Hello everyone and welcome to this Ethics Alert which will discuss the recent California federal lawsuit filed by Legalforce law firm which alleges, among other things, that nonlawyers at LegalZoom engaged in the practice of law on trademark applications. The case style is Legalforce RAPC Worldwide, P.C.et al v. LegalZoom.com, Inc., et al, Case No. 5:17-cv-07194-NC (U.S. District Court, Northern District of California-San Jose Division). The Complaint is here: https://www.scribd.com/document/367565873/Complaint-LegalForce-RAPC-v-LegalZoom
The lawsuit was filed in the California Northern District Court on December 19, 2017 by Legalforce, which states that it is “the largest law firm filer of trademarks before the USPTO in each of the last 5 years”. The Complaint alleges that LegalZoom has engaged in “unauthorized practice of law, false advertising, unfair competition and other claims with respect to preparation and filing of trademark applications” before the U.S. Patent and Trademark Office. The U.S. Patent and Trademark Office and the State Bars of Arizona, California and Texas are also named as defendants.
The lawsuit claims that the plaintiffs applied for two trademarks through LegalZoom and that the services provided constitute the practice of law. The complaint states that LegalZoom “trademark document specialists” who were not lawyers “provided legal advice to the plaintiffs by selecting classification and modifying the goods and services description from the template thereby applying specific law to facts.” The plaintiffs state that they recorded and transcribed relevant conversations with LegalZoom employees.
The lawsuit seeks a declaration that LegalZoom’s actions constitute the practice of law and that the company engages in false and misleading advertising and unfair competition, and requests a permanent injunction prohibiting LegalZoom from engaging in the practice of law and other acts, compensatory and punitive damages, and restitution.
Bottom line: This patent law firm is suing LegalZoom for, among other things, engaging in the unlicensed practice of law and false advertising in federal court. The lawsuit also names USPTO, a federal agency, and two state Bars as defendants. If the court ultimately grants the injunction and rules in favor of the law firm (or refuses to grant the injunction and rules in favor of LegalZoom), it would be a very significant development in this area.
Stay tuned…and be careful out there.
As always, if you have any questions about this Ethics Alert or need assistance, analysis, and guidance regarding ethics, risk management, or other issues, please do not hesitate to contact me.
Disclaimer: this e-mail is not an advertisement, does not contain any legal advice, and does not create an attorney/client relationship and the comments herein should not be relied upon by anyone who reads it.
Joseph A. Corsmeier, Esquire
Law Office of Joseph A. Corsmeier, P.A.
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Clearwater, Florida 33761
Office (727) 799-1688
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