LegalForce's Reply To LegalZoom's Opposition To Plaintiff's Motion For Leave To File Third Amended Complaint

Case 3:17-cv-07194-MMC Document 129 Filed 06/08/18 Page 1 of 19
RAJ V. ABHYANKER, California SBN 233284

Email: raj@legalforcelaw.com
WENSHENG MA, California SBN 299961
Email: vincent@legalforcelaw.com
LEGALFORCE RAPC WORLDWIDE, P.C.

1580 W. El Camino Real, Suite 10
Mountain View, CA 94040
Telephone: (650) 965-8731
Facsimile: (650) 989-2131
Attorneys for Plaintiff,

LegalForce, Inc.
UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
LEGALFORCE, INC., Case No.: 3:17-cv-07194-MMC
Plaintiff, PLAINTIFF’S REPLY TO DEFENDANT

LEGALZOOM.COM, INC.’S
v. OPPOSITION TO PLAINTIFF’S
MOTION FOR LEAVE TO FILE THIRD
LEGALZOOM.COM, INC., AMENDED COMPLAINT
Defendant. Date: July 20, 2018

Time: 9:00 A.M.
Dept.: Courtroom 7
Judge: Hon. Maxine M. Chesney
1
PLAINTIFF’S REPLY TO DEFENDANT LEGALZOOM.COM, INC.’S OPPOSITION
TO PLAINTIFF’S MOTION FOR LEAVE TO FILE THIRD AMENDED COMPLAINT
CASE NO.: 3:17-cv-07194-MMC
TABLE OF CONTENTS
I. INTRODUCTION 5
II. ARGUMENT 6
A. LegalZoom did not and cannot meet its burden of showing prejudice. 6
1. Trademarkia has the right to file a separate lawsuit because the new case will
not be barred by res judicata and collateral estoppel. 7
2. LegalZoom is not entitled to any attorney’s fees. 9
B. The proposed amendment was brought without delay because the new facts were
discovered in April 2018 and the old facts alleged in the FAC were insufficient to support
a trademark infringement claim. 9
C. The proposed amendment is not at all futile. 13
1. Trademarkia has plausibly pled that TRADEMARKIA is a famous mark. 13
2. Trademarkia has plausibly pled claims of trademark infringement and false
designation. 14
a. Registering the Disputed Domain and redirecting it to LegalZoom’s
homepage which prominently shows “legalzoom®” creates a likelihood of
confusion. 15
b. LegalZoom’s homepage increases the likelihood of confusion. 16
3. The use-of-search-term facts alleged in the FAC plus the facts of registering and
redirecting support a trademark infringement claim. 17
4. Trademarkia has standing to sue in all claims. 17
5. Facebook is not the only case that can support Trademarkia’s claims. 19
III. CONCLUSION 19
2
TABLE OF AUTHORITIES
Cases
Eminence Capital, LLC v. Aspeon, Inc.,
316 F.3d 1048 (9th Cir. 2003) ………………....……………………………...…….. 6
Western Radio Servs. Co. v. Glickman,
123 F.3d 1189 (9th Cir. 1997) ………………....……………………………...…….. 7
Gardner v. Comm'r,
704 Fed. Appx. 720 (9th Cir. 2017) ....………………………...……………...…….. 7
Network Automation, Inc. v. Advanced System Concepts,
638 F.3d 1137 (9th Cir. 2011) ………..………………………...……………...……. 10
J.G. Wentworth, S.S.C. Ltd. P'ship v. Settlement Funding LLC,
2007 U.S. Dist. LEXIS 288 (E.D. Pa. Apr. 18, 2007) ...……...……………...……. 10
1-800 Contacts, Inc. v. Lens.com, Inc.,
722 F.3d 1229 (10th Cir. 2013) ...……...………………………...…………...……. 10
Moving & Storage, Inc. v. Panayotov,
2014 U.S. Dist. LEXIS 31546 (D. Mass. Mar. 12, 2014) ...……...…………...……. 10
Dywer Instruments, Inc. v. Sensocon, Inc.,
103 U.S.P.Q.2D 1444 (N.D. Ind. 2012) ………………......……...…………...……. 10
Fagnelli Plumbing Co. v. Gillece Plumbing & Heating, Inc.,
2010 U.S. Dist. LEXIS 75360 (W.D. Pa. July 27, 2010) ...……………….…...……. 11
Baby Trend, Inc. v. Playtex Prods., LLC,
2013 U.S. Dist. LEXIS 113558 (C.D. Cal. Aug. 7, 2013) ……………….…...……. 11
Tracht Gut, LLC v. L.A. Cnty. Treasurer & Tax Collector,
836 F.3d 1146 (9th Cir. 2016) …....……...…………………………….……...……. 13
Bell Atlantic Corp. v. Twombly,
550 U.S. 544 (2007) ...……...…………………………………………….…...……. 13
Blumenthal Distrib. v. Herman Miller, Inc.,
2017 U.S. Dist. LEXIS 121041 (C.D. Cal. Aug. 1, 2017) …………….……....……. 14
Acad. of Motion Picture Arts & Scis. v. GoDaddy.com, inc.,
2015 U.S. Dist. LEXIS 186627(C.D. Cal. Apr. 10, 2015) ...…….…………....… 14,18
Super Duper, Inc. v. Mattel, Inc.,
382 Fed. Appx. 308 (4th Cir. 2010) ..……………………….…………….…...……. 14
GoPets, Ltd. v. Hise,
657 F.3d 1024 (9th Cir. 2011) …………………………………...……….…...….…. 15
3
Lockheed Martin Corp. v. Network Solutions, Inc.,

985 F. Supp. 949 (C.D. Cal. 1997) ……………………………..……….…….…. 15,16
Facebook, Inc. v. Banana Ads LLC,
2013 U.S. Dist. LEXIS 65834 (N.D. Cal. Apr. 30, 2013) .……...……….…...….…. 19
Statutes
Fed. R. Civ. P. 15(a)(2) ….…………..…………...………………………………………… 7
15 U.S.C. § 1114 …………...…………………...……………………………………..… 9,11
15 U.S.C. § 1125(c)(2)(A) ….…………………...………………………………………… 13
The reply brief is from Page 5 to Page 19 (total of 15 pages)
4
I. INTRODUCTION
LegalZoom is an All-Star cybersquatter1, a U.S. government typosquatter2 and a
professional cyberpirate3 who egregiously registers domains using a pattern including
“legalzoom[competitor].com” in stealth mode (through privacy guard). It now believes it should
not be answerable for its conduct, and instead, Plaintiff should have to pay it for their attorneys
fees. LegalZoom fears the domino effect of losing this lawsuit. It is desperately trying to block
any of its tort victims’ effort to seek redress for injuries.
On May 17, 2018, following the order of this Court (Dkt. 111), Plaintiff LegalForce, Inc.
(“Trademarkia”) filed the second Second Amended Complaint (“SSAC”). Dkt. 119. The SSAC
has three claims based on false and misleading advertising and unfair competition. The next
day, following the court order, Trademarkia filed the Motion for Leave to file third amended
complaint (“Motion”, “Mot.”, Dkt. 120) and attached the Third Amended Complaint (“TAC”).
In the TAC, Trademarkia seeks to add the following new claims (collectively referred to
as “New Claims” or “New TAC Claims”): (1) trademark infringement under 15 U.S.C. § 1114;
(2) trademark dilution under 15 U.S.C. § 1125(c); (3) cyberpiracy under 15 U.S.C. § 1125(d);
(4) trademark infringement under California common law; (5) unfair competition under
California common law; and (6) California trademark dilution under Cal. Bus. & Prof. Code §
1
LegalZoom owns such as LegalZoomTrademarkia.com and IntuitIncorporation.com,
containing trademarks of its competitors including LegalForce, Inc. and Intuit, Inc., and both of
which redirect to LegalZoom.com. Additionally, LegalZoom owns and blocks from public view
domains such as “legalzoom-quickbooks”, “legalzoom-quickbooks2.com”,
“legalzoom-quickbooks3.com”, and “legalzoom-quickbooks4.com” corresponding to a
trademark of Intuit, Inc. related to its popular Quickbooks software. TAC ¶ 23.
2
LegalZoom continues to create confusion between itself and the United States federal
government which owns www.uspto.gov by registering and redirecting the domain and
www.uspxo.com to LegalZoom. TAC ¶ 24. Through the filing of this reply today on June 8,
2018, www.uspxo.com continues to redirect to LegalZoom.com.
3
By way of example, LegalZoom owned domains associated with competitor PRICELINE
including pfriceline.com, pricelihne.com, pricelinde.com, pricelineairfaredeals.com,
pricelineairline.com, pricelineauctions.com, pricelinediscounts.com, pricelinehostels.com,
pricelinehoteldeals.com, pricelinehotles.com, pricelineoffer.com, pricelineplanetickets.com,
pricelinepromos.com, pricelinerates.com, pricelinesale.com, pricelinfe.com, pricelinle.com,
pricelinq.com, priceljine.com, pricelpine.com, priceluine.com, priclline.com, pricneline.com,
pricseline.com, pridceline.com, prifceline.com, prijceline.com, and prikceline.com. TAC ¶¶ 24.
5
14247. In the Motion, Trademarkia explained that the New Claims were added because it
recently discovered new facts that LegalZoom owns the domain LegalZoomTrademarkia.com
(“Disputed Domain”) and redirects it to LegalZoom.com. Mot. at 3.
LegalZoom filed Opposition to Plaintiff’s Motion (“Opposition”, “Opp.”) on June 1,
2018, Dkt. 124. In its eighteen (18) page Opposition, LegalZoom blisteringly dedicated eleven
(11) pages to argue substantively that the TAC failed to state any claim. On the contrary,
LegalZoom spent less than one page to address the most crucial factor to be discussed in this
Motion — prejudice to the opposing party.
Trademarkia’s Motion should be granted by this Court for the following reasons: First,
there is no prejudice to LegalZoom because Trademarkia can file the New Claims in a separate
lawsuit, when, LegalZoom would have to respond, without any right to protest, to two
additional complaints. In addition, although the case has been pending for a while, it is still at
the pleading stage. Thus, LegalZoom cannot meet its burden of showing prejudice to the
opposing party. Second, the TAC was brought without delay because the new facts were
discovered in April 2018. Trademarkia could not have discovered the new facts earlier because
LegalZoom has been hiding its ownership of the disputed domain. Moreover, the facts known at
the time and alleged in the First Amended Complaint (“FAC”) were not yet sufficient to support
a trademark infringement claim, therefore Trademarkia could not and did not make such
allegations in the FAC. Third, the TAC is not futile because Trademarkia has plausibly pled
standing, the fame of the mark, the likelihood of confusion and the trademark infringement.
II. ARGUMENT
A. LegalZoom did not and cannot meet its burden of showing prejudice.
The Ninth Circuit has repeatedly held that among the factors frequently used to assess the
propriety of a motion for leave to amend, prejudice to the opposing party “is the touchstone of
the inquiry under rule 15(a)” and the “crucial factor.” Eminence Capital, LLC v. Aspeon, Inc.,
316 F.3d 1048, 1052 (9th Cir. 2003) (citations and quotation marks omitted). “The party
opposing amendment bears the burden of showing prejudice.” DCD Programs, Ltd. v. Leighton,
833 F.2d 183, 187 (9th Cir. 1987).
6
In their Opposition, LegalZoom makes impetuous arguments, while less than one page
addressed the crucial factor of prejudice. See Opp. at 11-12 (“C. Leave Should Be Denied
Because LegalZoom Would Be Prejudiced By Amendment.”). This is of course, not surprising
because LegalZoom has really nothing to argue about regarding this topic.
As explained below, Trademarkia can file the New Claims in a separate lawsuit.
Therefore, LegalZoom does not suffer any prejudice when this case is still in its pleading stage
and Trademarkia voluntarily chose to include the New Claims in the TAC and undertook the
trouble and risk of seeking leave of Court to file them.
1. Trademarkia has the right to file a separate lawsuit because the new case
will not be barred by res judicata and collateral estoppel.
“Res judicata, also known as claim preclusion, bars litigation in a subsequent action of
any claims that were raised or could have been raised in the prior action. In order for res
judicata to apply there must be: 1) an identity of claims, 2) a final judgment on the merits, and
3) identity or privity between parties.” Western Radio Servs. Co. v. Glickman, 123 F.3d 1189,
1192 (9th Cir. 1997) (citations omitted).
Here, the claims of SSAC and TAC are certainly not identical. The SSAC has three
claims that are based on false and misleading advertising and unfair competition. The TAC
added six New Claims on top of the three existing SSAC claims. Furthermore, there has been no
final judgment on the merits on any of the new TAC claims. Therefore, although the parties are
the same, Trademarkia’s new claims will not be barred by res judicata if Trademarkia were to
file the six new TAC claims in a separate lawsuit.
The new and separate lawsuit, if filed, will certainly not be barred by collateral estoppel,
as collateral estoppel applies only when “(1) the issue at stake [is] identical to the one alleged in
the prior litigation; (2) the issue [was] actually litigated by the party against whom preclusion is
asserted in the prior litigation; and (3) the determination of the issue in the prior litigation [was]
a critical and necessary part of the judgment.” Gardner v. Comm'r, 704 Fed. Appx. 720,
720-721 (9th Cir. 2017) (citation omitted).
This Court’s order on April 30, 2018 (Dkt. 111) also did not bar Trademarkia from filing
the new TAC claims in a separate lawsuit. The court order states:
7
As set forth in the Court's April 10 order of dismissal, however,

LegalForce has been afforded, for purposes of curing the deficiencies
identified by the Court in said order, leave to amend any of the claims it
asserted against LegalZoom in the FAC. Any such Second Amended
Complaint shall be filed no later than May 18, 2018, and LegalForce may
not, nor may any other plaintiff, add therein any new defendants, any new
claims against LegalZoom or any claims against the USPTO, without first
obtaining leave of court. See Fed. R. Civ. P. 15(a)(2).
Dkt. 111 at 9 (emphasis added). Reading the Court order in its context, the word “therein” refers
to the SSAC. The Court only directed Trademarkia not to add any new claims or defendants to
the SSAC, to which Trademarkia complied. The Court did not, in this order, forbid Trademarkia
from filing a new lawsuit in this Court or another federal court. Indeed, Trademarkia believes
that the court order should be limited within the scope of this case only.
Therefore, Trademarkia was neither barred by the law nor by the Court from filing the
new TAC claims in a separate lawsuit against LegalZoom. Filing separately will afford
Trademarkia not only the free right to file the initial complaint, but also the free right to file a
first amended complaint should it become necessary. Then, LegalZoom would be in no position
to raise the question of “the propriety of a motion for leave to amend”, see Opp. at 9:2. Before
it does so, Trademarkia took a more conservative approach by proposing a TAC in this case.
Thus, there is no prejudice to LegalZoom because Trademarkia can file the new claims in
a separate lawsuit. If that is done, LegalZoom would have to respond, without any right to
protest, to two additional complaints—a new initial complaint and a new first amended
complaint should it have become necessary. See Mot. at 5. However, in the interest of judicial
economy, Trademarkia takes this approach and voluntarily chooses to add the new claims to the
TAC. Mot. at 5.
This can only be done with good faith and to promote judicial efficiency. If the new
lawsuit is filed, presumably, one of the parties would then also file a request to either
consolidate or relate the two cases. However, it would be far more efficient—in terms of both
judicial resources and the parties’ own resources—to simply permit Trademarkia to file the
TAC in the instant lawsuit and have all the common issues decided in a single lawsuit. See, e.g.,
Blair-Naughton, LLC v. Diner Concepts, Inc., 2007 U.S. Dist. LEXIS 87862, *13 (D. Kan.
8
2007) (“By joining this new defendant and new claim against a present defendant, all potential
claims against all potential parties can be resolved on the merits in a more efficient and timely
manner in this action rather than leaving issues to be resolved in a new lawsuit in the future.”).
Accordingly, Trademarkia submits that judicial economy weighs in favor of permitting
Trademarkia to file its TAC in the instant lawsuit.
2. LegalZoom is not entitled to any attorney’s fees.
Rather than appreciating Trademarkia for streamlining and consolidating the disputes
between the parties, LegalZoom made bumbling arguments opposing the Motion, either
intentionally or by ignorance, that LegalZoom is somehow prejudiced by the TAC and is even
entitled to attorney fees. See Opp. at 11-12 (“Without question, LegalZoom has been and will be
prejudiced by Plaintiff filing yet another complaint requiring another response.”). See also id. at
22-23 (Plaintiff to reimburse “LegalZoom for its costs and fees incurred in opposing the TAC
and moving to dismiss the prior faulty complaints.”).
However, these flimsy arguments are both illogical and without merit. As explained
supra, there has been zero prejudice to LegalZoom when Trademarkia voluntarily chose to add
the new claims in the TAC rather than to file a separate lawsuit. This is not the first time
LegalZoom frivolously asked for attorney’s fees. In its prior opposition to the motion for leave
to file second amended complaint (Dkt. 94), LegalZoom also frivolously argued for attorney’s
fees but its request was totally ignored by the court. See Dkt. 111.
Unless LegalZoom is implying that the order of this Court should not be followed, it is
silly for LegalZoom to again request for attorney’s fee when Trademarkia exactly followed the
court order. See Id. at 9 (“LegalForce has been afforded … leave to amend any of the claims it
asserted against LegalZoom in the FAC”; “LegalForce may not … add therein any new claims
against LegalZoom … without first obtaining leave of court.”).
B. The proposed amendment was brought without delay because the new facts
were discovered in April 2018 and the old facts alleged in the FAC were
insufficient to support a trademark infringement claim.
LegalZoom argues that the proposed amendment was made after unreasonable delay
because Trademarkia already knew and alleged similar facts in the FAC. Opp. at 10-11, Section
9
IV.B. LegalZoom’s line of reasoning is summarized and clarified as follows: In TAC ¶ 78

(which is within the TAC’s second claim for trademark infringement under 15 U.S.C. § 1114),
it was alleged that LegalZoom “used” Trademarkia’s trademarks by using Trademarkia’s
registered trademarks as search terms to place its own advertisements above Trademarkia’s
advertisements. But because Trademarkia already alleged these facts in the FAC, see FAC ¶ 132
(“LegalZoom uses the search terms ‘LegalForce’ … or ‘Trademarkia’ to redirect customers to
LegalZoom’s false and misleading advertisements…”), LegalZoom contends that “Plaintiff
cannot dispute that it knew about these alleged search terms long before April 2018.” Opp. at
10:19. Based on this, LegalZoom argues that there is undue delay to add these allegations now.
Opp. at 10:18-20. Additionally, LegalZoom asserts that Trademarkia lacks good faith because
Trademarkia did not mention these allegations in the accompanying motion. Id. at 10:20-22.
LegalZoom shows, for a second time, that it fails to understand the difference between
alleging keyword advertising for a trademark infringement claim under the Lanham Act, and
alleging keyword advertising for a false and misleading advertising under the Lanham Act.
In the FAC, it was alleged that LegalZoom’s use of search term “LegalForce” or
“Trademarkia” is a false and misleading advertisement under the Lanham Act. See FAC ¶ 132.
However, Trademarkia did not allege that LegalZoom’s use of the search terms violated
trademark infringement or false designation of origin under the Lanham Act. Nor could
Trademarkia allege these violations based on the use-of-search-term facts which Trademarkia
only knew at the time of filing the FAC. Courts have repeatedly held that merely purchasing,
selling, or using the trademark of another as a keyword does not result in a likelihood of
confusion among consumers, and thus there is no actionable claim for trademark infringement
or false designation of origin under the Lanham Act.4
Specifically, in Network Automation, Inc. v. Advanced System Concepts, 638 F.3d 1137
(9th Cir. 2011), the Ninth Circuit largely rejected the initial interest doctrine, stating that “it
would be wrong to expand the initial interest confusion theory of infringement beyond the realm
of the misleading and deceptive to the context of legitimate comparative and contextual
4
S ee, e.g., J.G. Wentworth, S.S.C. Ltd. P'ship v. Settlement Funding LLC, No. 06-0597, 2007
U.S. Dist. LEXIS 288, 2007 WL 30115, at *5–6 (E.D. Pa. Apr. 18, 2007).
10
advertising.” Instead, the court stressed the importance of returning to a full analysis of
likelihood of confusion factors and found that a “mere diversion” is not enough. Id. at 1148.
Other courts have reached similar conclusions.5 Recently, the Tenth Circuit in 2013
issued a decision effectively refocusing the likelihood of confusion factors in a manner that
supports competitors’ ability to use keyword advertising. The court held that the use of a
competitor’s trademark is not trademark infringement, provided that the mark that triggers
appearance of the sponsored link is not visible in the sponsored matter within the results list.6
While LegalZoom was confused about this distinction and raised objections in its first
motion to dismiss, see Dkt. 61 at 26-27, plaintiffs subsequently clarified LegalZoom’s
misapprehension of the law in plaintiffs’ opposition. See Dkt. 73 at 18 (“that is only partially
true: use of a competitor’s mark in search terms is not a violation of the other type of Lanham
Act case: claims for likelihood of confusion brought by trademark holders claiming a form of
infringement.”) (emphasis in the original). See also id. at 19 (“Plaintiffs do not allege that
LegalZoom’s advertising keywords [] have infringed on Plaintiffs’ trademarks”; “Plaintiffs
allege that these keywords are highly misleading”).
Now, either intentionally or by ignorance, LegalZoom is confused once again by raising
the argument of unreasonable delay. This argument is unhinged from legal logic and common
sense. Simply put, Trademarkia could not make a trademark infringement allegation when filing
the FAC because it did not have enough facts to support such a claim.
In April 2018, Trademarkia discovered new facts which unequivocally demonstrated “the
fact that LegalZoom owns the domain LegalZoomTrademarkia.com and has been redirecting
[its] web traffic to LegalZoom’s homepage.” Dkt. 120-2, Ex. B, Declaration of Raj Abhyanker
(“Decl. of Abhyanker”) ¶ 5. This newly discovered fact, coupled with the previously alleged
use-of-search-term facts, rendered it sufficient to state a trademark infringement claim. See, e.g.,
Fagnelli Plumbing Co. v. Gillece Plumbing & Heating, Inc., 2010 U.S. Dist. LEXIS 75360 at
5
See 1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229, 1244–45 (10th Cir. 2013); Moving
& Storage, Inc. v. Panayotov, Civ. Action No. 12-12262, 2014 U.S. Dist. LEXIS 31546 (D.
Mass. Mar. 12, 2014); Dywer Instruments, Inc. v. Sensocon, Inc., 103 U.S.P.Q.2D 1444 (N.D.
Ind. 2012).
6
See 1-800 Contacts, 722 F. 3d at 1246-49.
11
*20 (W.D. Pa. July 27, 2010), Case No. 2:10-CV-00679-AJS (“Defendants’ collective
registration, implementation, and use of [website having plaintiff’s mark] to redirect internet
traffic constitutes ‘use of commerce’ under the Lanham Act.”); see also infra, Section II.C.2.a
(“Registering the Disputed Domain and redirecting it to LegalZoom’s homepage which
prominently shows “legalzoom®” creates a likelihood of confusion.”).
Thus, based on the above analysis, Trademarkia alleged both the newly discovered facts
and the previously alleged facts in ¶ 78 of the TAC, and made the trademark infringement claim
under 15 U.S.C. § 1114 in the TAC. Trademarkia however, did not specifically mention the
allegations in ¶ 78 of the TAC in the Motion, not because Trademarkia lacked good faith, but
simply because there are 46 pages and 157 paragraphs in the TAC, and Trademarkia believed
that it was not necessary to mention each and every new fact of the TAC in the Motion, and that
it was equally unnecessary to overburden the court with an obvious issue such as this one.
Furthermore, LegalZoom argues that alleging the new facts now indicates undue delay
because Trademarkia should have discovered the new facts earlier by exercising reasonable
diligence. Opp. at 10:23-27. However, statute of limitations for Lanham Act claims “runs from
the time the plaintiff knew or should have known about his [Lanham Act] cause of action.”
Baby Trend, Inc. v. Playtex Prods., LLC, 2013 U.S. Dist. LEXIS 113558 at *9 (C.D. Cal. Aug.
7, 2013) (citations omitted). Here, the new facts were discovered by Trademarkia in April 2018.
See Decl. of Abhyanker ¶ 5. Moreover, “in the exercise of reasonable diligence the facts could
not have been discovered at an earlier date.” Baby Trend, 2013 U.S. Dist. LEXIS 113558 at
*12. LegalZoom did not use the Disputed Domain until 2014, and has been hiding its ownership
of this domain from public view by paying a separate fee to a company called DomainsByProxy
LLC. TAC ¶ 22. Only when this case was actively litigated did Trademarkia start to conduct
in-depth investigation into all the domains secretly owned by LegalZoom. That was when
Trademarkia uncovered the deeply concealed evidence of LegalZoom’s domain ownership. No
reasonable business would have conducted and invested into this kind of investigation unless
there is an active litigation.
For the foregoing reasons, the proposed amendment was brought without undue delay.
12
C. The proposed amendment is not at all futile.

LegalZoom dedicated eleven (11) pages of its opposition brief to blisteringly argue
substantively that the TAC failed to state any claim. Given that Trademarkia can file the new
TAC claims in a separate lawsuit in this or another federal court, see supra, LegalZoom’s effort
is nothing but trying to kill a fly with a canon. As explained below, the TAC has successfully
pled all the new claims in the TAC.
1. Trademarkia has plausibly pled that TRADEMARKIA is a famous
mark.
LegalZoom argues that Trademarkia fails to allege that the TRADEMARKIA mark is
famous. Opp. at 12:20-22. However, this argument ignores the well-established legal standard
that “[a]t the motion to dismiss phase, the trial court must accept as true all facts alleged in the
complaint and draw all reasonable inferences in favor of the plaintiff.” Tracht Gut, LLC v. L.A.
Cnty. Treasurer & Tax Collector, 836 F.3d 1146, 1150 (9th Cir. 2016). More importantly, to
survive a motion to dismiss, Trademarkia need only allege “enough facts to state a claim to
relief that is plausible on its face.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007).
The TAC has alleged enough facts that, if deemed true, would make it at least plausible
that the TRADEMARKIA marks are famous marks. In determining whether a mark is famous,
the court may consider all relevant factors including (i) the duration, extent, and geographic
reach of the mark’s advertising and publicity of the mark; (ii) the amount, volume, and
geographic extent of sales offered under the mark; (iii) the extent of the mark’s actual
recognition; and (iv) whether the mark was on the principal register. 15 U.S.C. § 1125(c)(2)(A).
The TAC has pled enough facts to satisfy all the four factors.
First, as to the duration, extent and geographic reach of the TRADEMARKIA mark’s
advertising and publicity, the TAC has alleged that since 2009, Trademarkia has become the
leading, nationally recognized trademark website for small businesses and consumers. TAC ¶ 2.
The TRADEMARKIA marks have become the leading provider of online trademark search and
watch services and have achieved such widespread public recognition that the use of the suffix
“markia” anywhere all across the U.S. is now associated with Trademarkia. TAC ¶ 4. The TAC
further alleged that Trademarkia has promoted the TRADEMARKIA marks through advertising
13
across the media of video, radio, and the Internet. TAC ¶ 6. Moreover, licensees of the
Trademarkia platform have expended well over ten million dollars promoting the need for
trademark search services and educating and raising awareness among consumers. TAC ¶ 5.
Second, as to the amount, volume, and geographic extent of sales offered under the
TRADEMARKIA mark, the TAC has alleged that since 2009, Trademarkia has served
approximately 50,000,000 (fifty million) visitors throughout the United States, and has assisted
more than 100,000 (one-hundred thousand) small business owners in the search and monitoring
of their trademark applications from more than 80 countries. TAC ¶ 31.
Third, as to the extent of the mark’s actual recognition, the TAC has alleged that
Trademarkia is cited as a trusted source for corporate history and branding in at least 700
Wikipedia pages for leading brands including Disney, Samsung, Coca Cola, Anheuser-Busch,
Tesla, Kleenex, Dreamworks and hundreds of other iconic brands. TAC ¶ 33.
Fourth, as to whether the TRADEMARKIA marks were on the principal register, the
TAC has alleged that Trademarkia is the registered owner of the TRADEMARKIA mark and
the LEGALFORCE mark. TAC ¶ 3.
Based on the above, the TAC has pled enough facts to satisfy all four factors that, if
deemed true, would make it plausible on its face that the TRADEMARKIA marks are famous.
Finally, whether a mark is famous is a question of fact that must be resolved at trial. See
Blumenthal Distrib. v. Herman Miller, Inc., No. 14-cv-01926, 2017 U.S. Dist. LEXIS 121041 at
*46 (C.D. Cal. Aug. 1, 2017) (citation and quotation marks omitted); Acad. of Motion Picture
Arts & Scis. v. GoDaddy.com, inc., 2015 U.S. Dist. LEXIS 186627 at *37 (C.D. Cal. Apr. 10,
2015). See also Super Duper, Inc. v. Mattel, Inc., 382 Fed. Appx. 308, 314 (4th Cir. 2010) (“the
jury was well situated to make the factual determination that [the] marks were ‘famous’; “we
are prohibited from reweighing the evidence or drawing inferences from the facts.”).
2. Trademarkia has plausibly pled claims of trademark infringement and
false designation.
LegalZoom argues that the TAC failed to plead the likelihood of confusion. Opp. at
16-18. It argues that mere registration of a domain name does not constitute trademark
infringement and there is nothing confusing about redirecting traffic of the Disputed Domain to
14
LegalZoom’s homepage. Id. at 16-17. Then, LegalZoom argues that “clear labeling” would
eliminate any risk of confusion. Id. at 17:14-26. However, as explained below, this argument is
meritless.
a. Registering the Disputed Domain and redirecting it to
LegalZoom’s homepage which prominently shows “legalzoom®”
creates a likelihood of confusion.
The Ninth Circuit has held that a defendant’s unauthorized use of an infringing mark in
an internet domain name may give rise to a claim for trademark infringement, so long as the
defendant “did more than merely register the domain name.” GoPets, Ltd. v. Hise, 657 F.3d
1024, 1035 (9th Cir. 2011) (citing Lockheed Martin Corp. v. Network Solutions, Inc., 985 F.
Supp. 949, 957 (C.D. Cal. 1997)). In Lockheed Martin, the court referenced another case where
the defendant did “more than merely register a domain name; he has created a home page that
uses plaintiff's mark as its address, conveying the impression to Internet users that plaintiff is
the sponsor of defendant's web site.” Id. at 957 (citation omitted). The court explains, that the
infringing use “was not registration of the plaintiff's mark [], but rather the use of the plaintiff's
trademark as a domain name to identify his web site in a manner that confused Internet users as
to the source or sponsorship of the products offered there.” Id. at 957.
Here, what LegalZoom did was more than that. In June 2012, LegalZoom purchased the
Disputed Domain, which contains Plaintiff’s registered mark TRADEMARKIA. TAC ¶ 22.
This domain name is confusingly similar to Plaintiff’s own website,
LegalForceTrademarkia.com, and Plaintiff’s combined mark
LEGALFORCETRADEMARKIA, TAC ¶¶ 8, 10. This has created actual confusion from
customers of Trademarkia. TAC ¶¶ 44, 80. For example, Steve Hidalgo, Customer Service
Manager, employed full time by LegalForce, Inc. declares under oath that he and other
employees have spoken with numerous customers confused between LEGALFORCE and
LEGALFORCE TRADEMARKIA. See Declaration of Steve Hidalgo (“Decl. of Hidalgo”),
Exhibit 1 ¶¶ 7, 9. Moreover, Hidalgo believes Trademarkia has lost sales because of this
confusion. Id. at ¶8.
Furthermore, as testified by linguist expert witness and Professor Emeritus of English at
15
Duke University—Ronald R. Butters, a reasonable person is “highly likely to be linguistically

confused as to source and origin of LEGALZOOMTRADEMARKIA and
LEGALFORCETRADEMARKIA.” See Declaration of Ronald R. Butters (“Decl. of Butters”),
Exhibit 2 ¶¶ 7, 9, 18. In there, Professor Butters further attests under oath:
“It is a well-known psycholinguistic fact that the beginnings and endings of words and
phrases are of paramount importance in distinguishing them one from another. For this reason
alone, the potential for linguistic confusion is great: speakers will note LEGAL at the beginning
of the marks and TRADEMARKIA at the end ... and focus little or no attention on the
one-syllable nouns zoom and force that are buried in between:
LEGALZOOMTRADEMARKIA
LEGALFORCETRADEMARKIA”. Id at ¶ 16.
LegalZoom began to redirect the traffic from LegalForceTrademarkia.com to
LegalZoom’s homepage, LegalZoom.com in 2014. TAC ¶ 22. LegalZoom’s light-and-dark-blue
logo, “legalzoom®”, is prominently shown on the top of its homepage. This creates even more
likelihood of confusion to the consumers. Since consumers are “well aware that competing
providers of goods and services often buy and sell each other,” Decl. of Butters ¶ 17, such as
Amazon acquiring Whole Foods, JP Morgan merging with Chase, Lockheed merging with
Martin Marietta, or Exxon merging with Mobil, by placing the term “LegalZoom” in front of
the mark “Trademarkia”, the defendant exerts false dominion over the Plaintiff through which a
reasonable consumer would believe that LegalZoom has acquired or merged with Trademarkia,
or that “LegalZoom and Trademarkia are affiliated.” TAC ¶ 10.
Therefore, LegalZoom’s “use of the plaintiff's trademark as a domain name to identify
[its] web site in a manner that confused Internet users as to the source or sponsorship of the
products offered” constitutes trademark infringement. Lockheed Martin Corp, 985 F. Supp. 957.
b. LegalZoom’s homepage increases the likelihood of confusion.
LegalZoom next argues that “clear labeling” would eliminate any risk of confusion. This
argument fails for two reasons. First, LegalZoom’s homepage (or the various landing pages of
the redirection, see Exhibit 3) has no disclaimer which clearly labels that the website is not the
16
website of Trademarkia, or that the website has no association with Trademarkia, or that
Trademarkia is not acquired by or not part of LegalZoom.
Second, the prominent display of “legalzoom®” logo is actually a “clear” label that
increases the degree of the likelihood of confusion. Likewise, when a customer wanting to eat
In-N-Out, sees a fast food restaurant with a confusing sign “McDonald’s In-N-Out” and walks
into it, but only sees “McDonald’s” and its products prominently displayed on the menu board,
the customer will be left more confused as to the source and origin of this restaurant—whether
it is a McDonald’s restaurant or an In-N-Out restaurant. The customer will even wonder if
McDonald’s has acquired In-N-Out or if In-N-Out still exists.
Here, think of LegalZoomTrademarkia.com as the “McDonald’s In-N-Out” restaurant
sign and the homepage having “legalzoom®” logo as the menu board, it is apparent that in the
same way, LegalZoom’s homepage increases the degree of customer’s likelihood of confusion
as to the source and origin of Trademarkia’s marks.
3. The use-of-search-term facts alleged in the FAC plus the facts of
registering and redirecting support a trademark infringement claim.
LegalZoom’s redundant arguments in Opp. at 18-19 (“4. The Bare Allegation That
LegalZoom Uses Trademarkia’s Registered Trademarks As Search Terms Cannot Support A
Claim.”) has already been refuted above. As explained supra, the use-of-search-term facts
alleged in the FAC were not sufficient to support a trademark infringement claim. See Section
II.B. But registering a domain and redirecting it to LegalZoom’s homepage creates a likelihood
of confusion and constitutes trademark infringement. See Section II.C.2.a.
4. Trademarkia has standing to sue in all claims.
The TAC has alleged sufficiently and plausibly that Trademarkia has suffered concrete
and particularized injury. For example, the TAC has alleged that Defendant’s actions will
irreparably harm the valuable goodwill Trademarkia has built up over almost the past decade as
a result of hard work and considerable investment of time and money. TAC ¶ 9. In addition,
Defendant must be ordered to stop its infringing activities, to pay damages to Trademarkia in an
amount to be determined at trial, and to disgorge any profits it has made. TAC ¶ 11.
Specifically, the TAC alleges that Trademarkia’s independent revenue for trademark
17
watch and monitoring services has dropped from the high of approximately $1,545,775.00 in
2012 when it was growing at a compounded annual growth rate of over 30%, down to just
$455,016.00 in 2017—a precipitous 70% decline in revenue over a six-year period. TAC ¶ 18.
This is the “injury to a commercial interest in sales”. See Dkt. 111 at 4. Any doubt on standing
would be explained by Trademarkia’s Customer Service Manager Steve Hidalgo. See Decl. of
Hidalgo ¶ 8 (“I believe that [Trademarkia] may have lost sales because of this confusion, and
that numerous Trademarkia customers have actually been confused.”).
As for the cybersquatting claim, cybersquatting “occurs when a person other than the
trademark holder registers the domain name of a well known trademark and then attempts to
profit from this ... by using the domain name to divert business from the trademark holder to the
domain name holder.” Acad. of Motion Picture, 2015 U.S. Dist. LEXIS 120871 at *69
(emphasis added). Here, LegalZoom attempts to profit from the Disputed Domain by appending
query strings7 to the domain forwarding URL so that it can keep track of how much traffic
actually comes from the LegalZoomTrademarkia.com website.
LegalZoom actively disseminated and marketed the LegalZoomTrademarkia.com domain
for years because recent analysis of WayBackMachine data8 clearly shows that LegalZoom
included the Disputed Domain as part of its “Affiliate” commission program. Under this
program, LegalZoom compensates “[w]ebsite owners with a strong SEO presence for legal
keywords” up to 15% “for every sale completed by a referral” to LegalZoom. See
https://www.legalzoom.com/affiliates. WayBackMachine archives demonstrate that LegalZoom
redirected traffic from the Disputed Domain to its affiliate tracking URLs by first redirecting to
http://lztrk.com/?a=23&c=15&p=r&s1=legalzoomtrademarkia.com and then redirecting to
http://www.legalzoom.com/aff/home?utm_source=23&utm_medium=affiliate&utm_campaign
=home&cm_mmc=affiliate-_-ck-_-23-_-na.9 Accessing the Disputed Domain secretly directed
the visitor to the first link. The first link was then directed to the second link, which displayed
7
See https://en.wikipedia.org/wiki/Query_string.
8
The redirection is judicially noticeable on WayBackMachine archives. See Request for
Judicial Notice, Dkt. 128, Ex. 1.
9
Note the words “affiliate” and “campaign” in the URL.
18
LegalZoom’s homepage or another landing page on LegalZoom’s website.

By appending query strings (the text after the question mark) to the URL, LegalZoom
tracked how many redirections are sent to the LegalZoomTrademarkia.com domain. This
enabled LegalZoom to offer monetary commissions to third parties who refer customers to
LegalZoomTrademarkia.com. LegalZoom knowingly and purposefully used tracking scripts and
software to keep track of how much in commissions it must pay out to third parties for referrals
to the LegalZoomTrademarkia.com website, and sought revenue collected from these referrals.
In summary, WayBackMachine provides a forensic money trail of this history, where
LegalZoom redirected LegalZoomTrademarkia.com to multiple internal tracking links. This
clearly demonstrates LegalZoom’s attempt and intent to profit from the Disputed Domain and
its active promotion of the domain to third parties who were offered commissions to divert
traffic from LegalZoomTrademarkia.com to LegalZoom.com.
5. Facebook is not the only case that can support Trademarkia’s claims.
Finally, LegalZoom took issue with a case cited in the Motion, Facebook, Inc. v. Banana
Ads LLC, 2013 U.S. Dist. LEXIS 65834 (N.D. Cal. Apr. 30, 2013). The case was cited to show
that the “new claims are not frivolous”, which is a factor to be considered when assessing the
propriety of a motion for leave to amend. Mot. at 5. The cases that support the new claims are
plenty, see, e.g., cases being cited earlier in this brief.
Based on the above, the proposed amendment is not at all futile because it has
successfully pled all the new claims in the TAC.
III. CONCLUSION
For the foregoing reasons Trademarkia respectfully submits that Trademarkia’s motion
for leave to file the third amended complaint should be granted.
Dated: June 8, 2018 Respectfully submitted,

LEGALFORCE RAPC WORLDWIDE P.C.
/s/Raj V. Abhyanker____________
Raj V. Abhyanker (233284)
Attorney for Plaintiff:
LegalForce, Inc.
19

LegalForce's Reply To LegalZoom's Opposition To Plaintiff's Motion For Leave To File Third Amended Complaint

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Case 3:17-cv-07194-MMC Document 129 Filed 06/08/18 Page 1 of 19

RAJ V. ABHYANKER, California SBN 233284

LEGALFORCE RAPC WORLDWIDE, P.C.

Attorneys for Plaintiff,

UNITED STATES DISTRICT COURT

LEGALFORCE, INC., Case No.: 3:17-cv-07194-MMC

Plaintiff, PLAINTIFF’S REPLY TO DEFENDANT

Defendant. Date: July 20, 2018

Lockheed Martin Corp. v. Network Solutions, Inc.,

The reply brief is from Page 5 to Page 19 (total of 15 pages)

As set forth in the Court's April 10 order of dismissal, however,

IV.B. LegalZoom’s line of reasoning is summarized and clarified as follows: In TAC ¶ 78

C. The proposed amendment is not at all futile.

Duke University—Ronald R. Butters, a reasonable person is “highly likely to be linguistically

LegalZoom’s homepage or another landing page on LegalZoom’s website.

Dated: June 8, 2018 Respectfully submitted,

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LegalForce's Reply To LegalZoom's Opposition To Plaintiff's Motion For Leave To File Third Amended Complaint

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LegalForce's Reply To LegalZoom's Opposition To Plaintiff's Motion For Leave To File Third Amended Complaint

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Case 3:17-cv-07194-MMC Document 129 Filed 06/08/18 Page 1 of 19

RAJ V. ABHYANKER, California SBN 233284

LEGALFORCE RAPC WORLDWIDE, P.C.

Attorneys for Plaintiff,

UNITED STATES DISTRICT COURT

LEGALFORCE, INC., Case No.: 3:17-cv-07194-MMC

Plaintiff, PLAINTIFF’S REPLY TO DEFENDANT

Defendant. Date: July 20, 2018

Lockheed Martin Corp. v. Network Solutions, Inc.​,

The reply brief is from Page 5 to Page 19 (total of 15 pages)

As set forth in the Court's April 10 order of dismissal, however,

IV.B. LegalZoom’s line of reasoning is summarized and clarified as follows: In TAC ¶ 78

C. The proposed amendment is not at all futile.

Duke University—Ronald R. Butters, a reasonable person is “highly likely to be linguistically

LegalZoom’s homepage or another landing page on LegalZoom’s website.

Dated: June 8, 2018 Respectfully submitted,

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Lockheed Martin Corp. v. Network Solutions, Inc.,