Tuesday, May 29, 2018

Claims to assist in filing for TM registrations are puffery, not claims about practicing law

LegalForce RAPC Worldwide, P.C. v. Trademark Information Int’l LLC, 2018 WL 2387637, No. 17-cv-07354-MMC (N.D. Cal. May 25, 2018)

LegalForce alleged that defendant TM411, usingTrademarks411.com, offers trademark filing services and engages in false advertising.  Two challenged statements, “Why Pay More?” and “America’s #1 Trademark System,” were puffery. LegalForce argued that the statements implied that TM411 provides its customers with legal advice, but didn’t plead facts supporting the claim that this inference reasonably would be drawn by consumers, particularly given its acknowledgement that TM411 “represents on its website that it does not practice law.”

As for that no-practice-of-law statement, LegalForce argued that it was false because TM411 has “list[ed] its email address as a trademark correspondent on at least 7,247 trademark applications, but failed to allege facts indicating that the use of “correspondent” is a representation that the user is an attorney or that consumers would think so.

LegalForce also challenged “[w]e guarantee your trademark gets filed, or your money-back [sic]” as allegedly misleading consumers that TM411 could file “any and all trademarks including ones that the customer does not own and fraudulent trademark applications.” This wasn’t literal falsity, but LegalForce failed to allege facts indicating that consumers had been deceived into believing that TM411 would submit fraudulent applications to the PTO.

Finally, LegalForce alleged that the statement that “your information is protected” was misleading because it “misleads consumers to believe that communications with [TM411] are protected by the attorney client privilege or attorney work product privilege.” Again, LegalForce failed to allege facts indicating consumer deception.

That took care of the Lanham Act claims; to the extent that state law claims were based on other conduct, as TM411’s having bought LegalForce’s “Trademarkia” as a Google AdWord; submitting “fraudulent specimens” to the USPTO; failing to maintain an IOLTA account for customers; and failing to regulate its non-practitioner assistants’ conduct, the court declined to exercise supplemental jurisdiction.

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