Thursday, July 19, 2018

non-lawyer's purchase of "trademark attorney" as a keyword doesn't itself plausibly deceive consumers

LegalForce RAPC Worldwide P.C. v. Swyers, No. 17-cv-07318-MMC, 2018 WL 3439371 (N.D. Cal. Jul. 17, 2018)

LegalForce alleged that defendants operated “TTC Business Solutions,” providing “trademark related services,” and that they “engag[ed] in the unlawful practice of law” as well as in false advertising.  LegalForce further alleged that the USPTO prevented LegalForce from competing with defendants by enforcing its “regulations” and “rules” against LegalForce RAPC but not against defendants.

The false advertising claims had to satisfy Rule 9(b) because they used the words “false” and “misleading” [pause to note my disagreement with this idea, especially when trademark infringement claims don’t have to do so, but this is certainly a common result], and they didn’t because there wasn’t sufficient detail about where the statements were made (what part of the defendants’ website), etc. This disposed of claims based on the allegedly false “Created by Former USPTO Attorneys,” “Trusted by Over 100,000 Businesses Since 2003,”  and  “As featured in Time, Yahoo! Finance, and”

Additionally, the claim “#1 in Trademark Registrations,” absent further context, was puffery: a “general assertion[ ] of superiority” that lacks “the kind of detailed or specific factual assertions that are necessary to state a false advertising cause of action.” 

Claims based on defendants’ purchase of keywords related to the practice of trademark filing, including “trademark attorney” and “trademark lawyers,” were also dismissed.  Plaintiffs alleged that purchasing keywords including defendant’s website name “Trademarkia” led consumers to believe that they’d receive the same attorney-led trademark filing services from both parties. Again, the claims failed to satisfy 9(b) by, among other things, failing to identify the ad copy that allegedly misled consumers or falsely compared the parties.  Furthermore, plaintiffs’ theory that consumers who ended up on defendants’ website after searches for “trademark attorney,” “trademark lawyers,” or “Trademarkia” were likely to be deceived would require a a showing that the website was “likely to mislead consumers” into believing the website was affiliated with an attorney. But the complaint failed to allege sufficient facts to support such a finding, particularly given plaintiffs’ acknowledgement that the website states that the website operator “is not a law firm and,” that “its trademark filing service is not a legal service,” and that it “may not perform services performed by an attorney.”

The same fate awaited allegations that the “design” of the website has “substantially the same logo, look, feel, and trade dress” as a related entity’s website, which entity was a law firm, allegedly misleading consumers into “the false impression that the two websites are run by the same or similar entities or lawyers.”

Claims against the USPTO for deprivation of due process also failed.  Plaintiffs alleged that the USPTO has deprived LegalForce RAPC of its “right to engage in [its] chosen occupation,” which is “practicing trademark law,” by promulgating a number of regulations, and requiring LegalForce RAPC, but not defendants, to comply with them. Such a claim requires a plaintiff to show “first, that [it is] unable to pursue an occupation in the [chosen field], and second, that this inability is due to actions that were clearly arbitrary and unreasonable.” But LegalForce RAPC didn’t allege that it was unable to pursue the practice of trademark law; instead, plaintiffs alleged that it “has been the largest law firm filer of trademarks before the USPTO for the past five years.” So too with equal protection claims, which when based on an unequal enforcement theory require that “the selection was deliberately based upon an unjustifiable standard such as race, religion, or other arbitrary classification.” There were no such allegations.

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