U.S. Legal Support, Inc. v. U.S. Legal Forms, Inc. et al

Filing 1

COMPLAINT against U.S. Legal Forms, Inc., USLegal, Inc. (Filing fee $ 350 receipt number 0541-7742386) filed by U.S. Legal Support, Inc.. (Attachments: # 1 Exhibit 1, # 2 Civil Cover Sheet)(Locklar, Michael)

U.S. Legal Support, Inc. v. U.S. Legal Forms, Inc. et al

Doc. 1

IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF TEXAS GALVESTON DIVISION U.S. LEGAL SUPPORT, INC. Plaintiff, v. § CIVIL ACTION NO.

U.S. LEGAL FORMS, INC. and USLEGAL, § JURY TRIAL DEMANDED INC. Defendants.
COMPLAINT FOR TRADEMARK INFRINGEMENT

Plaintiff U.S. Legal Support, Inc. ("Plaintiff') asserts claims against Defendants U.S. Legal Forms, Inc. and USLegal, Inc. ("Defendants") for trademark infringement under federal and state law, violation of the Texas Anti-Dilution statute, false designation of origin, injury to business reputation and/or trade marks, common law unfair competition, and seeks a permanent injunction, damages, and attorney's fees and costs, and such other relief as the Court deems just and proper.
PARTIES

l. Plaintiff U.S. Legal Support, Inc. is a corporation organized under the laws of the State of Texas and maintains its principal office at 363 North Sam Houston Parkway East, Suite 900, Houston, TX 77060. 2. Defendant, U.S. Legal Forms, Inc., is a corporation organized under the laws of the

State of Mississippi and maintains its principal office at 3720 Flowood Dr., Flowood, MS 39232. U.S. Legal Forms, Inc. is not registered to do business in Texas and has no registered agent for service in Texas. 3. Defendant, USLegal, Inc., is a corporation organized under the laws of the State of

Mississippi and maintains its principal office at 3720 Flowood Dr., Flowood, MS 39232.

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USLegal, Inc. is not registered to do business in Texas and has no registered agent for service in Texas. JURISDICTION AND VENUE 4. The Court has original subject matter jurisdiction over federal Lanham Act claims

pursuant to 15 U.S.C. §1125, and 28 U.S.C. §§1331 and 1338. The Court has supplemental jurisdiction over the Texas State law claims pursuant to 28 U.S.C. § 1367(a) because those claims are so closely related to the federal claims brought herein as to form part of the same case or controversy. 5. The Court has personal jurisdiction over Defendants because, on information and

belief, Defendants have deliberately directed activities to Texas in the form of interactive websites that are integral to their business, i.e., www.uslegalforms.com and www.uslegal.com ("Defendants' Websites"). (Plaintiff includes pages from Defendants' Websites as Exhibit 1.) Through its website, Defendants use the US LEGAL mark to conduct transactions with persons in Texas. (Exhibit 1) Through their websites, and in connection with the US LEGAL mark, Defendants solicit orders from Texas Internet users, process payment, and permit users to download legal forms, including legal forms drafted for Texas law and Texas users. (Exhibit 1) 6. Upon information and belief, venue is proper in this district pursuant to 28

U.S.C. §§ 1391(b) & (c). Each Defendant is subject to personal jurisdiction in the State of Texas at the time this action commenced. Its contacts are substantial enough with the State of Texas to subject it to personal jurisdiction. Further, each Defendant committed acts within the district that give rise to this action.

FACTS COMMON TO ALL CLAIMS 7. Plaintiff has used the US LEGAL and U.S. LEGAL trademarks (the "US

LEGAL trademark") since approximately 1996 or 1997. 8. Plaintiff is the lawful owner of US Registration Number 3,305,314, registered

October 9, 2007, for the U.S. LEGAL mark for: Legal staffing and employment recruiting services; legal secretarial and clerical services; financial records management; business records management; invoicing services; computer-aided transcription of depositions and hearings; indexing depositions, in Class 35; Videotaping legal depositions in Class 41; Court reporting; document retrieval services, namely, obtaining court documents for others, in Class 42; and Legal services; legal research; legal document preparation; litigation support services in Class 45. 9. Plaintiff is also the lawful owner of US Registration Number 2,784,130,

registered November 18, 2003, for the US LEGAL mark for: Legal services rendered to United States citizens both in the United States and abroad in Class 42 This registration has become incontestable. 10. For nearly 14 years, Plaintiff has developed a number of proprietary products

and services and has continuously maintained exclusive rights over the US LEGAL trademark. Plaintiff currently operates in almost every state and continuously carries on a national marketing campaign. 11. Plaintiff has invested millions of dollars in promoting goods and services

associated with the US LEGAL trademark throughout the United States. 12. The US LEGAL trademark is highly distinctive.

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13.

The US LEGAL trademark and the goodwill associated with it have become

valuable assets of Plaintiff. 14. In addition to trademark registrations, Plaintiff owns various domain names which

include "uslegal" such as (but not limited to) www.uslegalsupport.com . 15. Upon information and belief, each Defendant has infringed upon and has used the

US LEGAL trademark without express authorization from Plaintiff. Upon information and belief, as of the date of the filing of this complaint, each Defendant still infringes upon and uses the US LEGAL trademark without express authorization. 16. Upon information and belief, each Defendant has used the US LEGAL

trademark in connection with products and services in a manner that creates a likelihood of confusion. Further, upon information and belief, each Defendant does business within states where Plaintiff also does business. Upon information and belief, there is a high likelihood that the continued use and promotion by each Defendant of the US LEGAL trademark will cause additional confusion in the marketplace as to the source of the goods and services sold by Plaintiff and each Defendant. The overlap in services and customers and the confusingly similar names and marks is likely to cause confusion. CLAIM ONE INFRINGEMENT OF FEDERALLY-REGISTERED TRADEMARK 17. As described in this Complaint, each Defendant has infringed upon Plaintiff s

registered trademark in interstate commerce by various acts, including, without limitation, the adoption of the mark and the sale and advertisement of legal forms and services in connection with the infringing mark.

18.

Defendants' adoption and use of the infringing marks is without permission or

authority from Plaintiff and has caused and is likely to cause confusion, mistake and/or intended to deceive those in the relevant market. 19. Each Defendant has adopted and used the infringing marks in connection with

legal forms and services with constructive notice of the Plaintiffs registration under 15 U.S.C. § 1072. 20. By engaging in the complained-of conduct, each Defendant used in

commerce, without the consent of Plaintiff, a reproduction, counterfeit, copy or colorable imitation of the registered trademark and/or reproduced, counterfeited, copied or colorably imitated the registered trademark or applied a reproduction, counterfeit, copy or colorable imitation of the registered trademark to its website and other tangible items intended to be used in commerce or reach consumers in violation of 15 U.S.C. § 1114. 21. Each Defendant's infringing activities have caused and, unless enjoined by

this Court, will continue to cause, irreparable injury and other damages to Plaintiff, its business, its reputation and goodwill because Plaintiff has no adequate remedy at law. CLAIM TWO INFRINGEMENT OF COMMON LAW RIGHTS IN TRADEMARKS AND TRADE NAME 22. As described in this Complaint, each Defendant has infringed upon Plaintiffs

common law rights to its trademark and trade name. Plaintiff is the senior user of the mark US LEGAL. A likelihood of confusion exists between Plaintiff s mark and each Defendant's mark. 23. Each Defendant's infringement of Plaintiffs common law trademark and trade

name has caused damages to Plaintiff entitling Plaintiff to an award of damages.

24.

Each Defendant's infringing activities have caused and, unless enjoined by this

Court, will continue to cause, irreparable injury and other damage to Plaintiff, its business, its reputation and goodwill because Plaintiff has no adequate remedy at law. CLAIM THREE VIOLATION OF THE TEXAS ANTI-DILUTION STATUTE 25. paragraphs. 26. Plaintiff is the owner of the federal trademark registrations identified in this Plaintiff incorporates by reference the allegations set forth in the preceding

Complaint. The US LEGAL trademark is distinctive. 27. Each Defendant's use of the US LEGAL trademark will cause blurring or

tarnishing of the US LEGAL trademark. 28. Each Defendant's infringing activities have caused and, unless enjoined by this

Court, will continue to cause, irreparable injury and other damages to Plaintiff, its business, its reputation and goodwill because Plaintiff has no adequate remedy at law. CLAIM FOUR FALSE DESIGNATION OF ORIGIN UNDER 15 U.S.C. §1125(a) 29. As described in this Complaint, each Defendant's adoption and use of the

infringing marks and domain name constitute a false designation of origin and/or a false and misleading description of its services and is likely to cause confusion, cause mistake and/or to deceive as to the affiliation, connection or association of Plaintiff or as to the origin, sponsorship or approval of the services of Plaintiff in violation of 15 U.S.C. §1125(a). 30. Each Defendant's infringing activities have caused and, unless enjoined by this

Court, will continue to cause, irreparable injury and other damage to Plaintiff, its business, its reputation and goodwill because Plaintiff has no adequate remedy at law. -6-

CLAIM FIVE INJURY TO BUSINESS REPUTATION OR TRADE MARKS 31. As described in this Complaint, each Defendant has injured the business

reputation of Plaintiff and diluted the distinctive quality of Plaintiff s common law trade marks. 32. The actions of each Defendant constitute an injury to the business reputation of

Plaintiff and dilution of Plaintiff s proprietary trade marks in violation of Texas Business and Commerce Code Ann. § 16.29. CLAIM SIX COMMON LAW UNFAIR COMPETITION 33. The above actions of each Defendant are a form of unfair competition that is

prohibited under the common law of the State of Texas. Plaintiff has been damaged by this misconduct in an amount to be determined at trial. INJUNCTIVE RELIEF 34. Plaintiff seeks permanent injunctive relief pursuant to Texas common law, 15

U.S.C. § 1116, and Texas Business & Commerce Code § 16.29. 35. Plaintiff has no adequate remedy at law or otherwise for the harm or damage done

by each Defendant because Plaintiff s business will be irreparably damaged, and such damage is difficult if not impossible to quantify. Plaintiff will suffer irreparable harm, damage, and injury unless the acts and conduct of each Defendant complained of above are enjoined because each Defendant's continued conduct is likely to cause confusion among customers and vendors that will result in a loss of customers, reputation, goodwill, revenue, and profits, diminished marketing and advertising, and trademark dilution. JURY DEMAND 36. Plaintiff requests a trial by jury. -7-

PRAYER FOR RELIEF

Plaintiff prays that after due proceedings, the Court: 1. 2. 3. enter judgment against Defendants on all claims; award damages against Defendants and in favor of Plaintiff; enter a permanent injunction restraining each Defendant, together with its officers, employees, agents, successors and assigns or others acting in concert with them, from using the infringing trademarks and domain names in connection with its business; and 4. grant to Plaintiff such other relief as the Court deems just and proper. Respectfully submitted, By: /s/ Michael G. Locklar Michael G. Locklar Attorney-In-Charge State Bar No. 24010194 Fed. I.D. No. 26095 [e-mail] [phone] [phone] Facsimile JACKSON WALKER L.L.P. 1401 McKinney, Ste. 1900 Houston, Texas 77010 ATTORNEY FOR PLAINTIFF U.S. LEGAL SUPPORT, INC. OF COUNSEL: Thomas H. Adolph State Bar No. 00928900 Fed. I.D. No. 2181 [e-mail] [phone] [phone] Facsimile JACKSON WALKER L.L.P. 1401 McKinney, Ste. 1900 Houston, Texas 77010

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