Rocket Lawyer Incorporated v. The Pocket Lawyer Corporation

Filing 1

COMPLAINT for Declaratory Judgment of Non-Infringement of Trademark against The Pocket Lawyer Corporation ( Filing fee $ 350, receipt number 34611071493). DEMAND FOR JURY TRIAL. Filed byRocket Lawyer Incorporated. (far, COURT STAFF) (Filed on 3/8/2012) (Additional attachment(s) added on 3/8/2012: # 1 Criminal Cover Sheet) (far, COURT STAFF).

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OWEN, WICKERSHAM & ERICKSON, P.C.
LAWRENCE G. TOWNSEND CBN 88184
LINDSEY B. FURTADO CBN 275355
455 Market Street, Suite 1910
San Francisco, California 94105
Telephone:
415.882.3200
Facsimile:
415.882.3232
Email: [e-mail]
Email: [e-mail]
Attorneys for Plaintiff
ROCKET LAWYER IN CORPORATED

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E-fi\\ng

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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9seNo.
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115 5

COMPLAINT FOR DECLARATORY
JUDGMENT OF NON-INFRINGEM
OF TRADEMARK

Plaintiff,
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VS.

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The Pocket Lawyer Corporation,

DEMAND FOR JURY TRIAL

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Defendant.
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Plaintiff, Rocket Lawyer Incorporated ("Plaintiff'), as and for its complaint against De endant,
The Pocket Lawyer Corporation ("Defendant"), states as follows:

JURISDICTION AND VENUE

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1.

This is an action for a declaratory relief judgment that Plaintiff has not infringe any

valid trademark owned by Defendant, including registered trademark no. 3,733,289.

2.

This action arises under the trademark laws of the United States, 15 U.S.C. §§

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seq., and the declaratory judgment statute, 28 U.S.C. §§ 2201 et seq., and is based upon an im ediate

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and actual justiciable controversy between the parties with respect to Defendant's allegations t at

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Plaintiff has infringed one or more of its Trademarks.

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3.

This Court has jurisdiction pursuant to 28 U.S.C. §§ 1338(a), 2201 and 2202.

proper in this Court pursuant to 28 U.S.C. §§ 1391.

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COMPLAINT FOR DECLARATORY JUDGMENT, ETC.

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4.

Plaintiff is located in and operates its business in this judicial district and elsew ere.

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Defendant conducts business with customers in the Northern District, and its website is accessi le to

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and designed to reach customers in the Northern District.

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INTRADISTRICT ASSIGNMENT

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Intradistrict assignment is appropriate under Civil Local Rule 3-2(c) because thi is an

Intellectual Property Action.

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FIRST CAUSE OF ACTION

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Declaration of Non-Infringement of Trademark

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Plaintiff is a Delaware corporation having an address at 182 Howard Street #83 , San

Francisco, CA 94105.
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Plaintiff owns common law trademark rights to the name and mark ROCKET

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LAWYER, which Plaintiff has used in interstate commerce since at least as early as Novembe

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("Plaintiffs Mark.")

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8.

Plaintiff also owns U.S. trademark application no. 85/045,051 for the mark RO

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LAWYER used in connection with providing online lawyer referrals; cooperative advertising s rvices

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for lawyers; business management services for others, namely, online timekeeping for lawyers nd

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legal professionals, billing, electronic signature verification services provided in connection wi h legal

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services, and database management for others of a database comprised of legal documents and orms

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in International Class 035; Electronic storage of legal documents and forms in International Cl ss 039;

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Providing temporary use of online nondownloadable software for lawyers and legal profession Is, for

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use in online timekeeping for others, billing, electronic signature verification, and creation, pre armg,

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editing and database management of legal documents and forms; providing a website that give

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multiple computer users simultaneously the ability to upload, create and edit documents in

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International Class 042; Providing online information to lawyers and non-lawyers in the field flaw,

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customizable legal forms, legal self-help, and legal news and commentary; legal document ere tion,

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preparation, and editing via an interactive website on the Internet in International Class 045

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("Plaintiffs Application"). Plaintiffs first use date in commerce for these classes is Novembe 2006.

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9.

Upon information and belief, Defendant is or was a California corporation with
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COMPLAINT FOR DECLARATORY JUDGMENT, ETC.

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principal place of business at 19240 Nordhoff Street, C-1, Northridge, California 91324; Plaint ffis

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informed and believes, and therefore alleges, that Defendant's status as qualified to conduct b iness

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in California was forfeited in or before 2011. Defendant claims to be the owner of the purport d

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trademark THE POCKET LAWYER & Design, U.S. trademark registration no. 3,733,289

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("Defendant's Mark").

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10.

In a letter from Defendant's counsel to Plaintiffs counsel in the Northern Distri t,

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where Plaintiff is located, dated June 14, 2011, Defendant's counsel states that Defendant is th owner

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of trademark registration no. 3,733,289 covering Defendant's Mark, that Plaintiff is infringing

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Defendant's Mark, and that Plaintiff must, inter alia, cease all use of ROCKET LAWYER in

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connection with any printed products and legal services and withdraw Plaintiffs Application.

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On July 4, 2011 Defendant filed a Notice of Opposition in the United States Pat nt and

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Trademark Office before the Trademark Trial and Appeal Board calling for the refusal of Plai

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Application.

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Plaintiff denies that it is committing any acts of trademark infringement and de ies that

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a likelihood of confusion exists between Defendant's Mark and Plaintiffs Mark or Plaintiffs

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Application.

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As a result of Defendant's allegations and Notice of Opposition, Plaintiff is

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apprehensive that Defendant will file suit against Plaintiff for alleged infringement ofDefenda t's

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Mark.

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Accordingly, there is an immediate and actual justifiable controversy between t e

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parties with respect to Defendant's allegations that Plaintiff has infringed Defendant's Mark.

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is entitled to judgment declaring that Plaintiffs use of Plaintiffs Mark and the registration of

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Plaintiffs Application do not constitute trademark infringement or false designation of origin

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laintiff

the Lanham Act, 15 U.S.C. § 1051, et seq. and do not violate California law.

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WHEREFORE, Plaintiff prays that this Court:

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(a)

Declare that Plaintiffs use of Plaintiffs Mark does not infringe Defendant's M k;

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(b)

Declare that the registration of Plaintiffs Application does not infringe Defend nt's

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Mark;
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COMPLAINT FOR DECLARATORY JUDGMENT, ETC.

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(c)

Enter an Order declaring that Plaintiffs use of Plaintiff Mark does not constitut

trademark infringement or false designation of origin with regard to Defendant's Mark;
(d)

Enter an Order declaring that the registration of Plaintiffs Application does not

constitute trademark infringement or false designation of origin with regard to Defendant's M k;

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(e)

Award Plaintiff his costs and attorney's fees; and

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(f)

Grant such other relief as the Court deems just and appropriate.

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Respectfully submitted,

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Dated: March

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2012

OWEN, WICKERSHAM & ERICKSON, P.C

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t- "'...,-...J<._

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By: ____________________________-r
Lawrence G. Townsend
Lindsey B. Furtado

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Attorneys For Plaintiff

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Rocket Lawyer Incorporated

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DEMAND FOR JURY TRIAL

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Plaintiff hereby demands a trial by jury.

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Dated: March

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2012

OWEN, WICKERSHAM & ERICKSON, P.C

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B y : __ _
L-

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Lawrence G. Townsend
Lindsey B. Furtado

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Attorneys For Plaintiff

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s:\1 clients\rocket\7000 I \complaint. doc

Rocket Lawyer Incorporated

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COMPLAINT FOR DECLARATORY JUDGMENT, ETC.