LegalForce RAPC Worldwide, P.C. et al v. LegalZoom.Com, Inc. et al

Filing 1

COMPLAINT against All Defendants ( Filing fee $ 400, receipt number 0971-11963026.). Filed byLegalForce, Inc., Raj Abhyanker, LegalForce RAPC Worldwide P.C.. (Attachments: # 1 Exhibit Exhibits A-Z, # 2 Civil Cover Sheet Civil Cover Sheet)(Abhyanker, Raj) (Filed on 12/19/2017)

RAJ V. ABHYANKER​, California SBN 233,284
[e-mail]
BATKHAND ZOLJARGAL​, California SBN 262,918
[e-mail]
LEGALFORCE RAPC WORLDWIDE
1580 W. El Camino Real, Suite 10
Mountain View, California 94040
Telephone: [phone]
Facsimile: 650.989.2131
Attorneys for Plaintiffs,
LegalForce RAPC Worldwide, P.C.
LegalForce Inc., and Raj V. Abhyanker
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION
UNLIMITED JURISDICTION
1. LEGALFORCE RAPC
WORLDWIDE, P.C.;
2. LEGALFORCE INC.; and
3. RAJ V. ABHYANKER,

Case No. 5:17-cv-7194

Plaintiffs,

1. ​DECLARATORY
JUDGMENT;
2. UNREASONABLE
RESTRAINT OF TRADE IN
VIOLATION OF SECTION
1 of the SHERMAN ACT, 15
U.S.C. §1;
3. FEDERAL UNFAIR
COMPETITION;
4. CALIFORNIA FALSE AND
MISLEADING
ADVERTISING;
5. CALIFORNIA UNFAIR

COMPLAINT FOR:

v.
1. LEGALZOOM.COM, INC.;
2. LEGALZOOM LEGAL
SERVICES LTD.;
3. BRIAN P. Y. LIU;
4. EDWARD RICHARD
HARTMAN;
5. BRIAN S. LEE;
6. UNITED STATES PATENT &
TRADEMARK OFFICE;
7. THE STATE BAR OF
PLAINTIFFS’ COMPLAINT

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CALIFORNIA;
8. THE STATE BAR OF
ARIZONA; and
9. THE STATE BAR OF
TEXAS,

COMPETITION;
6. PROFESSIONAL
NEGLIGENCE; and
7. BREACH OF FIDUCIARY
DUTIES.

Defendants;

Unlimited Civil Jurisdiction

AND DOES 1-50.

JURY TRIAL DEMANDED

1. Plaintiffs LegalForce RAPC Worldwide, P.C., LegalForce, Inc., and Raj
V. Abhyanker (jointly, “LegalForce” or “Plaintiffs”) submit the following
complaint (the “Complaint”) against LegalZoom.com Incorporated and its
wholly owned subsidiary Legalzoom Legal Services Ltd. in the United Kingdom
(collectively, “LegalZoom”), its co-founder attorneys Brian P. Y. Liu, Edward
Richard Hartman, and suspended co-founder attorney Brian S. Lee. Plaintiffs
join necessary defendants the United States Patent & Trademark Office
(“USPTO”), the State Bar of California, the State Bar of Arizona, and the State
Bar of Texas.
NATURE OF ACTION
2.

This Complaint is brought by Plaintiffs to expose the willful and

systematic acts of unauthorized practice of law, false advertising and unfair
competition by LegalZoom with respect to preparation and filing of trademark
applications before the USPTO, and to establish that either licensed attorneys

PLAINTIFFS’ COMPLAINT

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should be able to compete on an equal playing field; or, in the alternative,
LegalZoom be enjoined from and pay damages for its unauthorized practice of
law, false advertising, unfair competition and other claims with respect to
preparation and filing of trademark applications before the USPTO.
THE PARTIES
The Plaintiffs
3. Plaintiff LegalForce RAPC Worldwide, P.C. (“LegalForce RAPC
Worldwide”) is a law firm wholly owned by Raj Abhyanker, a member in good
standing of the State Bar of California, and the United States Patent Bar. The
Firm practices patent and trademark law before the USPTO with a principal
place of business at 1580 W. El Camino Real Suite 10, Mountain View
California 94040, and a law office at 446 E. Southern Avenue Tempe Arizona
85282.
4. Plaintiff LegalForce, Inc. is a Delaware corporation offering law firm
automation and free trademark search services through its website
Trademarkia.com with a principal place of business at 1580 W. El Camino Real
Suite 9, Mountain View California 94040.
5. Plaintiff Raj Abhyanker is a California licensed attorney practicing patent
and trademark law before the USPTO with a principal place of business at 1580
W. El Camino Real Suite 10, Mountain View California 94040, is the sole

PLAINTIFFS’ COMPLAINT

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shareholder of Plaintiff LegalForce RAPC Worldwide and is a CEO of Plaintiff
LegalForce, Inc. Plaintiff Raj Abhyanker is a winner of the 2013 Legal Rebel
award by the American Bar Association.
The Defendants
6. LegalZoom.com, Inc. is a Delaware corporation (“LegalZoom”) with a
principal place of business at 101 N. Brand Blvd., Glendale CA 91203.
LegalZoom is not a law firm in the United States and is not authorized to
practice law in any state.

LegalZoom is not a registered or bonded legal

document assistant under California Business and Professions Code, sections
§6400 et seq.
7. LegalZoom Legal Services Ltd., is a foreign law firm (upon reason and
belief affiliated with the website ​www.legalzoom.co.uk​) with a principal place
of business at The Broadgate Tower, Third Floor, 20 Primrose Street, London,
EC2A 2RS, England. Upon reason and belief, LegalZoom Legal Services Ltd.
is a wholly owned subsidiary of LegalZoom.com, Inc.
8. Defendant Brian P. Y. Liu (“Liu”) is a co-founder and Chairman of
LegalZoom, and a licensed California attorney, having a principal place of
business at 14246 Valley Vista Blvd, Sherman Oaks, California 91423.
9. Defendant Edward Richard Hartman (“Hartman”) is a co-founder, Chief
Strategy Officer, and Chief Technology Officer of LegalZoom, and a licensed

PLAINTIFFS’ COMPLAINT

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California attorney, having a principal place of business at 1982 Dakin Ave,
Menlo Park, California 94025-6045.
10. Defendant Brian S. Lee (“Lee”) is a co-founder of LegalZoom, and a
suspended California attorney, having a principal place of business at 12181
Bluff Creek Drive, 5th Floor, Playa Vista, California 90094.
11. Defendant the United States Patent & Trademark Office (“USPTO”), a
branch of the United States Department of Commerce, is being added as a
necessary defendant as it governs the conduct of U.S. state licensed attorneys
and registered patent attorneys before the United States Patent & Trademark
Office, with a principal place of business at 600 Dulany Street, Alexandria VA
22314. The United States Patent & Trademark Office also maintains a Silicon
Valley office located at 26 S 4th St, San Jose, California 95112.
12.

Defendant the State Bar of California is the agency responsible

governing the conduct of the licensed attorneys and bringing enforcement
actions against entities engaging in the unauthorized practice of law in the State
of California. Accordingly, it is named as a necessary defendant as it governs
the conduct of California licensed attorneys, with a principal place of business at
180 Howard Street, San Francisco CA 94105.
13. Defendant the State Bar of Arizona is the agency governing the conduct
of licensed attorneys and bringing enforcement actions against entities engaging

PLAINTIFFS’ COMPLAINT

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in the unauthorized practice of law in the State of Arizona. Accordingly, it is
named as a necessary defendant as it governs the conduct of Arizona licensed
attorneys, with a principal place of business at 4201 N. 24th St., Suite 100,
Phoenix, AZ 85016-6266.
14. Defendant the State Bar of Texas is the agency governing the conduct of
licensed attorneys and bringing enforcement actions against entities engaging in
the unauthorized practice of law in the State of Texas. Accordingly, it is named
as a necessary defendant as it governs the conduct of Texas licensed attorneys,
with a principal place of business at 1414 Colorado Street, Austin, Texas 78701.
15. DOES 1-50 are entities that participated in the transactions complained
of herein in ways which are unknown to Plaintiffs. The true names, capacities,
nature, and extent of participation in the alleged activities by DOES 1-50,
inclusive, are unknown to Plaintiffs and therefore Plaintiffs sue these defendants
by such fictitious names. Plaintiffs will amend the complaint to allege their true
names and capacities when ascertained.
BACKGROUND OF THE PARTIES
16. Plaintiff LegalForce RAPC Worldwide is a law firm wholly owned by
Plaintiff Raj Abhyanker, a member in good standing of the State Bar of
California, and the United States Patent Bar.

The Firm practices patent and

trademark law before the USPTO with a principal place of business at 1580 W.

PLAINTIFFS’ COMPLAINT

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El Camino Real Suite 10, Mountain View California 94040, and a law office at
446 E. Southern Avenue Tempe Arizona 85282.
17. The website Trademarkia.com was created by the law firm of LegalForce
RAPC Worldwide in 2009 but was spun off into a separate entity. Plaintiff
LegalForce RAPC Worldwide is the sole provider of legal services through the
website Trademarkia.com with respect to trademark filings before the USPTO.
18. LegalForce RAPC Worldwide employs, full time, more than ten (10)
U.S. licensed trademark attorneys in its California and Arizona offices who
substantially limit their practice to trademark law before the USPTO, and who
are supported by legal support staff globally including in India, China, Poland,
the United Kingdom and South Africa.

LegalForce RAPC Worldwide

represents more than 10,000 clients from all over the United States and world,
including over a thousand clients from the State of California, hundreds of
clients in the State of Arizona, and over a thousand clients the State of Texas.
19. LegalForce RAPC Worldwide is the largest law firm filer of trademarks
before the USPTO in each of the last five years. The firm maintains interest on
Lawyer Trust Account (IOLTA) trust accounts for all client funds, conducts
robust conflict checks, and currently employs two former USPTO trademark
examining attorneys. It has never been disciplined by the USPTO, the State Bar
of California, the State Bar of Arizona, or the State Bar of Texas. At least two

PLAINTIFFS’ COMPLAINT

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of its former attorneys are currently hired as USPTO trademark examining
attorneys after leaving LegalForce RAPC, and a number of its former associate
attorneys or legal assistants have been hired in trademark and IP departments of
leading Big Law IP firms including Orrick, Perkins Coie, Pillsbury Winthrop,
DLA Piper, and Wilson Sonsini Goodrich & Rosati as well as in legal
departments at leading technology companies, including Google, Inc., Facebook,
Inc., and Apple, Inc.
20. Plaintiff LegalForce, Inc. is a Delaware corporation offering law firm
automation and free trademark search services through its website
Trademarkia.com with a principal place of business at 1580 W. El Camino Real
Suite 9, Mountain View California 94040. The Chief Executive Officer (CEO)
and co-founder of Plaintiff LegalForce, Inc. is Plaintiff Raj Abhyanker. Plaintiff
LegalForce, Inc. makes no revenue from preparation and filing on U.S.
trademark applications. It receives a flat monthly technology licensing revenue
from Plaintiff LegalForce RAPC Worldwide independent of the legal services
revenue secured by the firm LegalForce RAPC Worldwide through the
Trademarkia.com website.
21.

Plaintiff Raj Abhyanker is a California licensed attorney practicing

patent & trademark law before the USPTO with a principal place of business at
1580 W. El Camino Real Suite 10, Mountain View California 94040, is the sole

PLAINTIFFS’ COMPLAINT

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shareholder of Plaintiff LegalForce RAPC Worldwide and is a CEO of Plaintiff
LegalForce, Inc. In 2013, he was named an American Bar Association Journal
"Legal Rebel," an "annual honors program for the change leaders of the legal
1

profession" and a member of the Fastcase 50, an annual award that "recognizes
50 of the smartest, most courageous innovators, techies, visionaries, and leaders
2

in the law.”

22. LegalZoom, Inc. is a Delaware corporation (LegalZoom.com, Inc.) with
a principal place of business at 101 N. Brand Blvd., Glendale CA 91203.
LegalZoom also has a shuttered office address in this County of Santa Clara at
888 Villa Street #430, Mountain View, California 94041 (still listed on Google
local listings as of the filing of this Complaint), and another shuttered office in
3

this County of Santa Clara at 1911 Landings Drive, Mountain View, CA 94043 ,
which is incorrectly listed on LegalZoom’s HR page despite being closed for
months as of filing of this Complaint.
23. LegalZoom is not a law firm in the United States and is not authorized to
practice law in any state.

LegalZoom is not a registered or bonded legal

document assistant under California Business and Professions Code, sections
§6400 et seq. (​Exhibit M​, highlighted).

​http://www.abajournal.com/magazine/article/2013_legal_rebels_a_banner_year
​http://www.fastcase.com/fastcase50-winners-2013​.
3
​https://www.legalzoom.com/career-center/locations.html​ as of December 17, 2017. This URL lists
LegalZoom’s closed office in Mountain View as Innovation Center: Mountain View, CA, 1911 Landings Drive,
Mountain View, CA 94043.
1
2

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24. LegalZoom Legal Services Ltd., is a law firm (upon reason and belief
affiliated with the website ​www.legalzoom.co.uk​) with a principal place of
business at The Broadgate Tower, Third Floor, 20 Primrose Street, London,
EC2A 2RS, England. Upon reason and belief, LegalZoom Legal Services Ltd.
is a foreign law firm licensed to practice law in the United Kingdom under the
Alternative Business Structure (ABS) structure (​Exhibit G​). ​Upon reason and
belief, LegalZoom Legal Services Ltd. is a wholly owned subsidiary of
LegalZoom.com, Inc. For the purposes of this complaint, “LegalZoom” shall
refer to both Legalzoom.com, Inc. and LegalZoom Legal Services Ltd
collectively.
25. LegalZoom’s CEO John Suh has recently falsely implied, in its “chapter
3” of LegalZoom’s corporate evolution, that it can provide legal services in the
United States after it became a law firm in United Kingdom in 2015 when he
4

stated as much in an Ernst & Young interview and a similar interview with a
5

customer Bill Carmody in the United States less than a month earlier. Suh even
falsely explained that LegalZoom's law firm structure in the United Kingdom
enables the company to practice law in the United States to the New Hampshire
Bar while also boasting that LegalZoom has spent two years advertising their

4

LegalZoom exec reflects on the company’s evolution, on November 16, 2016,
https://www.youtube.com/watch?v=ORbZcMmDJOs&t=2m11s
5
John Suh, CEO of LegalZoom interview with Bill Carmody on October 21, 2016,
https://www.youtube.com/watch?v=aOKFr2XTbsE&t=12m52s
PLAINTIFFS’ COMPLAINT

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new “law firm” structure and how certain practice areas are entirely done with a
6

lawyer.

In reality, LegalZoom is not a law firm in the United States and is not

authorized to practice law in any state.

LegalZoom has become a law firm in

the United Kingdom only after acquiring a law firm in that country, following
deregulation of ownership of law firms in the United Kingdom in 2012.
(​Exhibit G​).
26. Moreover, LegalZoom has recently boasted that it has filed more than
two-hundred fifty thousand (250,000) trademarks before the United States Patent
& Trademark Office on behalf of customers. (Forbes article, October 9, 2017,
Exhibit M​). In addition, LegalZoom’s co-founder Brian P. Y. Liu admitted that
7

he created LegalZoom with his co-founder to provide legal services.
27. ​JURISDICTION AND VENUE

28. This Complaint arises under the laws of the United States, 15 U.S.C.
§1125 ​et seq. This Court has original jurisdiction of this action under 28 U.S.C.
§1331 because at least some of the claims alleged herein arise under federal law.
This Court has supplemental jurisdiction under 28 U.S.C. §1367 over any
non-federal claims because such claims are so related as to form part of the same
case or controversy. Moreover, Plaintiffs have standing to their California state

6

New Hampshire Bar Association Midyear Meeting held in Manchester, NH, on March 4, 2016,
https://www.youtube.com/watch?v=ClBpYWcc6jU&t=4m31s
7
The LegalZoom.com Story - From Making It! - MAKING IT! TV (Entrepreneur Success Stories), October 28,
2010, ​https://www.youtube.com/watch?v=CR-H1CnbZfw&t=2m48s​.
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claims under the California Business and Professions Code in accordance to
8

California appellate case law in ​Higbee v. Expungement Assistance Services​.

29. This Court has personal jurisdiction over LegalZoom because the
defendant solicits, transacts and does business in California and this District via
its website and toll-free telephone number, a substantial part of the wrongful acts
or omissions complained of herein occurred in this District, and the defendant is
subject to personal jurisdiction in this District.

LegalZoom purposefully

directed its activities toward this District when it willfully and specifically
targeted consumers here and a substantial part of the harm was felt in this
District.
30. Defendants Liu, Hartman, and Lee are all residents of California, and are
either licensed attorneys or suspended attorneys in the State of California.
31. Defendant United States Patent & Trademark Office maintains a regional
office in California in the County of Santa Clara, and its rules apply to attorneys
and law firms licensed in this state including Plaintiff Raj Abhyanker and
Plaintiff LegalForce RAPC Worldwide.
32. Defendant the State Bar of Arizona has no known presence in this state,

8

214 Cal. App. 4th 544 *; 153 Cal. Rptr. 3d 865 **; 2013 Cal. App, in which the court concluded that the
attorney alleged an identifiable trifle of injury sufficient to withstand a demurrer. The attorney alleged that he
suffered losses in revenue and asset value and was required to pay increased advertising costs specifically
because of the provider's unlawful business practices. To have standing under the UCL, the attorney was not
required to have engaged in business dealings with the provider. The court saw no reason why the alleged
violation of statutes concerning the unauthorized practice of law could not serve as a predicate for the attorney's
UCL action. According to the attorney, the provider's unlawful business practices had taken customers away
from him.
PLAINTIFFS’ COMPLAINT

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but is a necessary party to this litigation because Plaintiff LegalForce RAPC
Worldwide employs attorneys in the State of Arizona many of whom are
licensed to practice law in the State of Arizona. In addition, Plaintiff LegalForce
RAPC Worldwide has hundreds of clients in the state of Arizona for federal
trademark matters.
33. Defendant the State Bar of Texas has no known presence in this state,
but is a necessary party to this litigation because LegalZoom employs more than
100 employees in the State of Texas, including unlicensed trademark document
specialists, upon reason and belief.

In addition, Plaintiff LegalForce RAPC

Worldwide has over a thousand clients in the state of Texas for federal
trademark matters. Moreover, the State Bar of Texas regulates the conduct for
the practice of law in the State of Texas.
34. Venue is proper in the United States District Court for the Northern
District of California under 28 U.S.C. §§ 1391 (b) and (c).
ETHICS RULES RELEVANT TO ALL CLAIMS
I. DEFENDANT USPTO’S DEFINITION OF UNAUTHORIZED PRACTICE
OF LAW FOR TRADEMARK MATTERS BEFORE THE USPTO.
35.

Consulting with or giving advice to an applicant or registrant in

contemplation of filing a trademark application or application-related document.
(​Exhibit A​).

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36.

Preparing or prosecuting an application, response, post-registration

maintenance document, or other related document. (​Exhibit A​).
II. ​DEFENDANT USPTO’S DEFINITION OF LEGAL ADVICE FOR
TRADEMARK MATTERS BEFORE THE USPTO.
37. Conducting pre-filing searches for potentially conflicting trademarks.
(​Exhibit B​).
38. Analyzing or pre-approving documents before filing. (​Exhibit B​).
39. Advising applicants on substantive examination issues, such as the
acceptability of specimens and classification of goods and services. (​Exhibit B​).
III. APPLICABLE RULES AND REGULATIONS ON THE PRACTICE OF
LAW BEFORE THE USPTO.
USPTO RULES
40. 37 CFR §11.503 – Duty to supervise non-lawyers. ​With respect to a
non-practitioner assistant employed or retained by or associated with a
practitioner: (b) A practitioner having direct supervisory authority over the
non-practitioner assistant shall make reasonable efforts to ensure that the
person's conduct is compatible with the professional obligations of the
practitioner; and (c) A practitioner shall be responsible for conduct of such a
person that would be a violation of the USPTO Rules of Professional Conduct if
engaged in by a practitioner if: (1) The practitioner orders or, with the

PLAINTIFFS’ COMPLAINT

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knowledge of the specific conduct, ratifies the conduct involved.
41. 37 CFR §11.504 – A Law Firm Cannot Raise Venture Capital from
Non-Attorneys. ​With respect to a non-practitioner (d) A practitioner shall not
practice with or in the form of a professional corporation or association
authorized to practice law for a profit, if: (1) A non-practitioner owns any
interest therein, except that a fiduciary representative of the estate of a
practitioner may hold the stock or interest of the practitioner for a reasonable
time during administration.
42. 37 CFR §11.505 – Unauthorized Practice of Law. ​A practitioner shall
not practice law in a jurisdiction in violation of the regulation of the legal
profession in that jurisdiction, or assist another in doing so.
43. 37 CFR §11.107 – Conflict of interest.

​(a) ​Except as provided in

paragraph (b) of this section, a practitioner shall not represent a client if the
representation involves a concurrent conflict of interest. A concurrent conflict of
interest exists if: (1) The representation of one client will be directly adverse to
another client; or (2) There is a significant risk that the representation of one or
more clients will be materially limited by the practitioner's responsibilities to
another client, a former client or a third person or by a personal interest of the
practitioner.
44. 37 CFR §11.115 - IOLTA trust account. ​A practitioner shall hold

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property of clients or third persons that is in a practitioner's possession in
connection with a representation separate from the practitioner's own property.
Funds shall be kept in a separate account maintained in the state where the
practitioner's office is situated, or elsewhere with the consent of the client or
third person.
45. 37 CFR §11.18 – Signature and certification for correspondence filed
in the Office. ​(a) For all documents filed in the Office in patent, trademark, and
other non-patent matters, and all documents filed with a hearing officer in a
disciplinary proceeding, except for correspondence that is required to be signed
by the applicant or party, each piece of correspondence filed by a practitioner in
the Office must bear a signature, personally signed or inserted by such
practitioner, in compliance with § 1.4(d) or § 2.193(a) of this chapter.
46. There are other counterpart state court rules in before the California State
Bar, the State Bar of Arizona, the State Bar of Texas, all not reprinted here, with
largely similar restrictions.
///
CALIFORNIA CIVIL CODE
47. California Business and Profession §6125 – Unlawful Practice of
Law. No person shall practice law in California unless the person is an active
member of the State Bar.

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AMERICAN BAR ASSOCIATION RULES
48. ABA Model Rule 5.4(d) – Restriction on ownership of a law firm by
non-lawyers. A lawyer shall not practice with or in the form of a professional
corporation or association authorized to practice law for a profit, if: (1) a non
lawyer owns any interest therein, except that a fiduciary representative of the
estate of a lawyer may hold the stock or interest of the lawyer for a reasonable
time during administration; (2) a non lawyer is a corporate director or officer
thereof or occupies the position of similar responsibility in any form of
association other than a corporation; or (3) a non lawyer has the right to direct or
control the professional judgment of a lawyer.
49. Upon reason and belief, American Bar Association (ABA)’s model rules,
including, but not limited to, the restriction of ownership of law firms, have been
substantially adopted by the USPTO, the State of Bar of Arizona, and the State
Bar of Texas.

In addition, the ABA has sparked a debate over non-lawyer

ownership of law firms (​Exhibit Y​).
IV. LEGALZOOM SURREPTITIOUSLY VIOLATES UNAUTHORIZED
PRACTICE OF LAW RULES OF THE USPTO AND PROVIDES LEGAL
ADVICE TO CUSTOMERS FOR UNITED STATES TRADEMARKS.
50. Plaintiffs filed two trademark applications through the LegalZoom
website.

Email addresses of ​[e-mail] for customer RAJ

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ABHYANKER and ​[e-mail] were used for customer
LegalForce RAPC Worldwide (on behalf of Team Messaging Solutions, Inc.,
represented by attorney manager RYAN BETHEL).
51. Two real trademarks related to businesses of Plaintiffs, including
DRAWMARKIA and PIGGIEBANK were applied for federal registration
through the LegalZoom website.

Drawmarkia.com is an unincorporated a

startup project of Plaintiff Raj Abhyanker related to whiteboard animation
services for startups.

Team Messaging Solutions, Inc. is a Delaware C

Corporation funded by Plaintiff LegalForce RAPC Worldwide who's equity
shareholders include Ryan Bethell and Raj Abhyanker, and which operates the
website Piggiebank.com (​www.piggiebank.com​).

The conversations with

LegalZoom’s non-attorney Trademark Document Specialists were audio
recorded. Both Texas and Arizona (from where calls were made) are one party
recording states, as is federal law for interstate calls. A transcripts of these
recordings are found in ​Exhibit D for the DRAWMARKIA mark and ​Exhibit E
for the PIGGIEBANK mark.
52. For both of the prospective trademarks, DRAWMARKIA and
PIGGIEBANK, LegalZoom provided legal advice to Plaintiffs by selecting
classification and modifying the goods and services description from the
template thereby applying specific law to facts. (See ​Exhibit D and ​Exhibit E​,

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respectively). In addition, for the PIGGIEBANK mark, LegalZoom provided
legal advice as to which trademarks found in the search report may conflict with
the PIGGIEBANK trademark (​Exhibit E​).
53. Although LegalZoom represents on its website that it does not practice
law, this representation is false and/or misleading. LegalZoom collects both its
services fee of $199 for a non-attorney “peace of mind” review and $275 in
government fees in advance of filing. (​Exhibit V​). However, after a trademark
filing request is made on the LegalZoom website, LegalZoom surreptitiously
practices law per the USPTO definition in critical steps in which classification of
trademarks are determined, the description of goods and services are adjusted,
and search results are reviewed with customers.

To hide from regulators,

LegalZoom does not send any emails during a critical step of “class selection
and description modification step” (“Surreptitious Step”). It makes a note on its
website that there are “problems with your order” and robo-calls the number
listed on the trademark workflow. Upon reason and belief, the individuals who
LegalZoom routes to are non-lawyer “Trademark Document Specialists”.

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54. LegalZoom violates a number of clear boundaries for practice of law
during the Surreptitious Step, including:

Trademark Document Specialists at LegalZoom’s job description can be found in ​Exhibit C​. 1. Upon reason
and belief, LegalZoom has intentionally left this description vague to thwart challenges to its business model for
unauthorized practice of law. While the definition in ​Exhibit C ​leaves room for debate, the public job
description include “prepare trademark document ordered by LegalZoom customers” which very close to the
UPL definition on the USPTO website which includes “preparing or prosecuting an application”. (​Exhibit A)​.
9

PLAINTIFFS’ COMPLAINT

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a. Consulting with or giving advice to an applicant or registrant in
contemplation of filing a trademark application or application-related
document. (Exhibit A).
i.

With respect to the DRAWMARKIA mark, the non-lawyer

trademark document assistant named “Will” provided legal advice to the
applicant Plaintiff Raj Abhyanker who was contemplating filing a
trademark application for DRAWMARKIA.

LegalZoom representative

“Will” provided the legal advice when he modified the template
description in the ID Manual of the USPTO based on his legal
consultation with Plaintiff Raj Abhyanker.

Trademark document

assistant Will at LegalZoom also provided legal advice to Plaintiff Raj
Abhyanker by narrowing classes to Class 41 and Class 42, and ultimately
recommending to leave the class blank. Will also provided legal advice
when he recommended additional items to incorporate into the description
of goods and services. (​Exhibit D​).
ii.

With respect to the PIGGIEBANK mark, the non-lawyer

trademark document assistant named “Alex” gave legal advice to the
applicant Ryan Bethell, the attorney manager at LegalForce RAPC
Worldwide who was contemplating filing a trademark application for
PIGGIEBANK. LegalZoom representative “Alex” provided legal advice

PLAINTIFFS’ COMPLAINT

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when she modified the template description to match the ID Manual of the
USPTO based on her legal consultation with Ryan Bethell.

The

trademark document assistant at LegalZoom also provided legal advice to
the Ryan Bethell by advising that state and federal trademarks found in
the search report would not likely prevent registration of the
PIGGIEBANK trademark. (​Exhibit E​).
iii.

In addition, with respect to the PIGGIEBANK mark, a non-lawyer

trademark document assistant named “Robert” gave legal advice on the
relevance of potentially conflicting marks to Ryan Bethell. Specifically,
LegalZoom's agent, “Robert,” provided legal advice when he erroneously
advised that only similar marks that were within the same international
trademark classification of goods and services would pose any risk to
obtaining a federal trademark registration. (​Exhibit E​).
iv.

Furthermore, LegalZoom practiced law when it unilaterally

waived Plaintiffs Raj Abhyanker and LegalForce RAPC Worldwide’s
right to privacy with respect to the DRAWMARKIA and PIGGIEBANK
trademarks by having non-attorney staff sign off rights while paying
government fees by check box clicking off the following on the USPTO
government fee form shown in ​Exhibit W including : (1) Waiving
Plaintiffs Raj Abhyanker and LegalForce RAPC Worldwide’s right to

PLAINTIFFS’ COMPLAINT

21

cancel the filing or refund the government fee paid on their behalf; (2)
Waiving right to confidentiality of name, phone number, e-mail address,
and street address of Plaintiffs Raj Abhyanker and LegalForce RAPC
Worldwide with respect to their trademarks; and (3) Representing to the
federal government, without checking with Plaintiffs Raj Abhyanker and
LegalForce RAPC Worldwide, that LegalZoom has the authority to grant,
and is granting, the USPTO permission to make the information available
in its on-line database and in copies of the application or registration
record.
b.

Preparing or prosecuting an application, response,

post-registration maintenance document, or other related document.
(Exhibit A).
Particularly, non-lawyer assistants at LegalZoom prepared the trademark
application for DRAWMARKIA mark and PIGGIEBANK for filing without
attorney review.
c.

Conducting pre-filing searches for potentially conflicting

trademarks. (Exhibit B).
Particularly, non-lawyer assistants at LegalZoom prepared pre-filing
searches for potentially conflicting marks for DRAWMARKIA mark and
PIGGIEBANK without attorney review.

PLAINTIFFS’ COMPLAINT

22

d.

Analyzing or pre-approving documents before filing. (Exhibit

B).
Particularly, non-lawyer assistants at LegalZoom prepared pre-filing
searches for potentially conflicting marks for DRAWMARKIA mark and
PIGGIEBANK without attorney review.
e.

Advising applicants on substantive examination issues, such as

the acceptability of specimens and classification of goods and services.
i.

With respect to the DRAWMARKIA mark, the non-lawyer

trademark document assistant named “Will” provided legal advice to the
applicant Plaintiff Raj Abhyanker who was contemplating filing a
trademark application for DRAWMARKIA.

LegalZoom representative

“Will” provided legal advice when he modified the template description in
the ID Manual of the USPTO based on his legal consultation with Plaintiff
Raj Abhyanker.

The trademark document assistant Will at LegalZoom

also provided legal advice to Plaintiff Raj Abhyanker by narrowing
classes to Class 41 and Class 42, and ultimately recommending to leave
the class blank.

Will also provided legal advice when he recommended

additional items to incorporate into the description of goods and services.
(​Exhibit D​).
ii.

With respect to the PIGGIEBANK mark, the non-lawyer

PLAINTIFFS’ COMPLAINT

23

trademark document assistant named “Alex” gave legal advice to the
applicant Ryan Bethell, the attorney manager at LegalForce RAPC
Worldwide, who was contemplating filing a trademark application for
PIGGIEBANK. LegalZoom representative “Alex” provided legal advice
when she modified the template description to match the ID Manual of the
USPTO based on her legal consultation with Ryan Bethell.

The

trademark document assistant at LegalZoom also provided legal advice to
Ryan Bethell by advising that state and federal trademarks found in the
search report would not likely prevent registration of the PIGGIEBANK
trademark. (​Exhibit E​).
iii.

Further still, with respect to the PIGGIEBANK mark, a

non-lawyer trademark document assistant named “Robert” gave advice on
the relevance of potentially conflicting marks to Ryan Bethell.
Specifically, LegalZoom's agent, “Robert,” provided legal advice when he
erroneously advised that only similar marks that were within the same
international trademark classification of goods and services would pose
any risk to obtaining a federal trademark registration. (​Exhibit E​).
iv.

In addition, LegalZoom practiced law when it unilaterally waived

Plaintiffs Raj Abhyanker and LegalForce RAPC Worldwide’s right to
privacy with respect to the DRAWMARKIA and PIGGIEBANK

PLAINTIFFS’ COMPLAINT

24

trademarks by having non-attorney staff sign off rights while paying
government fees by check box clicking off the following on the USPTO
government fee form shown in ​Exhibit W including : (1) Waiving
Plaintiffs Raj Abhyanker and LegalForce RAPC Worldwide’s right to
cancel the filing or refund the government fee paid on their behalf; (2)
Waiving right to confidentiality of name, phone number, e-mail address,
and street address of Plaintiffs Raj Abhyanker and LegalForce RAPC
Worldwide with respect to their trademarks; and (3) Representing to the
federal government, without checking with Plaintiffs Raj Abhyanker and
LegalForce RAPC Worldwide, that LegalZoom has the authority to grant,
and is granting, the USPTO permission to make the information available
in its on-line database and in copies of the application or registration
record.
55. Upon reason and belief, LegalZoom performs the “Surreptitious Step” to
ensure that it does not file ineffectual trademark applications that are highly
likely to get rejected by the USPTO.

It seems, upon reason and belief,

LegalZoom’s non-lawyer staff are well trained to provide this legal advice.
56. Upon reason and belief, after LegalZoom’s Trademark Document
Specialists provide critical legal advice during this Surreptitious Step, the mark
proceeds to the “trademark search” phase. This “trademark search” phase is

PLAINTIFFS’ COMPLAINT

25

again performed non-lawyer staff without review by licensed attorneys in
violation of the USPTO’s practice of law definition in ​Exhibits A and B​. After
the search is delivered by non-attorney staff to the customer, the phone support
of LegalZoom in the post trademark search step sometimes provide legal advice
by advising customers by giving them advice as to which specific trademarks in
the search report are more likely to block a registration. (​Exhibit E​).
57. Upon reason and belief, after the customer approves, LegalZoom enters
the customer’s information directly into the USPTO website and requests a link
from the USPTO to the signature form using an internal LegalZoom
non-attorney staff’s email ID. (​Exhibit F​). Upon reason and belief, LegalZoom
then repackages this link and sends it to the customer in a templated email
including the USPTO link.

After the customer signs the USPTO link,

LegalZoom’s non-lawyer staff again go to a different USPTO link emailed to
LegalZoom by the USPTO which expressly waives each customer’s right to
privacy and has LegalZoom attest that LegalZoom has the authority to grant the
USPTO permission to make information submitted available on its online
database regardless of the underlying copyrights.

On this same form,

LegalZoom pays the government fee to the USPTO on its own LegalZoom
credit card and/or deposit account with the USPTO. Upon reason and belief,
LegalZoom does not refund $50 of the collected $275 government fee collected

PLAINTIFFS’ COMPLAINT

26

through its website if the non-lawyer staff at LegalZoom determine that the
trademark qualifies as a TEAS Plus application with the lower filing fee of $225.
58. Moreover, upon reason and belief, LegalZoom maintains no client trust
account (IOLTA account) for trademark matters, uses non-lawyer assistants to
evaluate specimens of use in commerce for authenticity, and performs no
conflict checks against other customers.
59. LegalZoom has raised more than three-hundred million ($300 million) in
venture capital (​Exhibit G​), something that Plaintiff LegalForce RAPC
Worldwide as a law firm cannot do without violating ethical rules of the USPTO
10

and State Bar rules.

LegalZoom even boasts in its advertising with customer

quotes hinting that they received legal advice surreptitiously when it quotes
customer Jeremy Hudson “instead of expensive meetings at a law office,
LegalZoom’s website and a few helpful phone calls had me on my way to a
trademark approval” (​Exhibit G​).

Moreover, LegalZoom’s CEO boasted that

“we finally shut down the unauthorized practice of lawsuit” and “it cost $16

​ CFR §11.504 and ABA Model Rule 5.4(d), reprinted here. – A Law Firm Cannot Raise Venture Capital
from Non-Attorneys. ​With respect to a non-practitioner (d) A practitioner shall not practice with or in the form
of a professional corporation or association authorized to practice law for a profit, if: (1) A non-practitioner owns
any interest therein, except that a fiduciary representative of the estate of a practitioner may hold the stock or
interest of the practitioner for a reasonable time during administration. ​ABA Model Rule 5.4(d) – Restriction
on ownership of a law firm by non-lawyers.​ A lawyer shall not practice with or in the form of a professional
corporation or association authorized to practice law for a profit, if: (1) a non lawyer owns any interest therein,
except that a fiduciary representative of the estate of a lawyer may hold the stock or interest of the lawyer for a
reasonable time during administration; (2) a non lawyer is a corporate director or officer thereof or occupies the
position of similar responsibility in any form of association other than a corporation ; or (3) a non lawyer has the
right to direct or control the professional judgment of a lawyer.
10

PLAINTIFFS’ COMPLAINT

27

11

million dollars over 11 years” , and when asked “what is it that you had to stop
doing”, LegalZoom’s CEO defiantly responded “​Nothing​”.

12

60. In contrast, as a law firm, Plaintiff LegalForce RAPC Worldwide and its
licensed attorneys must conduct conflict checks with existing clients prior to
13

taking on representation of prospective clients.

It must place client funds in an
14

IOLTA trust account prior to work being started.

It must hire U.S. licensed

attorneys to counsel clients on trademark classification selection, modifying
description of goods and services, and reviewing specimens provided by its
clients for completeness and applicability to the selected classification.

15

61. If Plaintiff LegalForce RAPC Worldwide and its licensed attorneys were
to adopt a similar model as LegalZoom, it is very likely that the firm and its
licensed attorneys would be disbarred and/or excluded from practicing law by

​Collision Conference interview​, May 5, 2016, New frontiers and how to tackle them - John Suh & Jonathan
Krim,​ ​https://www.youtube.com/watch?v=pHK21ta6yQI&t=4m40s
11

​Collision Conference interview​, May 5, 2016, New frontiers and how to tackle them - John Suh & Jonathan
Krim, ​https://www.youtube.com/watch?v=pHK21ta6yQI&t=4m55s
12

​37 CFR §11.107 – Conflict of interest. ​(a)​ ​Except as provided in paragraph (b) of this section, a practitioner
shall not represent a client if the representation involves a concurrent conflict of interest. A concurrent conflict of
interest exists if: (1) The representation of one client will be directly adverse to another client; or (2) There is a
significant risk that the representation of one or more clients will be materially limited by the practitioner's
responsibilities to another client, a former client or a third person or by a personal interest of the practitioner.
13

​37 CFR §11.115 - IOLTA trust account.​ A practitioner shall hold property of clients or third persons that is
in a practitioner's possession in connection with a representation separate from the practitioner's own property.
Funds shall be kept in a separate account maintained in the state where the practitioner's office is situated, or
elsewhere with the consent of the client or third person.
14

​California Business and Profession §6125​ – ​Unlawful Practice of Law​. No person shall practice law in
California unless the person is an active member of the State Bar. ​37 CFR §11.505​ ​– Unauthorized Practice of
Law.​ A practitioner shall not practice law in a jurisdiction in violation of the regulation of the legal profession in
that jurisdiction, or assist another in doing so.
15

PLAINTIFFS’ COMPLAINT

28

the USPTO, the State Bar of California, the State Bar of Arizona, and/or the
State Bar of Texas.
62. This is a real threat.

Recently, Matthew Swyers (“Swyers”), a former

USPTO trademark examining attorney in private practice and founder of The
Trademark Company, was excluded for practice by the USPTO for the conduct
similar to LegalZoom’s (​Exhibit H​).

In addition, another attorney Tracy W.

Druce (“Druce”) was suspended for failure to supervise assistants even though
the lawyer did not know of the conduct of his assistants signing documents on
his behalf (​Exhibit I​).

Moreover, the USPTO also excluded from practice

Leonard Tachner (“Tachner”), who, like Defendant Brian S. Lee, was a
suspended attorney whose corporation prepared and filed trademark applications
while he was suspended on the grounds of unauthorized practice of law.
(​Exhibit J​).
63. Unlike Swyers, Druce, and Tachner, upon reason and belief, the USPTO
and State Bars take no similar action against LegalZoom and their co-founders
because of LegalZoom’s vast financial resources to fight the State Bars and
because they do not have attorneys whose licenses the State Bars or the USPTO
can exclude. This double standard is a great injustice that harms both attorneys
and the public at large. Attorneys who have spent years going through law
school, taking a difficult bar exam, maintaining an IOLTA trust account, and

PLAINTIFFS’ COMPLAINT

29

performing conflict checks ​cannot effectively compete against non-law firm
competitors like LegalZoom on an even playing field. (​Exhibit K​). It also
lowers the standard of service to the public because LegalZoom customers rely
on the legal advice given by non-attorneys.

For these reasons, declaratory

judgment is sought against LegalZoom, or in the alternate, an injunction and
damages for antitrust, false advertising, unfair competition, malpractice, and
other causes of action.
V. LEGALZOOM’S MISLEADING GOOGLE, BING, AND OTHER
ONLINE ADVERTISING IS DAMAGING TO PLAINTIFFS’ GOODWILL
AND MISLEADING TO THE PUBLIC WITH FALSE COMPARISONS TO
ATTORNEY LED SERVICES, AS SUCH ACTIONS CAUSING
IRREPARABLE HARM TO PLAINTIFFS.
64. Plaintiff LegalForce RAPC Worldwide and Defendant LegalZoom are the
largest purchasers of online advertising including on Google and Bing per month
for “trademark filing” related search terms, exceeding monthly advertising spend
of over one-hundred thousand dollars per month ($100,000/month).
65. Upon reason and belief, LegalZoom’s non-attorney “peace of mind”
trademark filing service has threatened, and continues to threaten, Plaintiff
LegalForce RAPC’s business directly by outbidding Plaintiff LegalForce RAPC
Worldwide on Google and Bing for the keywords during the year 2017 and

PLAINTIFFS’ COMPLAINT

30

achieving a higher impression share and average position on search engines,
when it is not itself a law firm. (​Exhibit L​).
66. LegalZoom is not a law firm or authorized to practice law in any state.
LegalZoom is not a registered or bonded legal document assistant under
California Business and Professions Code, sections §6400 et seq.
67. Despite not being a law firm and despite not hiring any attorneys
representing external clients, LegalZoom purchases advertisements whenever
consumers search terms related to the practice of trademark law including
“trademark attorney” (​Exhibit N​) and “trademark lawyer” (​Exhibit O​). The
advertising copy in the resulting advertisements is highly misguiding, leading a
consumer to believe that he or she will be represented by an attorney.
68. Perhaps even more egregious is LegalZoom’s purchase of advertising
directly targeting the Plaintiffs. (​Exhibit Q​). LegalZoom directly purchases
uniquely positioned advertisements on Google and other forms of online
advertising whenever consumers search the names of the Plaintiffs’ businesses,
including “LegalForce” and even the Plaintiff Raj Abhyanker’s personal name
“Raj Abhyanker”. (​Exhibit Q​).

Upon reason and belief, advertising copy of

these advertisements intentionally and maliciously targets the Plaintiffs.
Moreover, upon reason and belief, LegalZoom’s advertising targeting the
Plaintiffs is unique to any other advertisement, and purposefully designed to

PLAINTIFFS’ COMPLAINT

31

draw false comparisons and to mislead consumers. Particularly, in such ads,
LegalZoom writes “Avoids Costly Conflicts” to mislead customers by implying
that Plaintiffs’ conflict checks are harmful to them.
69. In contrast, rules for mandatory conflict checks, attorney client privilege,
and storing client funds in IOLTA accounts have been adopted by every State
Bar, for the explicit purpose of protecting clients. LegalZoom boasts about
eschewing these long standing client protections. While not having power of
attorney, not holding attorney client privilege, and not conducting conflict
checks, yet still providing legal advice, LegalZoom’s advertising copy is
explicitly designed to wrongfully imply that avoiding conflict checks is a benefit
to clients.
70. Further, LegalZoom attempts to misdirect traffic from landing pages
related to its “attorney led” service to its “peace-of-mind” non-attorney service
(​Exhibit V​) by linking its attorney-led advertising copy to its non-attorney led
services.

This is true even when the text in LegalZoom’s advertisements

mentions the attorney guided service16 in ​Exhibits N, O and P​.

Despite the

text, a potential customer searching in Google for a trademark attorney in the
United States is redirected to LegalZoom’s non-attorney “peace of mind landing
page”.

Upon reason and belief, Defendant LegalZoom deceptively geo-targets

16

LegalZoom also offers a $799 or $599 + government attorney guided service for trademark filings through
Dunlap, Bennett & Ludwig PLLC, upon reason and belief. However, this instant complaint only seeks clarity on
Defendant LegalZoom’s $199 + government fee “peace of mind” non-attorney trademark filing service.
PLAINTIFFS’ COMPLAINT

32

these ads for “trademark attorney” for audiences searching through browsers in
the United States based on Internet Protocol (IP) address using Google’s
AdWords tools.
71. For example, the Google text in ​Exhibit N ​having the text “File Your
Application With the Help of An Independent Trademark Attorneys”, and
Exhibit P ​having the text “Speak to an Attorney” is linked to LegalZoom’s non
attorney landing page in ​Exhibit R and linked below at URL offering “peace of
mind review” and trademark filings for $199 + ​government fees, and consultation
​
with a licensed attorney only if a user signs up for a legal plan for $29.99 a
month, and not for a licensed trademark attorney to handle the initial filing17,
rather than the landing page for attorney service offered by LegalZoom at $799
or $599 + government fees18, which is shown in ​Exhibit S​.
72. Similarly, LegalZoom’s own website page “Do you Need a Lawyer to
File a Trademark” (​Exhibit T​) has a large orange link at the bottom saying
“Learn more about attorney-led trademark registration” which misdirects to a
different non-lawyer “peace of mind” service landing page (​Exhibit U​) instead

17

https://www.legalzoom.com/sem/ip/trademark.html?kid=3b4071e7-6eee-4394-98ac-9020b6c73fe6&utm_sourc
e=bing&utm_medium=cpc&utm_term=trademark_lawyer&utm_content=3b4071e7-6eee-4394-98ac-9020b6c73f
e6&utm_campaign=IP_|_Trademark
18

https://www.legalzoom.com/business/intellectual-property/trademark-registration-overview-a.html?gclid=CIr1w9_u7s4CFV
RwvAodJXsEHQ
And....
https://www.legalzoom.com/business/intellectual-property/trademark-registration-overviewc.html?utm_source=abandoner&u
tm_medium=email&utm_campaign=Trademark_Abandoner_2_20170418
PLAINTIFFS’ COMPLAINT

33

of the attorney led service.19
73. This wording is written directly above the text falsely states :
“LegalZoom can help. LegalZoom's attorney-led trademark registration services
allow you to register a trademark with the help of an attorney. With attorney-led
trademark services, an attorney will contact you to learn more about your
product or service and begin a comprehensive trademark search. Once an
attorney has reviewed your information and prepared your trademark
application, he/she will send it to you to approve. Your team of attorneys will be
there to answer your questions, monitor the progress of your application, and
take action when necessary.”20
74. The misdirected "peace of mind" landing page in ​Exhibit U further
admits to the practice of law when it states "We perform a trademark search,
create your trademark application, and file the application with the USPTO. The
USPTO will review your application and make a decision whether to approve it
or not and you will be notified of their decision" related to the non-attorney
service.” (​Exhibit U​).
75. Upon reason and belief, LegalZoom intentionally misdirects this traffic to
its “peace of mind” service because LegalZoom makes more money from the
“peace of mind” service instead of the “attorney led service”. Similarly, upon

19

20

​https://www.legalzoom.com/articles/do-you-need-a-lawyer-to-file-a-trademark

​https://www.legalzoom.com/articles/do-you-need-a-lawyer-to-file-a-trademark
PLAINTIFFS’ COMPLAINT

34

reason and belief, LegalZoom intentionally misleads customers and the public to
deprive Plaintiff LegalForce RAPC Worldwide of equal competition with
LegalZoom in order to get higher cost per conversion rates on paid search.
CAUSES OF ACTION
FIRST CLAIM FOR RELIEF
DECLARATORY JUDGMENT
(​Against All Defendants and DOES 1-50​)
76. Plaintiffs incorporate herein by reference paragraphs ​1-75​ above.
77. An actual controversy has arisen and now exists between Plaintiffs and
Defendants LegalZoom, Liu, Hartman, and Lee regarding LegalZoom’s unfair
business practices and corporate ownership structure, false advertising,
professional negligence, breach of fiduciary duty, and unauthorized practice of
law.
78. An actual controversy has arisen and now exists between Plaintiffs and
Defendant USPTO regarding USPTO’s rules disallowing Plaintiffs to operate as
a trademark filing service in the same manner as LegalZoom with its
non-attorney “peace of mind” trademark filing service because of advice the
Plaintiffs have received through outside counsel. Plaintiffs have sought and
received ethics counsel from highly respected USPTO ethics counsel21,

From ​Michael McCabe​, attorney specializing in ethics before the USPTO, ABA Business Law Section
Professional Responsibility Committee member (2010 – Present)
https://www.ipethicslaw.com/about/michael-mccabe/
21

PLAINTIFFS’ COMPLAINT

35

California ethics counsel22, and Arizona ethics counsel23 informing them they
cannot adopt the LegalZoom’s “peace of mind” trademark filing service and
trademark model of LegalZoom including but not limited to (1) modifying goods
and services, (2) selecting trademark classification, (3) paying government fees,
(4) signing off rights of privacy, and (5) disclaiming copyrights, and/or (6)
signing trademark forms at the USPTO on behalf of end users without
conducting conflict checks and without having attorney review and sign off,
without risking violations of unauthorized practice of law rules and laws of the
USPTO, the State Bar of California, the State Bar of Arizona, and the State Bar
of Texas. Moreover, outside counsel has informed Plaintiffs that the State Bar
of California and the USPTO will not likely to provide guidance in advance of
changing operating models.
79. In the alternate, an actual controversy has arisen and now exists between
Plaintiffs and Defendant USPTO regarding USPTO’s failure to prevent
LegalZoom from operating its business for the purpose of filing trademark
applications before the USPTO and to be unfairly complicit with LegalZoom by
assisting LegalZoom’s unauthorized practice of law[1] by knowingly sending to

From ​Wendy Wen Yun Chang​, past chair of the State Bar of California's Standing Committee on
Professional Responsibility and Conduct, member of the American Bar Association's Standing Committee on
Ethics and Professional Responsibility, Certified Specialist in Legal Malpractice Law by the State Bar of
California's Board of Legal Specialization, and former advisor to the State Bar of California's Commission for
the Revision of the Rules of Professional Conduct ​https://www.hinshawlaw.com/attorneys-Wendy-Chang.html
23
​Linda C. Shely​, former State Bar of Arizona’s Director of Lawyer Ethics for ten years, answering
approximately 8000 ethics calls each year and drafting dozens of written ethics advisory opinions published by
the Arizona State Bar Ethics Committee. ​http://shelylaw.com/lynda-shely/
22

PLAINTIFFS’ COMPLAINT

36

LegalZoom links to fill out its USPTO forms on behalf of LegalZoom’s
customers (​Exhibit F​) and sign away rights of LegalZoom’s customers while
paying government fees on behalf of LegalZoom’s customers using a credit
card and/or deposit account directly on the USPTO’s website (​Exhibit W​).
80. An actual controversy has arisen and now exists between Plaintiffs and
the State Bar of California

regarding the State Bar of California’s rules

disallowing Plaintiffs to operate as a trademark filing service in the same manner
as LegalZoom with its non-attorney “peace of mind” trademark filing service.
In the alternate, an actual controversy has arisen and now exists between
Plaintiffs and the State Bar of California regarding the State Bar of California’s
failure to prevent LegalZoom from operating its business for the purpose of
filing trademark applications before the USPTO and failure to take action
against LegalZoom for unauthorized practice of law.
81. An actual controversy has arisen and now exists between Plaintiffs and
the State Bar of Arizona regarding the State Bar of Arizona’s rules disallowing
Plaintiffs to operate as a trademark filing service in the same manner as
LegalZoom with its non-attorney “peace of mind” trademark filing service. In
the alternate, an actual controversy has arisen and now exists between Plaintiffs
and the State Bar of Arizona regarding the State Bar of Arizona’s failure to
prevent LegalZoom from operating its business for the purpose of filing

PLAINTIFFS’ COMPLAINT

37

trademark applications before the USPTO and failure to take action against
LegalZoom for unauthorized practice of law.
82. An actual controversy has arisen and now exists between Plaintiffs and
the State Bar of Texas regarding the State Bar of Texas’s rules disallowing
Plaintiffs to operate as a trademark filing service in the same manner as
LegalZoom with its non-attorney “peace of mind” trademark filing service. In
the alternate, an actual controversy has arisen and now exists between Plaintiffs
and the State Bar of Texas regarding the State Bar of Texas’s failure to prevent
LegalZoom from operating its business for the purpose of filing trademark
applications before the USPTO and failure to take action against LegalZoom for
unauthorized practice of law.
83. As a California licensed law firm and a California licensed attorney,
Plaintiffs LegalForce RAPC Worldwide and Raj Abhyanker have built robust
practices to conduct conflict checks for client trademark matters, have had to
maintain legal malpractice insurance, and have had to employ U.S. licensed
attorneys to review and sign off on trademark matters filed before the United
States Patent & Trademark Office to avoid unauthorized practice of law
challenges to their business.
84. By not operating as a law firm, upon reason and belief, LegalZoom
conducts no conflict checks for client trademark matters, has not had to maintain

PLAINTIFFS’ COMPLAINT

38

legal malpractice insurance, and has not had to employ U.S. licensed attorneys to
review and sign off on trademark matters filed before the USPTO to avoid
unauthorized practice of law challenges to its business for its non-attorney
“peace of mind” non-attorney trademark filing service.
85. Being substantially owned by attorney Raj Abhyanker, Plaintiff
LegalForce, Inc. has been unable to adopt the model of LegalZoom for its
non-attorney “peace of mind” non-attorney trademark filing service to file
trademark applications before the United States Patent & Trademark Office and
raise external capital without exposing itself to unauthorized practice of law
challenges to its business and Chief Executive Officer Raj Abhyanker. (See
Exhibit Z​).
86. Plaintiffs have sought and received ethics counsel from highly respected
USPTO ethics counsel24, California ethics counsel25, and Arizona ethics counsel
26

informing them they cannot adopt the LegalZoom’s “peace of mind”

trademark filing service and trademark model of signing trademark forms at the
USPTO on behalf of end users without conducting conflict checks and without

From ​Michael McCabe​, attorney specializing in ethics before the USPTO, ABA Business Law Section
Professional Responsibility Committee member (2010 – Present)
https://www.ipethicslaw.com/about/michael-mccabe/
25
From ​Wendy Wen Yun Chang​, past chair of the State Bar of California's Standing Committee on
Professional Responsibility and Conduct, member of the American Bar Association's Standing Committee on
Ethics and Professional Responsibility, Certified Specialist in Legal Malpractice Law by the State Bar of
California's Board of Legal Specialization, and former advisor to the State Bar of California's Commission for
the Revision of the Rules of Professional Conduct ​https://www.hinshawlaw.com/attorneys-Wendy-Chang.html
26
​Linda C. Shely​, former State Bar of Arizona’s Director of Lawyer Ethics for ten years, answering
approximately 8000 ethics calls each year and drafting dozens of written ethics advisory opinions published by
the Arizona State Bar Ethics Committee. ​http://shelylaw.com/lynda-shely/
24

PLAINTIFFS’ COMPLAINT

39

having attorney review and sign off, without risking violations of unauthorized
practice of law rules and laws of the USPTO, State Bar of California, the State
Bar of Arizona, and the State Bar of Texas.
87. Plaintiffs have been informed by USPTO, California ethics counsel, and
Arizona ethics counsel that the USPTO, the State Bar of California, and the State
Bar of Arizona would not provide any advance guidance as to whether Plaintiffs
could adopt LegalZoom’s non-attorney “peace of mind” trademark filing service
model, and the State Bar of California and the USPTO had to date not taken any
action against LegalZoom because, upon reason and belief, they are presumably
afraid of the financial clout of LegalZoom. Upon reason and belief, the USPTO
knows full well how many U.S. trademarks are processed by LegalZoom as
LegalZoom receives a link to sign each trademark through an internal email
address of LegalZoom directly from the USPTO, prior to forwarding it on to its
customers, and collects government fees directly from LegalZoom’s bank
accounts.
88. For this reason, Plaintiffs seek declaratory judgment from this Court
because LegalZoom continues to threaten Plaintiffs by outbidding them on
online advertising for words related to “trademark filing” and “trademark
attorney” with its non-attorney “peace of mind” trademark filing service while
Plaintiffs have no recourse to compete without this Court providing clarity via

PLAINTIFFS’ COMPLAINT

40

this declaratory judgment action and instant causes of action.

Plaintiffs have

not been able to compete on an equal playing field with LegalZoom with its
non-attorney “peace of mind” trademark filing service and are being denied
equal protection in practicing their profession and for this reason seek this
declaratory judgment.
89. Upon reason and belief, per the Plaintiffs’ ethics counsel27, the USPTO,
the State Bar of California, the State Bar of Arizona, and the State Bar of Texas
all refuse to take action against LegalZoom because it is not a law firm and has
no lawyers representing clients practicing in a jurisdiction in which they have
enforcement powers.

This seems illogical to Plaintiffs as LegalZoom has a

co-founder, a Chief Strategy Officer, and Chief Technology Officer Eddie
Hartman who is a member of the California Bar (despite never having gone to
law school under the “Law Office Study Program”, Bar #275,541), co-founder
and Chairman Brian P. Y. Liu who is a member of the California Bar (Cal Bar
#186,352), and Brian Sung Lee (suspended attorney, Cal Bar #188,280), but the
State Bars and USPTO have declined to scrutinize their practice, upon reason

From ​Wendy Wen Yun Chang​, past chair of the State Bar of California's Standing Committee on
Professional Responsibility and Conduct, member of the American Bar Association's Standing Committee on
Ethics and Professional Responsibility, Certified Specialist in Legal Malpractice Law by the State Bar of
California's Board of Legal Specialization, and former advisor to the State Bar of California's Commission for
the Revision of the Rules of Professional Conduct ​https://www.hinshawlaw.com/attorneys-Wendy-Chang.html​ ,
Linda C. Shely​, former State Bar of Arizona’s Director of Lawyer Ethics for ten years, answering approximately
8000 ethics calls each year and drafting dozens of written ethics advisory opinions published by the Arizona
State Bar Ethics Committee. ​http://shelylaw.com/lynda-shely/​ , & ​Michael McCabe​, attorney specializing in
ethics before the USPTO, ABA Business Law Section Professional Responsibility Committee member (2010 –
Present) ​https://www.ipethicslaw.com/about/michael-mccabe/
27

PLAINTIFFS’ COMPLAINT

41

and belief.
90. Plaintiffs seek Declaratory Judgement on the following assertions :
a.

A licensed attorney is permitted to employ non-lawyer assistants to

recommend and advise on selection of classifications of goods and services for
trademark applications sought to be filed with the USPTO directly to customers,
modify standard descriptions from the USPTO ID manual directly for customers,
and pay government fees on behalf of customers who are not represented by a
lawyer.
b.

A licensed law firm is permitted to employ non-lawyer assistants to

recommend and advise on selection of classifications of goods and services for
trademark applications sought to be filed with the USPTO directly to customers,
modify standard descriptions from the USPTO ID manual directly for customers,
and pay government fees on behalf of customers who are not represented by a
lawyer.
c.

A legal technology C corporation organized in any state within the United

States substantially owned by one or more California and USPTO licensed
attorneys is permitted to employ non-lawyer assistants to recommend and advise
on selection of classifications of goods and services for trademark applications
sought to be filed with the USPTO directly to customers, modify standard
descriptions from the USPTO ID manual directly for customers, and pay

PLAINTIFFS’ COMPLAINT

42

government fees on behalf of customers who are not represented by a lawyer.
d.

A legal technology C corporation organized in any state within the United

States doing business in California and substantially owned by an attorney or a
licensed law firm is not required to conduct conflict checks before assisting
customers that request filings of U.S. trademarks before the USPTO.
e.

A legal technology C corporation organized in any state within the United

States doing business in California and substantially owned by an attorney or
licensed law firm is not required to deposit money collected from customers
wishing to file U.S. trademarks before the USPTO into an IOLTA trust account
on behalf of a customer.
f.

A licensed law firm organized in any state within the United States is

permitted to sell ownership in its business to non-lawyer investors.
g.

A foreign law firm organized as an Alternative Business Structure (ABS)

law firm in the United Kingdom is permitted to practice law within the United
States before the United States Patent & Trademark Office if it hires lawyers in
the United States that comply with applicable State Bar and USPTO rules.
h.

A licensed attorney or a law firm is permitted to employ non-lawyer

assistants to recommend and advise on selection of classifications of goods and
services for trademark applications sought to be filed with the USPTO directly
to customers, modify standard descriptions from the USPTO ID manual directly

PLAINTIFFS’ COMPLAINT

43

for customers, and pay government fees on behalf of customers who are not
represented by a lawyer.
SECOND CLAIM FOR RELIEF
UNREASONABLE RESTRAINT OF TRADE IN VIOLATION OF
SECTION 1 of the SHERMAN ACT, 15 U.S.C. §1.
(Against All Defendants and DOES 1-50)
91. Plaintiffs incorporate herein by reference paragraphs ​1-90​ above.
92. On February 25, 2015, the Supreme Court handed down its landmark
decision in ​North Carolina State Board of Dental Examiners v. Federal Trade
Commission​, 135 S. Ct. 1101 (2015) (alternatively, “​Dental Examiners​”).
Affirming the decision of the United States Court of Appeals for the Fourth
Circuit, the Supreme Court held that a state agency controlled by active market
participants in the occupation the agency regulates must be actively supervised
by a politically accountable state official in order to enjoy immunity from
federal antitrust laws. 135 S. Ct. at 1114. The Supreme Court observed, quite
logically, that “[w]hen a state empowers a group of active market participants to
decide who can participate in its market, and on what terms, the need for
supervision is manifest.” ​Id.
93. The North Carolina State Bar (alternatively, the “State Bar”) had hoped
for a different ruling in the Dental Examiners case. Like the North Carolina State
Board of ​Dental Examiners​, the State Bar is a “state agency” composed

PLAINTIFFS’ COMPLAINT

44

primarily of licensed professionals who participate actively in the very market
that the State Bar regulates. The State Bar was sufficiently worried about the
Dental Examiners case that it filed a “friend of the court” brief in the Supreme
Court, arguing that unless the Supreme Court reversed the Fourth Circuit’s
decision, the State Bar would face antitrust lawsuits based on its unsupervised
regulation of the market for legal services. In fact, the State Bar specifically
predicted that unless the Supreme Court extended Sherman Act immunity to
cover the Dental Board, the State Bar would face the threat of civil liability for
treble damages and attorney’s fees, and possibly even criminal prosecution,
under the federal antitrust laws.28
94. The Supreme Court rejected the State Bar’s arguments, instead holding
that a “state agency” composed primarily of market participants is immune from
antitrust liability ​only if its anti competitive actions are in pursuit of a clearly
articulated state policy and are actively supervised by the state. Reacting to the
legal exposure confirmed by the ​Dental Examiners decision, the North Carolina
State Bar promptly sponsored legislation that would require the North Carolina
Attorney General to “actively supervise” certain of the State Bar’s actions taken

28

Brief of North Carolina State Bar et al., available at
https://www.americanbar.org/content/dam/aba/publications/supreme_court_preview/BriefsV4/13-534_pet_amcu
_ncsb-etal.authcheckdam.pdf​ (last visited December 15, 2017). LegalZoom, along with other companies and
thirteen law professors, filed an amicus brief urging affirmance and explaining how excessive state bar regulation
of the market for legal services contributes to the crisis of access to justice and is sometimes abused for anti
competitive purposes. Brief of LegalZoom et al., available at
http://sblog.s3.amazonaws.com/wp-content/uploads/2014/08/13-534-Shake.pdf​ (last visited December 15,
2017).
PLAINTIFFS’ COMPLAINT

45

to enforce its members’ monopoly on providing legal services, including the
State Bar’s actions taken against perceived competitors it claims are engaged in
the “unauthorized practice of law.”
95. By proposing this legislation the State Bar has expressly conceded that
such supervision is necessary for the State Bar to obtain immunity from liability
for violating the federal antitrust laws.

To date, the State Bar’s proposed

legislation has not been enacted and remains pending in the North Carolina
legislature. Plaintiffs expresses no opinion as to whether the proposed
legislation, as drafted, would satisfy the ​Dental Examiners​ standard.29
96. As the North Carolina State Bar predicted, and as the U.S. Supreme Court
considered and implicitly held, the unsupervised activities of ​any State Bar are
now fully subject to the reaches of the federal antitrust laws. Therefore,
Plaintiffs bring this cause of action under the federal antitrust laws to challenge
and seek redress from certain anticompetitive, exclusionary, and monopolistic
conduct by LegalZoom, USPTO, State Bar of California, State Bar of Texas,
State Bar of Arizona and other actors. In the clear absence of state-action
immunity, the actions of Defendants, as outlined below, violate the Sherman
Act, 15 U.S.C. §§ 1 and 2.
97. Plaintiffs have been compelled to file this lawsuit because Defendants are

29

See Senate Bill 353, North Carolina General Assembly (filed Mar. 31, 2015); Ronald L. Gibson, An
Update on Legislation and Litigation, N.C. State Bar J. at 7-8 (Summer 2015).
PLAINTIFFS’ COMPLAINT

46

illegally and unreasonably restraining trade in the market for federal trademark
application legal services, including delivery through online websites, in
California, Arizona, Texas, and in all states before the United States Patent &
Trademark Office (the “Relevant Market”).
98. Specifically, LegalZoom is illegally and unreasonably excluding
Plaintiffs from offering similar services by its own public statements on
YouTube. Specifically, LegalZoom’s CEO John Suh has admitted that there is
unfair competition between lawyers (e.g., such as Plaintiffs) and LegalZoom,
saying that “​I can destroy innovation and disruption if I take two elements
away #1 capital, and #2 a team.”30 LegalZoom’s CEO John Suh went on to say
seconds later that “the legal industry does not allow law firms to raise capital”,
and “it does not allow them to recruit non-lawyers to the cause”31 and boasting
“it will be impossible without those two elements”32 for lawyers to compete with
LegalZoom which uniquely has both these “elements.”
99. In addition, the USPTO unfairly conspired, and continues to conspire,
with LegalZoom by assisting LegalZoom in maintaining its unreasonable
restraint of trade in violation of Section 1 of the Sherman Act, 15 U.S.C. §1 by
knowingly sending to LegalZoom links to fill out its USPTO forms on behalf of

30

New Hampshire Bar Association Midyear Meeting held in Manchester, NH, on March 4, 2016,
https://www.youtube.com/watch?v=ClBpYWcc6jU&t=9m34s
31
New Hampshire Bar Association Midyear Meeting held in Manchester, NH, on March 4, 2016,
https://www.youtube.com/watch?v=ClBpYWcc6jU&t=10m18s
32
New Hampshire Bar Association Midyear Meeting held in Manchester, NH, on March 4, 2016,
https://www.youtube.com/watch?v=ClBpYWcc6jU&t=10m36s
PLAINTIFFS’ COMPLAINT

47

LegalZoom customers (​Exhibit F​) and sign away rights of LegalZoom
customers while paying government fees on behalf of LegalZoom’s customers
using a credit card and/or deposit account directly on the USPTO website
(​Exhibit W​).
100. In addition, the USPTO is unfairly conspiring with LegalZoom to
violate Section 1 of the Sherman Act, 15 U.S.C. §1 because it has not provided
any guidance to Plaintiffs or anyone else permitting Plaintiffs to operate as a
trademark filing service in the same manner as LegalZoom with its non-attorney
“peace of mind” trademark filing service, all the while turning a blind eye to
LegalZoom.
101. The State Bar of California is unfairly conspiring with LegalZoom to
violate Section 1 of the Sherman Act, 15 U.S.C. §1 because it has not provided
any guidance to Plaintiffs or anyone else permitting them to operate as a
trademark filing service in the same manner as LegalZoom with its non-attorney
“peace of mind” trademark filing service, all the while turning a blind eye to
LegalZoom.
102. The State Bar of Arizona is unfairly conspiring with LegalZoom to
violate Section 1 of the Sherman Act, 15 U.S.C. §1 because it has not provided
any guidance to the Plaintiffs or anyone else permitting them to operate as a
trademark filing service in the same manner as LegalZoom with its non-attorney

PLAINTIFFS’ COMPLAINT

48

“peace of mind” trademark filing service, all the while turning a blind eye to
LegalZoom.
103. The State Bar of Texas is unfairly conspiring with LegalZoom to
violate Section 1 of the Sherman Act, 15 U.S.C. §1 because it has not provided
any guidance to the Plaintiffs or anyone else permitting them to operate as a
trademark filing service in the same manner as LegalZoom with its non-attorney
“peace of mind” trademark filing service, all the while turning a blind eye to
LegalZoom.
104. Defendants are illegally and unreasonably excluding Plaintiffs from
offering trademark filing services without the assistance of an attorney in this
state, in violation of the Sherman Antitrust Act.
105. The USPTO, the State Bar of California, the State Bar of Arizona, and
the State Bar of Texas have and exercise the power to exclude lawyers and
nonlawyers from competing in the Relevant Market in various ways.
106. Although designated state agencies, upon reason and belief, the State
Bar of California, the State Bar of Arizona, and the State Bar of Texas in fact are
controlled by private individuals who actively participate in the Relevant
Market. This group of active market participants regulate the Relevant Market,
exercising the limited power granted by the Legislature, as well as power that
the Legislature has not granted.

PLAINTIFFS’ COMPLAINT

49

107. For years, upon reason and belief, the State Bar of California, the State
Bar of Arizona, and the State Bar of Texas, by and through their agents and
Council members, have engaged in unsupervised anticompetitive activity under
the guise of regulating the “unauthorized practice of law.” In doing so, the State
Bar of California, the State Bar of Arizona, and the State Bar of Texas, like the
North Carolina State Board of Dental Examiners before them, regularly exceed
their grant of legislative authority by engaging in misleading “cease and desist”
letter campaigns designed to intimidate and bully licensed lawyers within their
own jurisdiction into ceasing activities that they permit LegalZoom to provide.
108. The USPTO, the State Bar of California, the State Bar of Arizona, and
the State Bar of Texas have also engaged in unauthorized and anticompetitive
conduct illegally and unreasonably restraining trade in the Relevant Market by
enforcing their rules unfairly against licensed lawyers within their jurisdictions
but not against LegalZoom.
109. Defendants’ anticompetitive activity is not, and has not been, in pursuit
of a clearly articulated state or federal policy; indeed, it has been in direct
contravention of that policy. In addition, Defendant Legal Zoom’s
anticompetitive conduct is, and has been, wholly unsupervised by the USPTO,
the State Bar of California, the State Bar of Arizona, and the State Bar of Texas.
The USPTO, the State Bar of California, the State Bar of Arizona, and the State

PLAINTIFFS’ COMPLAINT

50

Bar of Texas’s anticompetitive conduct exceeds their statutory authority.
Therefore, Defendants’ conduct is not entitled to immunity from the federal
antitrust laws.
110. Defendants’ unlawful and unreasonable exclusion of licensed lawyers
from performing services, the way LegalZoom does in the Relevant Market, has
injured competition in the Relevant Market and caused Plaintiffs to lose more
than twenty million dollars ($20,000,000) of sales in the Relevant Markets.
Plaintiffs brings this lawsuit to recover from Defendants’ actual and treble
damages under the Sherman Act, totaling more than sixty million dollars
($60,000,000), exclusive of fees and costs.

Plaintiffs also seek permanent

injunctive relief as described herein.
111. Defendants’ activities and the conduct of Defendants and their
co-conspirators occurred in and/or affected a substantial portion of interstate
commerce, including trade and commerce to, from, and within this District.
112. As described above, beginning at least as early as September 2010 and
continuing

through

at

least

December

2017,

Defendants and their

co-conspirators entered into a continuing agreement, understanding, combination
and/or conspiracy in restraint of trade, resulting in harm both to competition
generally and to Plaintiffs specifically, in violation of Section 1 of the Sherman
Act.

PLAINTIFFS’ COMPLAINT

51

113. Defendants’ refusal to permit Plaintiffs to operate in the same manner
as LegalZoom constitutes a boycott, a collective refusal to deal with
LegalZoom’s unauthorized practice of law and exclusion of a competitor from
the Relevant Market by Market Participants with market power, and thus is a per
se antitrust violation. In the alternative, Defendants’ refusal to permit Plaintiffs
from operating in the same way as LegalZoom with respect to federal trademark
matters constitutes an unreasonable restraint of trade.
114. Defendants’ unlawful combination and conspiracy injured competition
in the Relevant Market and proximately caused Plaintiffs economic loss and
damages by their refusal to permit Plaintiffs from operating the same way as
LegalZoom with respect to federal trademark matters.
THIRD CLAIM FOR RELIEF
FEDERAL FALSE & MISLEADING ADVERTISING AND UNFAIR
COMPETITION IN VIOLATION OF THE LANHAM ACT, 15 U.S.C.. §
1125(a)
(Against LegalZoom, Liu, and Hartman and DOES 1-50)

115. ​Plaintiffs incorporate herein by reference paragraphs ​1-114​ above.
116. The Lanham Act prohibits any false description or representation,
including words or other symbols tending falsely to describe or represent the
same, made in connection with any goods or services entered into commerce.
117. LegalZoom is not a law firm in the United States and is not authorized
to practice law in any state. LegalZoom is not a registered or bonded legal
PLAINTIFFS’ COMPLAINT

52

document assistant under California Business and Professions Code, sections
§6400 et seq. (​Exhibit M​, highlighted).
118. Despite this, LegalZoom’s CEO John Suh has recently falsely implied
that in its “chapter 3” of LegalZoom’s corporate evolution, it can provide legal
services in the United States after it became a law firm in United Kingdom in
2015 when he stated as much in an Ernst & Young interview33 and a similar
interview with a customer Bill Carmody in the United States34 less than a month
earlier.

Suh even falsely explained that LegalZoom's “chapter 3” foreign law

firm structure as permitting practice of law in the United States to the New
Hampshire Bar boasting that they have spent two years advertising their new
“law firm” structure and how certain practice areas are entirely done with a
lawyer.35 In reality, LegalZoom is not a law firm in the United States and is not
authorized to practice law in any state.

LegalZoom has become a law firm in

the United Kingdom only after acquiring a law firm in that country following
deregulation of ownership of law firms in the United Kingdom in 2012.
(​Exhibit G​).
119. The Lanham Act prohibits false and misleading advertising and
prohibits advertisers like LegalZoom from making any claim, and directly or

33

LegalZoom exec reflects on the company’s evolution, on November 16, 2016,
https://www.youtube.com/watch?v=ORbZcMmDJOs&t=2m11s
34
John Suh, CEO of LegalZoom interview with Bill Carmody on October 21, 2016,
https://www.youtube.com/watch?v=aOKFr2XTbsE&t=12m52s
35
New Hampshire Bar Association Midyear Meeting held in Manchester, NH, on March 4, 2016,
https://www.youtube.com/watch?v=ClBpYWcc6jU&t=4m31s
PLAINTIFFS’ COMPLAINT

53

indirectly, in words or in substance, qualified or unqualified, that contain express
or implied falsehoods.
120. LegalZoom has threatened Plaintiff LegalForce RAPC Worldwide’s
business directly by misleading consumers and unfairly competing with
Plaintiffs for the keywords “trademark filing attorney”, “trademark lawyer”, and
Plaintiffs’ trademark business and personal names including “LegalForce” and
“Raj Abhyanker” among hundreds of other keywords.

The conduct is unfair

and unethical because LegalZoom makes a number of false and misleading
statements in its advertising copy.
121. As described above, LegalZoom has made false and/or misleading
statements of fact concerning the “attorney” nature of its services and products
in its online advertising and promotion, including but not limited to:
A. ​Representing that customers can “Speak to an Attorney” and “Avoid Costly
Conflicts” while bidding on keywords including “trademark attorney”,
“trademark lawyer”, “legalforce”, and “legalforce trademarks”, and misdirecting
users to their $199 “peace of mind” non-attorney guided trademark filing
service.
B. ​Representing that customers can “Speak to an Attorney” in paid search ad
copy when, in fact, customers must first sign up for LegalZoom’s legal plan,
which automatically renews for $29.99 a month.

PLAINTIFFS’ COMPLAINT

54

122. LegalZoom uses the search terms “LegalForce”, “Raj Abhyanker” or
“Trademarkia” to redirect customers to LegalZoom’s false and misleading
advertisements and to disseminate such false and misleading advertisements in
interstate commerce, and at least ones directed toward Raj Abhyanker personally
are defamatory in the sense that it purports to falsely imply that Raj Abhyanker
is associated with “costly conflicts.”

As a result, LegalZoom has widely

disseminated such false and misleading advertisements via the internet to
relevant purchasing public so as to sufficiently constitute commercial advertising
under the Lanham Act.
123. LegalZoom’s non-attorney trademark document specialists in its $199
“peace of mind” service unlawfully assist customers with modifying goods and
services descriptions, selecting classifications of trademarks to be filed before
the United States Patent & Trademark Office, and filing trademarks before the
United States Patent & Trademark Office.
124. LegalZoom’s false and misleading advertisements have deceived a
substantial segment of the audience exposed to it, or have the capacity for such
deception, and have influenced, or are likely to influence, consumer purchasing
decisions.
125. LegalZoom sells, offers for sale, distributes, and/or advertises goods
and services to consumers that directly compete with Plaintiffs’ sales of their

PLAINTIFFS’ COMPLAINT

55

own services and products.
126. LegalZoom’s conduct demonstrates an intentional, willful, and
malicious intent to deceive consumers and unfairly compete with Plaintiffs.
127. LegalZoom’s false and misleading advertisements have caused and,
unless enjoined, will continue to cause immediate and irreparable harm to
Plaintiffs for which there is no adequate remedy at law. In addition, as a result
of LegalZoom’s false and misleading advertisements, Plaintiffs have been
injured, including but not limited to, decline in sales and market share, loss of
goodwill, and additional losses and damages. Furthermore, LegalZoom has been
unjustly enriched at the expense of Plaintiffs as a consequence of LegalZoom’s
false and misleading advertising.

Accordingly, Plaintiffs are entitled to

injunctive relief and to recover actual damages, enhanced profits and damages,
costs, LegalZoom’s profits, and reasonable attorneys’ fees under 15 U.S.C. §§
1114, 1116, and 1117.
128. Defendants Liu, Hartman, and Lee have unfairly competed with
Plaintiffs because they are practitioners who have created a professional
corporation (LegalZoom) which is practicing law for a profit with shareholders
who are non-practitioners in violation of CFR §11.504.
129. Upon reason and belief, Defendants Lee has also unfairly competed as
a suspended California attorney as of 1999 who formed his corporation

PLAINTIFFS’ COMPLAINT

56

LegalZoom.com, Inc. with Liu and Hartman in 2007 (continuing former
corporation LegalZoom Delaware, Inc. formed while Lee was still suspended in
2000) while profiting indirectly as a shareholder from the over two-hundred fifty
thousand (250,000) trademarks filed with the United States Patent & Trademark
Office through the LegalZoom website.

Suspended attorney Lee has admitted

being the “worst lawyer” and “talk to anyone I did work for” and “you could
come to me with a parking ticket, [and] you would end up in jail” and further
admitting “you have to be detail oriented to be a good lawyer, and I am not that
detail oriented.” 36
FOURTH CLAIM FOR RELIEF
CALIFORNIA FALSE & MISLEADING ADVERTISING IN VIOLATION OF
CAL. BUS. & PROF. CODE § 17500​ ET SEQ. ​and​ ​§ 17600 ​ET SEQ.
(Against LegalZoom, Liu, and Hartman and DOES 1-50)
130. ​Plaintiffs incorporate herein by reference paragraphs ​1-129​ above.
131. At all relevant times herein mentioned, LegalZoom is a corporation
doing business at 101 N. Brand Blvd., Glendale CA 91203.
132. LegalZoom is not a law firm in the United States and is not authorized
to practice law in any state. LegalZoom is not a registered or bonded legal
document assistant under California Business and Professions Code, sections
§6400 et seq. (​Exhibit M​, highlighted).
133. Despite this, LegalZoom’s CEO John Suh has recently falsely implied

36

PandoDaily, May 11, 2013, ​https://www.youtube.com/watch?v=RE5HxiLpxd0&t=8m00s​.
PLAINTIFFS’ COMPLAINT

57

that in its “chapter 3” of LegalZoom’s corporate evolution, it can provide legal
services in the United States after it became a law firm in United Kingdom in
37

2015 when he stated as much in an Ernst & Young interview and a similar
38

interview with a customer Bill Carmody in the United States less than a month
earlier. Suh even falsely explained that LegalZoom's law firm structure in the
United Kingdom enables the company to practice law in the United States to the
New Hampshire Bar while also boasting that LegalZoom has spent two years
advertising their new “law firm” structure and how certain practice areas are
39

entirely done with a lawyer.

In reality, LegalZoom is not a law firm in the

United States and is not authorized to practice law in any state. LegalZoom has
become a law firm in the United Kingdom only after acquiring a law firm in that
country following deregulation of ownership of law firms in the United
Kingdom in 2012. (​Exhibit G​).
134. LegalZoom has threatened Plaintiff LegalForce RAPC Worldwide’s
business directly by misleading consumers searching Google and Bing for
“trademark attorney” and “trademark lawyer” to non-attorney “peace of mind”
trademark landing pages. This creates unfair competition for Plaintiffs which
file all trademarks of their clients before the USPTO with representation by

37

LegalZoom exec reflects on the company’s evolution, on November 16, 2016,
https://www.youtube.com/watch?v=ORbZcMmDJOs&t=2m11s
38
John Suh, CEO of LegalZoom interview with Bill Carmody on October 21, 2016,
https://www.youtube.com/watch?v=aOKFr2XTbsE&t=12m52s
39
New Hampshire Bar Association Midyear Meeting held in Manchester, NH, on March 4, 2016,
https://www.youtube.com/watch?v=ClBpYWcc6jU&t=4m31s
PLAINTIFFS’ COMPLAINT

58

licensed attorneys at LegalForce RAPC Worldwide’s offices, in either California
or Arizona. The conduct is unfair and unethical because LegalZoom makes a
number of false and misleading statements in its advertising copy.
135. Beginning on a date unknown to Plaintiffs but likely within at least the
last three (3) years preceding the filing of the Complaint, LegalZoom, acting
directly or indirectly with the intent to induce members of the public to engage
LegalZoom’s services and purchase LegalZoom’s products, made or caused to
be made, in violation of Business and Professions Code Section §17500, untrue
or misleading statements in the state of California via its website, that include,
but are not limited to, the following:
A.

Representing that customers can “Speak to an Attorney” and “Avoid

Costly Conflicts” while bidding on keywords including “trademark attorney”,
“trademark

lawyer”,

“legalforce”,

and “legalforce trademarks”, while

misdirecting users to their $199 “peace of mind” non-attorney guided trademark
filing service.
B.

Representing that customers can “Speak to an Attorney” in paid search ad

copy when, in fact, customers must first sign up for LegalZoom’s legal plan,
which automatically renews for $29.99 a month. Representing that customers
can “Speak to an Attorney” when, in fact, access to the “help form an attorney”
are available only after customers become paid members of LegalZoom’s legal

PLAINTIFFS’ COMPLAINT

59

plan.

This membership requirement for the “Speak to an Attorney” is ​not

disclosed anywhere on the Google AdWords advertisements. Moreover, this
membership requirement is not in close proximity to the advertisements in
landing page button for “Start My Trademark” and appears below the fold on
most monitor screens in small print. (​Exhibit A, Exhibit B, Exhibit C, and
Exhibit O​).
C.

There is no disclosure in a “clear and conspicuous” manner in the

advertising copy on Google AdWords text in visual proximity of the content that
in order to “Speak to an Attorney” one must become a paid member of
LegalZoom’s Legal Plan which is in violation of Section §17602(a)(1) of the
Business and Professions Code. (​Exhibit A, Exhibit B, Exhibit C, and Exhibit
O​).
136. While using Plaintiffs’ AdWords to trigger and disseminate the
advertisements herein alleged, LegalZoom knew, or by the exercise of
reasonable care should have known, that the advertisements were untrue and
misleading and so acted in violation of Section §17500 of the Business and
Professions Code. LegalZoom’s advertising further violates Section §17509 and
Section §17600 ​et seq. in that the advertisements herein alleged require, as a
condition to the “Speak to an Attorney”, the purchase of paid membership
and/or the enrollment in a trial membership plan subject to a negative option

PLAINTIFFS’ COMPLAINT

60

without adequate disclosure to customers.
137. LegalZoom’s non-attorney trademark document specialists in its $199
“peace of mind” service unlawfully assist customers with modifying goods and
services descriptions, selecting classifications of trademarks to be filed before
the USPTO, and filing trademarks before the USPTO.
138. LegalZoom has been unjustly enriched through its false and misleading
advertising.
139. Plaintiffs have lost business caused by the false and misleading
LegalZoom advertisements as a result of at least one customer refusing to do
business with LegalZoom due to the fact that LegalZoom advertisements falsely
implying that LegalZoom offers trademark filing services with the USPTO with
the assistance of an attorney for their $199 “peace of mind review” service.
140. Unless restrained by this court, LegalZoom will continue with its
untrue and misleading advertising, as alleged above, in violation of Section
§17500 of the Business and Professions Code and in violation of Section §17509
of the California Business and Professions Code, thus, tending to render
judgment in the instant action ineffectual and will cause additional injury to
Plaintiffs for which Plaintiffs have no adequate remedy at law.
141. Pursuant to California Business and Professions Code Section §17500,
Plaintiffs seek an order of this Court preliminarily and permanently enjoining

PLAINTIFFS’ COMPLAINT

61

LegalZoom from continuing to engage in the false and misleading advertising
set forth herein, as well as compensatory damages and restitution.
142. LegalZoom’s non-attorney trademark document specialists in its $199
“peace of mind” service unlawfully assist customers with modifying goods and
services descriptions, selecting classifications of trademarks to be filed before
the USPTO, and filing trademarks before the USPTO.
143. LegalZoom’s business practices and acts, fully described above,
constitute an unlawful practice of law and create false and misleading
impressions on potential clients of Plaintiff LegalForce RAPC Worldwide.
144. LegalZoom’s business model and acts, including but not limited to its
website and false and misleading advertising, constitute unfair practices,
intentionally aimed at getting ahead of any competitors with lawful business
conduct such as LegalForce. The acts alleged herein continue to present a threat
to LegalForce and average consumers, especially the ones with limited
resources.
145. LegalZoom’s acts were, and are, likely to deceive an average
consumer, and thus constitute unfair business practices as described herein.
146. If Declaratory Judgment in not awarded permitting Plaintiffs to
prepare, review and advise customers on trademarks to be filed before the
USPTO office as described above, then:

PLAINTIFFS’ COMPLAINT

62

a. ​LegalZoom has engaged in unlawful, unfair and fraudulent business practices
and damaged the public and Plaintiffs through the conduct alleged herein.
b.

​Plaintiffs are informed, believe, and thereupon allege that LegalZoom’s

conduct as described herein was, and is, unlawful, unfair and/or fraudulent in
violation of Section §17000 ​et. sq. of the California Business and Professions
Code and has the potential to cause, and has in fact caused, confusion in the
marketplace.
c.

​Plaintiffs have been irreparably harmed and will continue to be irreparably

harmed as a result of LegalZoom’s unlawful acts unless enjoined by this Court.
d.

​The conduct herein complained of was extreme, outrageous, surreptitious,

and was inflicted on Plaintiffs in reckless disregard of Plaintiffs’ rights.
e. ​Plaintiffs are entitled to an injunction restraining LegalZoom, and all persons
acting in concert with them, from engaging in such further acts of unfair
competition, including:
​i.

​Enjoining non-lawyer assistants of LegalZoom to recommend and advise on

selection of classifications of goods and services for trademark applications
sought to be filed with the USPTO directly to customers, modify standard
descriptions from the USPTO ID manual directly for customers and pay
government fees on behalf of customers who are not represented by a lawyer.
ii.

​Enjoining LegalZoom from purchasing misleading advertising related to

PLAINTIFFS’ COMPLAINT

63

“trademark attorney”, “trademark lawyer”, and related keywords for
non-attorney “peace of mind” trademark filing services offered by LegalZoom
with respect to U.S. trademark matters.

FIFTH CLAIM FOR RELIEF
CALIFORNIA UNFAIR COMPETITION IN VIOLATION OF
CAL. BUS. & PROF. CODE § 17200 ​ET SEQ.
(Against LegalZoom, Liu, and Hartman and DOES 1-50)
147. Plaintiffs incorporate herein by reference paragraphs ​1-146​ above.
148. LegalZoom’s false comparisons with Plaintiffs’ attorney managed U.S.
trademark service as being comparable to LegalZoom’s non-attorney “peace of
mind” service through misleading advertising, as alleged above, constitute unfair
competition in violation of Section §17200 ​et seq. ​of the California Business and
Professions Code.
149. LegalZoom intentionally uses the search terms “LegalForce” and
“Trademarkia” to trigger sponsored links and to redirect customers to
LegalZoom’s false and misleading advertisements, which deceptively advertise
among other things, “Avoid Costly Conflicts”, “File Your Application With the
Help Of An Independent Trademark Attorneys”, and “Speak to an Attorney”.
150. Plaintiffs are informed and believe that LegalZoom, as a competitor to
Plaintiffs, performed the acts alleged herein for the purpose of injuring Plaintiffs.
The acts alleged herein continue to this day and present a threat to Plaintiffs, the
PLAINTIFFS’ COMPLAINT

64

general public, the trade and consumers.
151. As a result of LegalZoom’s wrongful acts, Plaintiffs have suffered and
will continue to suffer loss of tens of millions of dollars of income, profits and
valuable business opportunities and if not preliminarily or permanently enjoined,
LegalZoom will have unfairly derived and will continue to derive income,
profits and business opportunities as a result of its wrongful acts.
152. Pursuant to California Business and Professions Code Section §17200
et seq.​, Plaintiffs seek an order of this Court preliminarily and permanently
enjoining LegalZoom from continuing to engage in the unlawful, unfair and
fraudulent acts or practices set forth herein, as well as restitution.
SIXTH CLAIM FOR RELIEF
PROFESSIONAL NEGLIGENCE
(Against Defendants LegalZoom, Liu, Hartman, and Lee and DOES 1-50)
153. Plaintiffs incorporate herein by reference paragraphs ​1-152 ​above.
154. LegalZoom’s CEO John Suh has recently falsely implied that in its
“chapter 3” of LegalZoom’s corporate evolution, it can provide legal services in
the United States after it became a law firm in United Kingdom in 2015 when he
40

stated as much in an Ernst & Young interview and a similar interview with a
41

customer Bill Carmody in the United States

less than a month earlier. Suh

40

LegalZoom exec reflects on the company’s evolution, on November 16, 2016,
https://www.youtube.com/watch?v=ORbZcMmDJOs&t=2m11s
41
John Suh, CEO of LegalZoom interview with Bill Carmody on October 21, 2016,
https://www.youtube.com/watch?v=aOKFr2XTbsE&t=12m52s
PLAINTIFFS’ COMPLAINT

65

even falsely explained that LegalZoom's law firm structure in the United
Kingdom enables the company to practice law in the United States to the New
Hampshire Bar while also boasting that LegalZoom has spent two years
advertising their new “law firm” structure and how certain practice areas are
42

entirely done with a lawyer.

In reality, LegalZoom is not a law firm in the

United States and is not authorized to practice law in any state. LegalZoom has
become a law firm in the United Kingdom only after acquiring a law firm in that
country following deregulation of ownership of law firms in the United
Kingdom in 2012. (​Exhibit G​).
155. In addition, upon reason and belief, LegalZoom, attorney Liu, attorney
Hartman, and suspended attorney Lee owed a duty to Plaintiffs Raj Abhyanker
and LegalForce RAPC Worldwide when they collected more than $1000 in legal
service and government fees from Plaintiffs Raj Abhyanker and LegalForce
RAPC Worldwide without depositing the funds into an IOLTA trust account and
conducting a conflict check against existing customers and adverse parties for
the DRAWMARKIA and PIGGIEBANK trademarks through a corporation they
formed, and in which they are substantial individual shareholders, LegalZoom,
Inc.
156. LegalZoom, attorney Liu, attorney Hartman, and suspended attorney

42

New Hampshire Bar Association Midyear Meeting held in Manchester, NH, on March 4, 2016,
https://www.youtube.com/watch?v=ClBpYWcc6jU&t=4m31s
PLAINTIFFS’ COMPLAINT

66

Lee have breached that duty by purposefully engaging in the unauthorized
practice of law with respect to the filing of the DRAWMARKIA and
PIGGIEBANK trademarks on behalf of Plaintiffs Raj Abhyanker and
LegalForce RAPC Worldwide respectively while falsely implying that no legal
advice was to be received in the $199 “peace of mind” trademark filing service
linked to a Google advertisements falsely implying that attorney help will be
provided.
157. Moreover, LegalZoom, attorney Liu, attorney Hartman, and suspended
attorney Lee breached their duty to Plaintiffs Raj Abhyanker and LegalForce
RAPC Worldwide by not supervising non-lawyer assistants Will, Alex, Robert
who provided legal advice including classification selection, description of
goods and services modification, search report preparation, and search report
analysis for the federal trademark applications for DRAWMARKIA and
PIGGIEBANK.
158. In addition, LegalZoom, attorney Liu, attorney Hartman, and
suspended attorney Lee and DOES 1-50, each of them owed a duty to Plaintiffs
Raj Abhyanker and LegalForce RAPC Worldwide to act at all times in good
faith and in Plaintiffs Raj Abhyanker and LegalForce RAPC Worldwide’s best
interests, and had a duty, among other things, to perform the services for which
their corporate entity LegalZoom was retained with reasonable care and skill to

PLAINTIFFS’ COMPLAINT

67

prepare and file the DRAWMARKIA and PIGGIEBANK trademarks, to act in
the Plaintiffs’ highest and best interests at all times, and to not expose Plaintiffs
Raj Abhyanker and LegalForce RAPC Worldwide to unnecessary risk or peril.
159. By providing legal advice in the selection of classification and
description of goods and services to Plaintiffs Raj Abhyanker and LegalForce
RAPC Worldwide using non-lawyer assistants (​Exhibit D​),

Defendants

exposed Plaintiffs Raj Abhyanker and LegalForce RAPC Worldwide to risk or
peril for their DRAWMARKIA trademarks as described by the USPTO
webpage titled “Proper representation in trademark matters” (​Exhibit A​),
including but not limited to (1) delaying and prolonging in the trademark
application process, potentially leading to abandonment of the DRAWMARKIA
and PIGGIEBANK applications, and jeopardizing the validity of any resulting
registration.
160. LegalZoom, attorney Liu, attorney Hartman, and suspended attorney
Lee each breached their neglected fiduciary duties to Plaintiffs Raj Abhyanker
and LegalForce RAPC Worldwide by failing to properly supervise legal
assistants, paid search specialists, and/or on-page marketing specialists in
violation of 37 CFR §11.503 – Duty to supervise non-lawyers. ​Specifically,
LegalZoom, attorney Liu, attorney Hartman, and suspended attorney Lee each
failed to supervise a non-practitioner assistant employed or retained by or

PLAINTIFFS’ COMPLAINT

68

associated with LegalZoom while being responsible for conduct of such a person
that would be a violation of the USPTO Rules of Professional Conduct if
engaged in by a practitioner.
161. LegalZoom, attorney Liu, attorney Hartman, and suspended attorney
Lee have also committed professional negligence as attorneys with duties owed
to Plaintiffs Raj Abhyanker and LegalForce RAPC Worldwide with regards to
the DRAWMARKIA and PIGGIEBANK trademark applications because they
are practitioners who have created a professional corporation (LegalZoom)
which is practicing law for a profit with shareholders who are non-practitioners
in violation of CFR §11.504.
162. Upon reason and belief, Defendants Lee has also committed
professional negligence as a suspended California attorney as of 1999 who
formed his corporation LegalZoom.com, Inc. with Liu and Hartman in 2007
(continuing former corporation LegalZoom Delaware, Inc. formed while Lee
was still suspended in 2000) while profiting indirectly as a shareholder from the
DRAWMARKIA and PIGGIEBANK marks filed with the United States Patent
& Trademark Office by Plaintiffs Raj Abhyanker and LegalForce RAPC
Worldwide through LegalZoom.
163. At all times mentioned here, LegalZoom, attorney Liu, attorney
Hartman, and suspended attorney Lee failed to exercise the required standard of

PLAINTIFFS’ COMPLAINT

69

care and by failing have jeopardized the validity of the Plaintiffs’
DRAWMARKIA and PIGGIEBANK trademarks.
164. Further, as a direct and proximate result of the negligence, omissions,
and/or intentional acts of LegalZoom, attorney Liu, attorney Hartman, and
suspended attorney Lee, Plaintiffs Raj Abhyanker and LegalForce RAPC
Worldwide have sustained damages, among other things loss in legal fees paid to
LegalZoom in the amount of $199 and other amounts which will be determined
according to proof at trial.
SEVENTH CLAIM FOR RELIEF
BREACH OF FIDUCIARY DUTIES
(Against Defendants LegalZoom, Liu, Hartman, and Lee, and DOES 1-50)
165. Plaintiffs incorporate herein by reference paragraphs ​1-164 ​above.
166. LegalZoom’s CEO John Suh has recently falsely implied that in its
“chapter 3” of LegalZoom’s corporate evolution, it can provide legal services in
the United States after it became a law firm in United Kingdom in 2015 when he
43

stated as much in an Ernst & Young interview and a similar interview with a
44

customer Bill Carmody in the United States

less than a month earlier. Suh

even falsely explained that LegalZoom's law firm structure in the United
Kingdom enables the company to practice law in the United States to the New

43

LegalZoom exec reflects on the company’s evolution, on November 16, 2016,
https://www.youtube.com/watch?v=ORbZcMmDJOs&t=2m11s
44
John Suh, CEO of LegalZoom interview with Bill Carmody on October 21, 2016,
https://www.youtube.com/watch?v=aOKFr2XTbsE&t=12m52s
PLAINTIFFS’ COMPLAINT

70

Hampshire Bar while also boasting that LegalZoom has spent two years
advertising their new “law firm” structure and how certain practice areas are
45

entirely done with a lawyer.

In reality, LegalZoom is not a law firm in the

United States and is not authorized to practice law in any state. LegalZoom has
become a law firm in the United Kingdom only after acquiring a law firm in that
country following deregulation of ownership of law firms in the United
Kingdom in 2012. (​Exhibit G​).
167. Upon reason and belief, LegalZoom, attorney Liu, attorney Hartman,
and suspended attorney Lee breached their fiduciary duty to Plaintiffs Raj
Abhyanker and LegalForce RAPC Worldwide when they collected more than
$1000 in legal service and government fees from Plaintiffs Raj Abhyanker and
LegalForce RAPC Worldwide without depositing funds into an IOLTA trust
account and conducting a conflict check against existing customers and adverse
parties for the DRAWMARKIA and PIGGIEBANK trademarks through a
corporation they formed and in which they are substantial individual
shareholders, LegalZoom, Inc.
168. In addition, LegalZoom, attorney Liu, attorney Hartman, and
suspended attorney Lee have breached a fiduciary duty by purposefully
engaging in the unauthorized practice of law with respect to the filing of the

45

New Hampshire Bar Association Midyear Meeting held in Manchester, NH, on March 4, 2016,
https://www.youtube.com/watch?v=ClBpYWcc6jU&t=4m31s
PLAINTIFFS’ COMPLAINT

71

DRAWMARKIA and PIGGIEBANK trademarks on behalf of Plaintiffs Raj
Abhyanker and LegalForce RAPC Worldwide respectively while falsely
implying that no legal advice was to be received in the $199 “peace of mind”
trademark filing service linked to a Google advertisements falsely implying that
attorney help will be provided.
169. Moreover, LegalZoom, attorney Liu, attorney Hartman, and suspended
attorney Lee breached their fiduciary duty to Plaintiffs Raj Abhyanker and
LegalForce RAPC Worldwide by not supervising non-lawyer assistants Will,
Alex, and Robert who provided legal advice including classification selection,
description of goods and services modification, search report preparation, and
search

report

analysis

for

the

federal

trademark

applications

for

DRAWMARKIA and PIGGIEBANK.
170. In addition, LegalZoom, attorney Liu, attorney Hartman, and
suspended attorney Lee and DOES 1-50, each of them owed a fiduciary duty to
Plaintiffs Raj Abhyanker and LegalForce RAPC Worldwide to act at all times in
good faith and in their best interests, and had a duty, among other things, to
perform the services for which their corporate entity LegalZoom was retained
with reasonable care and skill to prepare and file the DRAWMARKIA and
PIGGIEBANK trademarks, to act in the Plaintiffs’ highest and best interests at
all times, and to not expose Plaintiffs Raj Abhyanker and LegalForce RAPC

PLAINTIFFS’ COMPLAINT

72

Worldwide to unnecessary risk or peril.
171. By providing legal advice in the selection of classification and
description of goods and services to Plaintiffs Raj Abhyanker and LegalForce
RAPC Worldwide using non-lawyer assistants (​Exhibit D​), Defendants exposed
Plaintiffs Raj Abhyanker and LegalForce RAPC Worldwide to risk or peril for
their DRAWMARKIA trademark as described by the USPTO webpage titled
“Proper representation in trademark matters” (​Exhibit A​), including but not
limited to (1) delay and prolong in the trademark application process, potentially
leading to abandonment of the DRAWMARKIA and PIGGIEBANK trademark
applications, and jeopardizing the validity of any resulting registration.
172. Defendants LegalZoom, attorney Liu, attorney Hartman, and
suspended attorney Lee each breached their neglected fiduciary duties to
Plaintiffs Raj Abhyanker and LegalForce RAPC Worldwide by failing to
properly supervise legal assistants, paid search specialists, and/or on-page
marketing specialists in violation of 37 CFR §11.503 – Duty to supervise
non-lawyers.

​Specifically, LegalZoom, attorney Liu, attorney Hartman, and

suspended attorney Lee each failed to supervise a non-practitioner assistant
employed or retained by or associated with LegalZoom while being responsible
for conduct of such a person that would be a violation of the USPTO Rules of
Professional Conduct if engaged in by a practitioner.

PLAINTIFFS’ COMPLAINT

73

173. Defendants LegalZoom, attorney Liu, attorney Hartman, and
suspended attorney Lee have also breached their fiduciary duties as attorneys
with duties owed to Plaintiffs Raj Abhyanker and LegalForce RAPC Worldwide
because they are practitioners who have created a professional corporation
(LegalZoom) which is practicing law for a profit with shareholders who are
non-practitioners in violation of CFR §11.504.
174. Upon reason and belief, Defendant Lee has also breached his fiduciary
duties as a suspended California attorney as of 1999 who formed his corporation
LegalZoom.com, Inc. with Liu and Hartman in 2007 (continuing former
corporation LegalZoom Delaware, Inc. formed while Lee was still suspended in
2000) while profiting indirectly as a shareholder from the DRAWMARKIA and
PIGGIEBANK marks filed with the United States Patent & Trademark Office by
Plaintiffs Raj Abhyanker and LegalForce RAPC Worldwide through
LegalZoom.
175. At all times mentioned here, LegalZoom, attorney Liu, attorney
Hartman, and suspended attorney Lee failed to exercise the required standard of
care and by failing to have jeopardized the validity of the DRAWMARKIA and
PIGGIEBANK trademark applications.
176. Further, as a direct and proximate result of the negligence, omissions,
and/or intentional acts of LegalZoom, attorney Liu, attorney Hartman, and

PLAINTIFFS’ COMPLAINT

74

suspended attorney Lee, Plaintiffs Raj Abhyanker and LegalForce RAPC
Worldwide have sustained damages, among other things loss in legal fees paid to
LegalZoom in the amount of $199 and other amounts which will be determined
according to proof at trial.
PRAYER FOR RELIEF
WHEREFORE, Plaintiffs pray judgment as follows:
1. Plaintiffs seek Declaratory Judgement on the following assertions:
a.
a. A licensed attorney is permitted to employ non-lawyer assistants to
recommend and advise on selection of classifications of goods and
services for trademark applications sought to be filed with the USPTO
directly to customers, modify standard descriptions from the USPTO
ID manual directly for customers, and pay government fees on behalf
of customers who are not represented by a lawyer.
b. A licensed law firm is permitted to employ non-lawyer assistants to
recommend and advise on selection of classifications of goods and
services for trademark applications sought to be filed with the USPTO
directly to customers, modify standard descriptions from the USPTO
ID manual directly for customers, and pay government fees on behalf
of customers who are not represented by a lawyer.

PLAINTIFFS’ COMPLAINT

75

c. A legal technology C corporation organized in any state within the
United States substantially owned by one or more California and
USPTO licensed attorneys is permitted to employ non-lawyer
assistants to recommend and advise on selection of classifications of
goods and services for trademark applications sought to be filed with
the USPTO directly to customers, modify standard descriptions from
the USPTO ID manual directly for customers, and pay government
fees on behalf of customers who are not represented by a lawyer.
d. A legal technology C corporation organized in any state within the
United States doing business in California and substantially owned by
an attorney or a licensed law firm is not required to conduct conflict
checks before assisting customers that request filings of U.S.
trademarks before the USPTO.
e. A legal technology C corporation organized in any state within the
United States doing business in California and substantially owned by
an attorney or licensed law firm is not required to deposit money
collected from customers wishing to file U.S. trademarks before the
USPTO into an IOLTA trust account on behalf of a customer.
f. A licensed law firm organized in any state within the United States
is permitted to sell ownership in its business to non-lawyer investors.

PLAINTIFFS’ COMPLAINT

76

g. A foreign law firm organized as an Alternative Business Structure
(ABS) law firm in the United Kingdom is permitted to practice law
within the United States before the United States Patent & Trademark
Office if it hires lawyers in the United States that comply with
applicable State Bar and USPTO rules.
h. A licensed attorney or a law firm is permitted to employ non-lawyer
assistants to recommend and advise on selection of classifications of
goods and services for trademark applications sought to be filed with
the USPTO directly to customers, modify standard descriptions from
the USPTO ID manual directly for customers, and pay government
fees on behalf of customers who are not represented by a lawyer.
2.

In the alternate,

a. Order compelling the USPTO to modify its “E-Signature(s) Request
Form” (​Exhibit F​) and Pay Government Fees form (​Exhibit W​) to
prevent companies and persons engaging in the unauthorized practice
of law facilitated through the use this form by filling out USPTO
forms, and receiving USPTO trademark signature links on behalf of
unrepresented customers.
b. Temporary and permanent injunctions as defined herein be entered in
their favor and against Defendants LegalZoom, and any company or

PLAINTIFFS’ COMPLAINT

77

entity in which LegalZoom has an ownership or beneficial interest,
first temporarily and then permanently restraining and enjoining them,
directly or indirectly, on their own or as a partner, or an employee from
operating websites known as www.legalzoom.com or any other
website that attempts to offer U.S. trademark filing and prosecution
services including office actions, statements of use, oppositions,
trademark watch, renewal, opposition, and litigation services.
c. From further use of Plaintiffs’ Trademarks as Internet search terms or
otherwise to trigger sponsored links to LegalZoom’s false and
misleading advertisements implying that not doing conflict checks is a
benefit to consumers.
d. From further acts of false and misleading advertising and unfair
competition that would damage or injure Plaintiffs.
e. The Court find LegalZoom’s acts of false and misleading advertising
and unfair competition to be knowing and willful, and an exceptional
case within the meaning of 15 U.S.C. §1117 and California law.
f. Restitution as allowed under applicable statutes.
g. Compensatory damages in an amount believed to be in excess of
twenty million dollars ($20,000,000) to be determined at trial.
Plaintiffs’ damages are continuing each day as they are unable to

PLAINTIFFS’ COMPLAINT

78

compete fairly due to Defendants’ unlawful actions, and they will seek
treble recovery of all additional damages they incur during the
pendency of this lawsuit.
h. Punitive damages in an amount to be determined at trial.
i. Legal and equitable further relief as this court finds just and proper.
j. Permanent exclusion from practice of law in California and before the
USPTO of Defendants LegalZoom, Brian P Y Liu, Edward Richard
Hartman, and Brian S. Lee.
k. Order compelling the USPTO to follow its stated procedures for
notification to affected applicants of an excluded marks for all
trademarks in which government fees were paid by the excluded party
(​Exhibit X​) including, but not limited notifications to the affected
applicant or registrant that:
i.

​LegalZoom is not entitled to practice before the USPTO in

trademark matters and, therefore, may not represent the
applicant or registrant.
​ii.
​Any trademarks and documents filed by LegalZoom are ​void ab

initio​, meaning they were invalid from the start of any action
taken by the excluded party.
iii.

​LegalZoom may not sign checkboxes, pay government fees,

PLAINTIFFS’ COMPLAINT

79

prepare trademark applications, assist with responses to the
USPTO’s actions, authorize examiner’s amendments or priority
actions, conduct interviews with USPTO employees, or
otherwise represent an applicant, registrant, or party to a
proceeding before the USPTO.
iv. ​All correspondence concerning the application or registration will
be sent to the domestic representative if one has been appointed,
or, alternatively, and in most circumstances, to the applicant or
registrant at his/her address of record.
3.

Plaintiffs be awarded costs, prejudgment interest and attorneys’ fees

pursuant to 15 U.S.C. Code § 1117 of the Lanham Act for exceptional case, 15
U.S.C. § 15(a), and other applicable statutes.

Respectfully submitted this Tuesday December 19th, 2017.

LEGALFORCE RAPC WORLDWIDE P.C.

/s/ Raj V. Abhyanker​______
Raj V. Abhyanker
California State Bar No. 233,284
Attorney for Plaintiffs:
LegalForce RAPC Worldwide, P.C.,
LegalForce, Inc., and
Raj V. Abhyanker
PLAINTIFFS’ COMPLAINT

80

JURY TRIAL DEMAND

Plaintiffs hereby request a bench trial for the declaratory judgement and
injunction causes of action, and a jury trial for all other causes of action alleged
in this Complaint.

Respectfully submitted this Tuesday December 19th, 2017.

LEGALFORCE RAPC WORLDWIDE P.C.

By__​/s/ Raj V. Abhyanker​______
Raj V. Abhyanker
California State Bar No. 233,284
Attorney for Plaintiffs:
LegalForce RAPC Worldwide, P.C.,
LegalForce, Inc., and
Raj V. Abhyanker

PLAINTIFFS’ COMPLAINT

81