberately to dilute the Mark, as set forth above
and, unless this Court restrains and enjoins them, will continue to do so, all to
Trademarkia’s irreparable damage. Trademarkia’s remedy at law is not by itself
adequate to compensate Trademarkia for the harm LegalZoom has inflicted and
threatened.
157. Trademarkia thus deserves protection by injunctive relief.
REQUEST FOR RELIEF

WHEREFORE, Plaintiff requests that this Court:
A. Declare that LegalZoom is engaged in the unauthorized practice of law by
providing a service through which non-attorney employees of LegalZoom
assist clients with filing trademark registration applications before the
USPTO, and thus LegalZoom cannot legally offer the trademark filing
service and bundle it with the trademark watch service;
B. Enter judgment against LegalZoom;
C. That Defendant and its respective agents, officers, employees,
representatives, licensees, franchisees, successors, assigns, attorneys
and all other entities and persons acting for, with, by through or under
authority from Defendant, and each of them, be preliminarily and
permanently enjoined from: (a) using the TRADEMARKIA marks, service
marks, and trade names, or any colorable imitation thereof; (b) using any
trademark that imitates or is confusingly similar to or in any other way
similar to any of the TRADEMARKIA marks or that is likely to cause
42
confusion, mistake, deception, or public misunderstanding as to the origin
of Trademarkia' s products or its connectedness to Defendant; (c) using
any trademark or service mark that dilutes the distinctiveness of any of the
TRADEMARKIA marks;
D. An order that LegalZoom permanently abandon the registration of
LegalZoomTrademarkia.com Domain (and any other similar domains
owned or acquired by LegalZoom);
E. That Defendant be required to file with the Court and serve on
Trademarkia within thirty (30) days after entry of the injunction, a
declaration under oath setting forth in detail the manner and form in which
Defendant has complied with the injunction;
F. That, pursuant to 15 U.S.C. § 1117, Defendant be held liable for all
damages suffered by Trademarkia resulting from the acts alleged herein
including compensatory and punitive damages against LegalZoom in an
amount to be proven at trial;
G. That, pursuant to 15 U.S.C. § 1117, Defendant be compelled to account to
Trademarkia for any and all profits derived by Defendant from its illegal
acts complained of herein;
H. Award Plaintiff their costs and expenses of this action against LegalZoom,
including their reasonable attorneys’ fees necessarily incurred in bringing
and pressing this case, as provided in 15 U.S.C. § 1117(a).
I. An award of LegalZoom’s profits from their infringing conduct;
J. An order enjoining LegalZoom and each of his agents, servants,
employees, and attorneys, and those persons in active concert or
participation with any of them who receive actual notice of the injunction,
from using the TRADEMARKIA marks, or any colorable imitation thereof
or confusingly similar term, in the field of trademark services;
K. That the Court declare this action to be an exceptional case and award
43
Trademarkia its full costs and reasonable attorneys’ fees, as provided in
15 U.S.C. § 1117(a);
L. Award Plaintiff pre- and post-judgment interest at the applicable rates on
all amounts awarded;
M. An award of statutory damages up to $100,000 per domain name in
violation of 15 U.S.C. § 1125(d)(1) pursuant to 15 U.S.C. § 1117(d) if
elected by Trademarkia instead of actual damages and profits, as the
Court considers just.
N. Grant permanent injunctive relief to prevent the recurrence of the
violations for which redress is sought in this Third Amended Complaint;
O. That the Court grant Trademarkia any other remedy to which it may be
entitled as provided for in 15 U.S.C. §§ 1116 and 1117 and/or under state
law; and
P. Order any other such relief as the Court deems appropriate.
Respectfully submitted this Friday May 18, 2018.
LEGALFORCE RAPC WORLDWIDE P.C.
By__/s/ Raj V. Abhyanker______

Raj V. Abhyanker
California State Bar No. 233,284
Attorney for Plaintiff:
LegalForce, Inc.
44
JURY TRIAL DEMAND
Plaintiff hereby requests a trial by jury on all issues so triable in this matter.
Respectfully submitted this Friday May 18, 2018.
LEGALFORCE RAPC WORLDWIDE P.C.
By__/s/ Raj V. Abhyanker______

Raj V. Abhyanker
California State Bar No. 233,284
Attorney for Plaintiff:
LegalForce, Inc.
45

Lawsuit, LegalForce Trademarkia v. LegalZoom, Inc. (Third Amended Complaint)

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Lawsuit, LegalForce Trademarkia v. LegalZoom, Inc. (Third Amended Complaint)

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RAJ V.

ABHYANKER, California SBN 233284

LEGALFORCE RAPC WORLDWIDE, P.C.

Attorneys for Plaintiff,

UNITED STATES DISTRICT COURT

LEGALFORCE, INC., Case No. 3:17-cv-07194-MMC

Plaintiff, THIRD AMENDED COMPLAINT FOR:

JURY TRIAL DEMANDED

Mark Reg. No. Ser. No. Goods/Services

Trademarkia 3965290 85126556 Advertising,

LegalForce 4227650 85483252 Legal services,

LegalForce Common law November 30, 2011 Website

4. As a result of Trademarkia’s exclusive, extensive, continuous and nationwide

FIRST CLAIM FOR RELIEF

SEVENTH CLAIM FOR RELIEF

REQUEST FOR RELIEF

Respectfully submitted this Friday May 18, 2018.

LEGALFORCE RAPC WORLDWIDE P.C.

By/s/ Raj V. Abhyanker____

Respectfully submitted this Friday May 18, 2018.

LEGALFORCE RAPC WORLDWIDE P.C.

By/s/ Raj V. Abhyanker____

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Lawsuit, LegalForce Trademarkia v. LegalZoom, Inc. (Third Amended Complaint)

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Lawsuit, LegalForce Trademarkia v. LegalZoom, Inc. (Third Amended Complaint)

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RAJ V.

ABHYANKER, California SBN 233284

LEGALFORCE RAPC WORLDWIDE, P.C.

Attorneys for Plaintiff,

UNITED STATES DISTRICT COURT

LEGALFORCE, INC., Case No. 3:17-cv-07194-MMC

Plaintiff, THIRD AMENDED COMPLAINT FOR:

JURY TRIAL DEMANDED

Mark Reg. No. Ser. No. Goods/Services

Trademarkia 3965290 85126556 Advertising,

LegalForce 4227650 85483252 Legal services,

LegalForce Common law November 30, 2011 Website

4. As a result of Trademarkia’s exclusive, extensive, continuous and nationwide

FIRST CLAIM FOR RELIEF

SEVENTH CLAIM FOR RELIEF

REQUEST FOR RELIEF

Respectfully submitted this Friday May 18, 2018.

LEGALFORCE RAPC WORLDWIDE P.C.

By__​/s/ Raj V. Abhyanker​______

Respectfully submitted this Friday May 18, 2018.

LEGALFORCE RAPC WORLDWIDE P.C.

By__​/s/ Raj V. Abhyanker​______

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By/s/ Raj V. Abhyanker____

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