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LegalForce Loses Unfair Competition Suit Over Trademark Services

April 7, 2021, 3:41 PM

The law firm LegalForce RAPC Worldwide PC failed to show that it lost business to Trademark Express or that its employees are engaging in the practice of law, a California federal court said in rejecting the firm’s unfair competition claim.

LegalForce provides services to individuals and businesses seeking to register trademarks with the federal government. Chris DeMassa, doing business as Trademark Express, provides the same services. However, neither he nor his employees are attorneys.

LegalForce failed to prove Trademark Express was responsible for the firm’s decrease in revenue starting in 2015, according to the U.S. District Court for the Northern District of California.

Trademark Express’ prices are hundreds of dollars higher than LegalForce, and it’s more reasonable to infer that it lost customers as a result of “their dissatisfaction with the service they received,” the court said Tuesday.

LegalForce argues the manner in which Trademark Express employees help customers prepare applications and renewals and responds to the federal government’s actions amounts to the practice of law. The employees’ searches and preparation of search reports also constitutes the practice of law, the firm told the court.

While Trademark Express employees doing the searches aren’t engaged in “purely clerical work,” the expertise required is skilled work “traditionally performed by non-attorneys,” the court said.

As for the applications, the record doesn’t show DeMassa or any employees advised a customer that a proposed mark can’t be trademarked, according to the ruling. Making general statements that “descriptive words are not typically allowed to be registered” isn’t the practice of law, the court said.

Trademark Express doesn’t suggest how to describe a customer’s goods or services, and it doesn’t change the information provided by customers, except when recommended by an attorney, according to the ruling.

During the renewal process, the company provides customers with information previously provided to the federal government and lets the customer say whether they need to update ownership information or change the entity type. This interaction with customers doesn’t amount to the practice of law, the court said.

Judge Maxine M. Chesney issued the opinion.

LegalForce represented itself, joined by Raj Abhyanker PC of Mountain View, Calif. DeMassa represented himself.

The case is Legalforce RAPC Worldwide PC v. DeMassa, N.D. Cal., No. 18-cv-00043-MMC, 4/6/21.

To contact the reporter on this story: Maya Earls in Washington at mearls@bloomberglaw.com

To contact the editors responsible for this story: Rob Tricchinelli at rtricchinelli@bloomberglaw.com; Patrick L. Gregory at pgregory@bloomberglaw.com

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