Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA511144
`ESTTA Tracking number:
`12/15/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91205114
`Plaintiff
`LegalZoom.com, Inc.
`IRENE Y LEE
`RUSS AUGUST & KABAT
`12424 WILSHIRE BLVD, 12TH FLOOR
`LOS ANGELES, CA 90025
`UNITED STATES
`ilee@raklaw.com, azivkovic@raklaw.com, dgoldman@legalzoom.com
`Motion to Suspend for Civil Action
`Irene Y. Lee
`ilee@raklaw.com
`/Irene Y. Lee/
`12/15/2012
`3334-US2 121214 Motion to Stay.pdf ( 4 pages )(141545 bytes )
`EXHIBIT A (1 OF 4).pdf ( 55 pages )(4614702 bytes )
`EXHIBIT A (2 OF 4).pdf ( 64 pages )(5747536 bytes )
`EXHIBIT A (3 OF 4).pdf ( 51 pages )(3407376 bytes )
`EXHIBIT A (4 OF 4).pdf ( 68 pages )(3350200 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91205114
`
`Serial No. 85406236
`
`Mark: BAILZOOM.COM NATIONWIDE
`
` BAIL BOND SERVICE
`
`
`
`
`LegalZoom.com, Inc.
`
`Opposer,
`
`v.
`
`
`Brenwell Media, LLC
`
`Applicant.
`
`
`
`
`
`OPPOSER’S MOTION TO SUSPEND PROCEEDINGS FOR CIVIL ACTION
`
`
`Opposer LegalZoom.com, Inc. (“LegalZoom”) hereby moves for suspension of these
`
`proceedings pursuant to Trademark Rule 2.117(a), 37 C.F.R. § 2.117(a) in light of the recently
`
`filed civil action, LegalZoom.com, Inc. v. Brenwell Media, LLC, C.D. Cal. Case No. CV12-
`
`A.
`
`10706 JAK (MANx) (the “Civil Action”).1
`
`Summary: The Board Should Suspend These Proceedings Because The Civil Action
`And The Opposition Proceeding Involve Identical Issues Of Fact And Law And A
`Final Determination In The Civil Action Will Have A Bearing On The Issues That
`Are Currently Pending Before The Board.
`
`On August 24, 2011, Applicant Brenwell Media, LLC (“Applicant”) filed Application
`
`Serial No. 85/406,236 to register the mark BAILZOOM.COM NATIONWIDE BAIL BOND
`
`SERVICE (the “BAILZOOM” mark). On May 11, 2012, LegalZoom filed an Opposition to
`
`Applicant’s application based on LegalZoom’s six trademark and service mark registrations for
`
`the LEGALZOOM formative marks. On June 21, 2012, Applicant filed their Answer to
`
`LegalZoom’s Notice of Opposition (the “Answer”). In that Answer, Applicant denied, among
`
`other things, that (1) the LEGALZOOM marks are famous, (2) Applicant is attempting to
`
`
`1 A copy of the complaint in the Civil Action is attached hereto as Exhibit A.
`
`OPPOSER’S MOTION TO SUSPEND PROCEEDINGS FOR CIVIL ACTION
`
`
`
` PAGE 1 OF 4
`
`

`
`register the BAILZOOM mark in connection with services that are highly related to the services
`
`provided by LegalZoom under the LEGALZOOM marks, (3) that there is a likelihood of
`
`confusion between the BAILZOOM mark and the LEGALZOOM marks, and (4) that
`
`Applicant’s BAILZOOM mark so closely resembles LegalZoom’s famous marks and name
`
`LEGALZOOM that it is likely to dilute and will dilute the distinctive quality of the
`
`LEGALZOOM marks.
`
`On December 14, 2012, LegalZoom filed the Civil Action against Applicant in the
`
`United States District Court for the Central District of California. The complaint in the Civil
`
`Action alleges that Applicant’s use of the BAILZOOM mark constitutes Trademark
`
`Infringement/False Designation of Origin/Unfair Competition (15 U.S.C. § 1125(a));
`
`Trademark Dilution (15 U.S.C. § 1125(c)); Trademark Dilution under California Law (Cal. Bus.
`
`& Prof. Code § 14247 et seq.); Unfair Competition under California law (Cal. Bus. & Prof.
`
`Code § 17200 et seq.); Trademark Infringement under California law (California Common
`
`Law); and Unfair Competition (California Common Law).
`
`Trademark Rule 2.117 gives the Board discretion to suspend proceedings once it learns
`
`that a civil action is pending:
`
`“(a) Whenever it shall come to the attention of the Trademark Trial and Appeal
`Board that a party or parties to a pending case are engaged in a civil action or
`another Board proceeding which may have a bearing on the case, proceedings
`before the Board may be suspended until termination of the civil action or the
`other Board proceeding.
`
`(b) Whenever there is pending before the Board both a motion to suspend and a
`motion which is potentially dispositive of the case, the potentially dispositive
`motion may be decided before the question of suspension is considered regardless
`of the order in which the motions were filed.
`
`(c) Proceedings may also be suspended, for good cause, upon motion or a
`stipulation of the parties approved by the Board.”
`
`37 C.F.R. 2.117. Additionally, the Trademark Board Manual of Procedure (“T.B.M.P.”) states:
`
`“Most commonly, a request to suspend pending the outcome of another
`proceeding seeks suspension because of a civil action pending between the parties
`in federal district court. To the extent that a civil action in federal district court
`involves issues in common with those in a proceeding before the Board, the
`
`OPPOSER’S MOTION TO SUSPEND PROCEEDINGS FOR CIVIL ACTION
`
`
`
` PAGE 2 OF 4
`
`

`
`decision of the federal district court is often binding upon the Board, while the
`decision of the Board is not binding upon the court. . . . Ordinarily, the Board will
`suspend proceedings in the case before it if the final determination of the other
`proceeding may have a bearing on the issues before the Board.”
`
`T.B.M.P. 510.02(a); see also Alfred Dunhill of London, Inc. v. Dunhill Tailored Clothes, Inc.,
`
`293 F.2d 685, 686 fn.2 (C.C.P.A. 1961)(“It appears to be the usual practice to stay registration
`
`proceedings pending the out-come of court actions between the same parties involving related
`
`issues.”); Midland Cooperatives, Inc. v. Midland International Corp., 57 C.C.P.A. 932, 934
`
`(C.C.P.A. 1097)(“TTAB granted motion to suspend an opposition proceeding after the filing of a
`
`civil action because it “inferred that the outcome of said civil suit will be determinative of the
`
`issues involved in the instant proceedings.”).
`
`Here, the issues in the Civil Action are nearly identical to the issues in the Opposition
`
`proceeding. Accordingly, because a determination in the Civil Action will likely have a bearing
`
`on the issues that are presently before the Board, LegalZoom respectfully requests that the Board
`
`stay these proceedings pending the outcome of the Civil Action.
`
`
`
`Dated: December 14, 2012
`
` Respectfully submitted,
`
`
`
`
`
`
`
`Irene Y. Lee
`RUSS, AUGUST & KABAT
`Twelfth Floor
`12424 Wilshire Boulevard
`Los Angeles, California 90025
`Telephone: (310) 826-7474
`Facsimile: (310) 826-6991
`Attorneys for LegalZoom.com, Inc.
`
`
`
`
`OPPOSER’S MOTION TO SUSPEND PROCEEDINGS FOR CIVIL ACTION
`
`
`
` PAGE 3 OF 4
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on December 14, 2012, one (1) true and correct copy of the
`
`foregoing document has been served on Petitioner by mailing the same via First Class Mail and
`
`electronic mail to:
`
`Barry L. Haley
`MAIN HALEY DiMAGGIO BOWEN & LHOTA, P.A.
`1936 South Andrews Avenue
`Fort Lauderdale FL 33316
`Email: BLH@mhdpatents.com
`
`
`
`
`/s/ Robert F. Gookin
`Robert F. Gookin
`
`OPPOSER’S MOTION TO SUSPEND PROCEEDINGS FOR CIVIL ACTION
`
`
`
` PAGE 4 OF 4
`
`

`
`
`
`RUSS, AUGUST & KABAT A
`LARRY C. RUSS, State Bar No. 082760
`E—mail: lruss@,raklaw.oom
`IRENE Y. LEE, State Bar No. 213625
`E-mail: ilee@rak1aw.com
`ROBERT F. GOOKIN, State Bar No. 251601
`E—mail: rgookin@,raklaw.com
`Twelfth Floor
`12424 Wilshire Boulevard,
`Los Angeles, California 90025
`Telephone: 310.826.7474
`310.826.6991
`Facsimile:
`
`Attorneys for Plaintiff LegalZoom.com, Inc.
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`
`
`
`
`Russ,AUGUST&KABAT
`
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`
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`
`25
`
`26
`
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`
`28
`
`LBGALZOOM.COM, INC., a
`Delaware corporation,
`
`Plaintiff,
`
`VS.
`
`BRENWELL MEDIA, LLC, a
`Florida limited liability company;
`and DOES 1-10,
`
`Defendants.
`
`CASg1‘%i2‘*
`
`’
`
`2%
`
`LEGALZOOMCOM, INC. ’ S COMPLAINT
`FOR:
`
`1. Trademark Infringement/False
`Designation of Origin/Unfair Competition
`(15 U.S.C. § 1l25(a));
`
`2. Trademark Dilution (15'U.S.C. § ll25(c));
`
`3. Trademark Dilution under California Law
`1
`(Cal. Bus. & Prof. Code § 14247 et seq.);
`
`4. Unfair Competition under California Law
`(Cal. Bus. & Prof. Code § 17200 et seq.);
`
`5. Trademark Infringement under California
`Law (California Common Law); and
`
`6. Unfair Competition (California Common
`Law).
`
`;
`
`_
`
`.
`
`DEMAND FOR TURY TRIAL
`
`3334-US! IZIZI4 Cnmplaintduc
`
`COMPLAINT
`
`|—-——F_-r.-.;—7—7:—,:~»ea~—~_ ..~..»::» -:'::;.~ v._—:~:<,—.._.-.=,;';«r:= =- <7-.;-r=— .1:
`
`. _...-_.
`
`

`
`INTRODUCTION
`
`Plaintiff LegaiZoorn.com, Inc. (“Legalzoom”) is a market leader in the field
`
`of self~help legal solutions,
`
`self—help legal document services, general
`
`legal
`
`information, attorney referral services, and legal plan services.
`
`Legallooin
`
`provides these services online at set prices, making them readily available and
`
`affordable to small businesses and general consumers across the United States.
`
`Since introducing its website in March 2001, LegalZoom has grown to become the
`
`leading, nationally recognized self—help legal brand for small businesses and
`
`COIISUIIIGTS .
`
`Legalzoom is the owner of six United States trademark and service mark
`
`registrations
`
`for
`
`the LEGALZOOM formative marks
`
`(collectively,
`
`the
`
`“LEGALZOOM” marks):
`
`Goods/Services
`
`.3.
`
`Providing online
`directory
`information on
`
`
`
`
`
`
`
`attorney listings;
`Attorney referral
`and matching
`
`services in Class 35
`
`
`~
`
`
`
`Ser. No.
`Reg. No.
`Filin Date
`Re. Date
`LEGALZOOM
`78/850,586
`3,211,009
`
`
`February 20, 2007 March 30, 2006
`
`
`Legal document
`February 20, 2007 November 21, 2005
`preparation services
`
`and providing
`general legal
`
`information via a
`website on global
`
`computer networks
`
`in Class 42
`LEGALZOQM 3,210,861’
`78/807,067
`
`
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`
`10
`
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`
`12
`
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`
`16
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`
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`
`21
`
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`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`78/758,303
`
`
`
`' LEGALZOOM“
`
`
`3,210,728
`
`
`
`’
`
`I A true and correct copy of the registration certificate for Reg. No. 3,211,009 is
`attached hereto as Exhibit A.
`‘
`2 A true and correct copy of the registration certificate for Reg. No. 3,210,728 is
`attached hereto as Exhibit B.
`I
`333-1~US2 l2!2l4 ComplAinl.dt>c
`COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
`
`

`
`
`
`RUSS,AUGUST&KABAT
`
`
`
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`
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`
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`
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`
`to O0
`
`Ser. No.
`Reg. No.
`Filin Date
`Re. Date
`Februa 20,2007 Februa 3,2006
`LEGALZOOM
`2,540,549
`78/028,358
`
`February 19, 2002 September 29, 2000
`
`Mark
`
`(and Design)
`
`
`
`iLEGALZOOM.
`COM5
`
`3,569,400
`February 3, 2009
`
`L
`77/471,025
`May 9, 2008
`
`Goods/Services
`
`services in Class 35
`
`Legal document
`preparation services
`and providing
`general iegai
`information via a
`
`website on global
`computer networks
`in Class 42
`
`Providing online
`directory
`information on
`
`attorney listings and
`Attorney referral
`and matching
`services in Class 35.
`
`Legal Services;
`Legal document
`preparation services
`and providing
`general legal
`information via a
`
`website on global
`computer networks
`in Class 45.
`
`Providing online
`directory
`information on
`
`attorney listings;
`Attorne referral
`
`LEGALZOOM.
`
`COM (and
`Design)6
`
`7
`
`3,748,170
`February 16, 2010
`
`77/476,052
`May 15,2008
`
`
`
`3 A true and correct copy of the registration certificate for Reg. No. 3,210,861 is
`attached hereto as Exhibit C.
`4 A true and correct copy of the registration certificate for Reg. No. 2,540,549 is
`attached hereto as Exhibit D.
`5 A true and correct copy of the registration certificate for Reg. No. 3,569,400 is
`attached hereto as Exhibit E.
`6 A truerand correct copy of the registration certificate for Reg. No. 3,748,170 is
`attached hereto as Exhibit F.
`3334vUS2 121214 Cnmplaintdoc
`
`2
`
`_
`
`COMPLAINT
`
`

`
`
`
`
`Goods/Services
`
`Filing Date
`
`and matching
`services in Class 35.
`
`
`i
`
`Legal Services;
`Legal document
`preparation services
`and providing
`general legal
`information via a
`
`website on global
`computer networks" =
`in Class 45.
`_J
`
`' As a result of LegalZoom’s exclusive, extensive, continuous and nationwide
`
`use of the LBGALZOOM marks, the LEGALZOOM marks have come to signify.
`
`the leading provider of online, self-heip services that meet the legal needs of small
`
`businesses and consumers and have achieved such widespread public recognition
`
`that the use of the suffix “zoom” anywhere in the legal industry is now associated
`
`with Legalzoom.
`
`As an industry leader, LegaiZoom has expended well over a hundred million
`
`dollars promoting the need for self-help services, educating and raising awareness
`
`among consumers, and advertising and promoting the LEGALZOOM marks.
`
`In order to build and maintain its status as the leading nati0nally~rec0gnized
`
`brand, Legalzoom has promoted the LEGALZOOM marks through advertising
`
`across the media of television, radio, and the Internet, with paid endorsements from
`
`a number of celebrities — Bill Handel of The Bill Handel Show, Sean Hannity of
`
`The Sean Hannity Show, Ryan Seacrest of The Ryan Seacrest Show and American
`
`Idol, and Dan Patrick of The Dan Patrick Show to name a few.
`
`Indeed,
`
`LegalZoom’s co—founder — attorney Robert Shapiro —~ is a highly recognized, high~
`
`profile figure in the legal world, increasing the fame of the LEGALZOOM marks.
`
`This action is necessitated by the fact that Defendant Brenwell Media, LLC
`
`(“Defendant”) is seeking to trade on LEGALZOOM’s fame and goodwill by using
`
`3334-U32 l2l2l4 Complairwdoc
`
`3
`COMPLAINT
`
`
`
`RUSS,AUGUST&KABAT
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`and/or attempting to register the mark BAILZOOM, BAILZOOMCOM and
`
`the
`BAILZOOMCOM NATIONWIDE BAIL BOND SERVICE (collectively,
`“BAILZOOM” marks) to advertise online bail bond services and service providers
`over the Internet.
`4
`
`On information and belief, Defendant consciously and willfully adopted the
`
`BAILZOOM marks, which are confusingly similar to the LEGALZOOM marks, in
`
`an intentional and deliberate attempt to capitalize on the goodwill associated with
`
`the LEGALZOOM marks. By offering similar services over the same channels of
`
`commerce to the same group of customers under confusingly similar marks,
`
`Defendant is intentionally attempting to capitalize on the hard—earned fame and
`
`reputation of the LEGALZOOM marks. Defendant’s actions are willful and
`unlawful, are calculated to deceive consumers, and will
`irreparably harm the
`
`Valuable goodwill Legalzoom has built up over the past decade as a result of hard
`
`work and considerable investments of time and money.
`'
`Accordingly, Defendant must be ordered to stop its infringing activities, to
`
`pay damages to LegalZoom in an amount to be determined at trial, and to disgorge
`any profits it has made as a result of its willful and bad faith infringement of the
`
`LEGALZOOM marks.
`
`JURISDICTION AND VENUE
`
`1.
`
`This is an action for trademark infringement, false designation of
`
`origin, and unfair competition, under Section 43(a) of the Lanham Act, 15 U.S.C. §
`
`ll25(a); trademark dilution under § l125(c); trademark dilution under Cal. Bus. &
`
`Prof. Code § 14247 et seq.; unfair competition under Cal. Bus. & Prof. Code §
`
`17200 et seq.; trademark infringement under California common law; and unfair
`
`competition under California common law.
`
`2.
`
`This Court has original subject matter jurisdiction over this action
`
`pursuant to 28 U.S.C. §§ 1331 and 1338(a) and 15 U.S.C. § 1121. This Court has
`
`3334-U82 I212)-1 Ccmplaintdec
`4
`
`COMPLAINT
`’
`
`

`
`
`
`Russ,AUGUST&KABAT
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`28
`
`supplemental jurisdiction over the state law claims pursuant to 28 U.S.C. § l338(b)
`
`and 28 U.S.C. § 1367.
`
`3.
`
`This Court also has diversity of citizenship jurisdiction over the
`
`matters complained of under 28 U.S.C. § l332(a)(2) as the matters in controversy
`
`exceed the sum or value of $75,000, exclusive of interest and costs, and are
`
`between a Delaware corporation that is a citizen of the State of California, and on
`information and belief, a Florida limited liability corporation that is also a citizen
`
`or subject of the State of Florida.
`
`4.
`
`This Court has personal
`
`jurisdiction over Defendant because
`
`Defendant operates an Internet website that is accessible in California by residents
`
`in California,
`
`including in this judicial district, and because Defendant offers
`
`referrals to bail bond companies in the State of California, targeting consumers in
`
`California,
`
`including customers
`
`in this judicial district.
`
`Additionally, on
`
`information and belief, Defendant knew and intended that the brunt of the harm
`
`caused by its actions would be suffered by Legalzoorn within this district.
`5.
`Venue is proper in this district under 28 U.S.C. §§ 139l(b)(2) and (3.)
`
`because a substantial part of the events giving rise to the claims occurred in this
`
`» judicial district and because there is personal jurisdiction over Defendant in this
`
`judicial district.
`
`V
`
`06.
`
`THE PARTIES
`
`Legalzoom is a Delaware corporation with a principal place of
`
`business at 101 North Brand Boulevard, 11th Floor, Glendale, California 91203.
`
`7.
`
`LegalZoom is informed and believes that Defendant» is a limited
`
`liability company formed in the State of Florida, having a place of business at 1010
`
`East Adams Street, Suite No. 7, Jacksonville, Florida 32202. Legalzoom is further
`
`informed and believes that all of the members of the limited liability company are
`
`citizens of the State of Florida.
`
`///
`
`3334-US2 |2l2|4 Complainndoc
`
`S
`COMPLAINT
`
`

`
`
`
`Russ,AUGUST&KABAT
`
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`ALLEGATIONS COMMON TO ALL CLAIMS FOR RELIEF
`
`A.
`
`LEGALZOOM’S CREATION AND CONTINUOUS Us)’: AND ACQUIRED FAME or
`
`THE LEGALZOOM MARKS.
`
`8.
`
`9.
`
`Legalzoorn was founded in or about 1999.
`
`The Legalzoom website, available at www.iegalzoom.com, went live
`
`on or about March 12, 2001.
`
`10.
`
`Since that time, Legalzoorn has served approximately two million
`
`customers throughout the United States.
`
`A 11.
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`In 2011 alone, Legalzoom customers ‘placed approximately 490,000
`
`orders on or through the website.
`
`12. Additionally, in 2011 more than 20 percent of new California limited
`
`liability companies were formed using LegalZoom’s online legal platform.
`
`13.
`
`In 2009, Legalzoom had revenues of $103,299,000.
`
`In 2010, that
`
`number increased to $120,771,000. And in 2011 that number further increased to
`
`$156,066,000.
`
`14.
`
`As a leader in the self~help legal services industry, LegalZoom has
`
`invested well over a hundred million dollars promoting such services and raising
`awareness among consumers, as well as
`in advertising and promoting the
`
`LEGALZOOM marks.
`
`As
`
`a
`
`15.
`
`result of its _ efforts
`and
`expenditures, Legalzoomis
`LEGALZOOM marks have become widely recognized by the general consuming
`
`public of the United States as a designation of source of the goods and services of
`
`Legalzoom.
`
`16.
`
`For more than a decade, Legalzoom has advertised extensively on
`
`television, on radio, over the Internet, and in other advertising channels, including
`
`sports sponsorships. Legalzoorn advertises in markets throughout the country,
`including the largest markets, such as Boston, New'Yor1<, Chicago, San Francisco
`
`and Los Angeles. Further, Legalzoom has a strong presence on the radio and
`
`3334-US2 |2l2I4 Complaintdoc
`
`6
`COMPLAINT
`
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`
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`28
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`through the paid endorsement of a number of celebrities, including but not limited
`
`to Bill Handel, Sean Hannity, Ryan Seacrest and Dan Patrick.
`17. Additionally,
`and
`aimost
`from LegaIZoo1n’s
`
`inception,
`
`the
`
`LEGALZOOM marks have been featured and discussed in publications and on
`
`television programs and Internet websites ail over the United States, including but
`
`not limited to on ABC News,7 in The New York Tz'mes,8 in FSB,9 in The Atlanta
`
`Constitutionfo on CBS Marlcefi/Vateh,“ on As/cMeh.c0m,12 in The Boston Herald,”
`
`on Kz'plz'hger.com,M on the AARP website,” on CNN Headline News,” on
`
`7 A true and correct copy of an October 1, 2001, ABC News story featuring
`LegalZoom is attached hereto as Exhibit G and incorporated by reference as if set
`forth in full herein.
`r
`8 A true and correct copy of a May 16, 2002, New York Times article featuring
`Legalzoom is attached hereto as Exhibit H and incorporated by reference as if set
`forth in full herein.
`,f_
`9 A true and correct copy of a July/August 2002 article in FSB featuring
`LegalZoorn is attached hereto as Exhibit I and incorporated by reference as if set
`forth in full herein.
`V
`1° A true and correct copy of an August 8, 2002, Atlanta Constitution article
`featuring Legalzoorn is attached hereto as Exhibit 3 and incorporated by reference
`as if set forth in full herein.
`” A true and correct copy of a September 20, 2002, article on CBS MarketWatch
`featuring Legalzoom is attached hereto as Exhibit K and incorporated by reference
`as if set forth in full herein.
`‘
`I2 A true and correct copy of a September 26, 2002, article on AskMen.corn
`describing LegaiZoorn.com as one of the “best and coolest sites around” is
`attached hereto as Exhibit L and incorporated by reference as if set forth in full
`herein.
`‘
`13 A true and correct copy of a September 10, 2002, Boston Herald article featuring
`Legalzoorn is attached hereto as Exhibit M and incorporated by reference as if
`forth in full herein.
`*3
`14 A true and correct copy of an October 17, 2002, article on Kiplingemom
`featuring LegalZoom is attached hereto as Exhibit N and incorporated by reference
`as if set forth in full herein.
`‘
`A
`I5 A true and correct copy of a January 5, 2003, AARP My Generation aiticie
`featuring Legalzoom is attached hereto as Exhibit 0 and incorporated by reference
`as if set forth in full herein.
`3334~USZ IZIZM Camplaimdoc
`
`7
`COMPLAINT
`
`

`
`
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`MSNBC,” in The Christian Science Monitor,” in PC Magazine,” on the NBC
`Today Show,” in The Richmond Tinies-Dispatc/1,2‘ on the Wall Street Journal
`websz'z‘e,22 on Reuters,” on the Ganneti News Service,” on the Dow Jones Newi
`
`Service,” on CBSNEWS’. com,26 in USA Today,” in the LA Business Journal,” on
`Business Wire,” in The Hufiington Post,” and in Forbes.”
`A
`in
`
`16 A true and correct copy of a transcript from a February 22, 2003, segment on
`CNN Headiine News is attached hereto as Exhibit P and incorporated by reference
`as if set forth in full herein.
`'7 A true and correct copy of a May 28, 2003, article on MSNBC featuring
`LegalZoom is attached hereto as Exhibit Q and incorporated by reference as if set
`forth in full herein.
`18 A true and correct copy of a June 18, 2003, article in the Christian Science
`Monitor featuring Legalzoorn is attached hereto as Exhibit R and incorporated by
`reference as if set forth in full herein.
`19 A true and correct copy of an August l9, 2003, review in PC Magazine featuring
`LegalZoo'm is attached hereto as Exhibit S and incorporated by reference as if set
`forth in full herein.
`20 A true and correct copy of a transcript from a December 12, 2003, interview on
`NBC’s Today show featuring Legalzoorn is attached hereto as Exhibit T and
`incorporated by reference as if set forth in full herein.
`“
`21 A true and correct copy of a January 11, 2004, article from the Richmond Times-
`Dispatch featuring Legaizoom is attached hereto as Exhibit U and incorporated by
`reference as if set forth in full herein.
`"
`22 A true and correct copy of a January 20, 2004, article from the WSI.com website
`featuring Legalzoom is attached hereto as Exhibit U1 and incorporated by
`reference as if set forth in full herein.
`‘
`23 A true and correct copy of a January 21, 2004, Reuters articie featuring
`Legalzoom is attached hereto as Exhibit V and incorporated by reference as if set
`forth in full herein.
`24 A true and correct copy of a May 28, 2004, article for the Gannett News Service
`featuring Legaizoom is attached hereto as Exhibit W and incorporated by
`reference as if set forth in fuil herein.
`5?"
`25 A true and correct copy of a June 3, 2004, article on the Dow Jones News
`Service featuring Legalzoorn is attached hereto as Exhibit X and incorporated by
`reference as if set forth in full herein.
`3,
`26 A true and correct copy of a March 24, 2005, article on CBSNEWS.corii
`featuring LegalZoorn is attached hereto as Exhibit Y and incorporated by reference
`as if set forth in full herein.
`333-1-US2 I2 52 I4 Complainl.doc
`
`8
`COMPLAINT
`
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`18.
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`The Legalzoom website generates hundreds of thousands of hits per
`
`month. Critically, the LEGALZOOM marks are prominently displayed on the
`
`Legalzoom webpages.”
`
`19.
`
`Beyond its various advertisements, mentions in traditional media and
`
`social media presence, Legalzoom has also entered the popular culture with
`
`numerous references on television programs, all of which references assume and
`
`rely upon the viewing audience’s
`
`familiarity with Legalzoom and the
`
`LEGALZOOM marks.
`20.
`9 On August 24, 2010, Legalzoom was discussed on an episode of the
`
`popular CBS legal drama “The Good Wife.”33
`
`21. On July 9, 2012, Jay Leno referenced Legalzoom on the highly rated
`
`“The Tonight Show With Jay Leno.”34
`
`27 A true and correct copy of a June 13, 2006 article in USA Today featuring
`Legalzoorn is attached hereto as Exhibit Z and incorporated by reference as if set
`forth in full herein.
`28 A true and correct copy of an October 27, 2008 article in the LA Business V
`Journal featuring Legalzoom is attached hereto as Exhibit AA and incorporated by
`reference as if set forth in full herein.
`29 A true and correct copy of a July 29, 2011, article on Business Wire featuring
`Legalzoorn is attached hereto as Exhibit BB and incorporated by reference as if set
`forth in full herein.
`1
`3° A true and correct copy of a June 2, 2012, article from the Huffington Post
`website is attached hereto as Exhibit CC and incorporated by reference as if set
`forth in full herein.
`‘
`
`3‘ A true and correct copy of a March 23, 2012, article from the Forbes website is
`attached hereto as Exhibit DD and incorporated by reference as if set forth in full
`herein.
`32 True and correct copies of the LegalZoom webpages are attached hereto as
`Exhibit BE and incorporated by reference as if set forth in full herein.
`33 A true and correct copy of a transcript of the August 24, 2010, broadcast of “The
`Good Wife” is attached hereto as Exhibit FF and incorporated by reference as if set
`forth in full herein.
`34A true and correct copy of a transcript the relevant portion of the July 9, 2,012,
`broadcast of “The Tonight Show With Jay Leno” is attached hereto as Exhibit GG
`and incorporated by reference as if set forth in full herein.
`3334~US2 IZIZI4 Complaintdoc
`9
`COMPLAINT
`
`

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`22. On March 5, 2012, LegalZoom was referenced on a segment of the
`
`popular Comedy Central show, “The Colbert Report.”35
`
`23.
`
`On August 22, 201 l, Legalzoorn was used as the punch line in a joke
`
`about Kim Kardashiarfs wedding on’ the popular cable television show “Chelsea
`
`Latelypafié
`
`24.
`
`Legalloom conducted independent
`
`consumer brand awareness
`
`surveys in January 2012, April 2012, and Juiy 2012. Those surveys establish that
`
`Legalzoom is the industry leader, both in terms of consumer awareness and in
`
`terms of respondents indicating that they had used LegalZoom’s services — by
`
`more than double its next largest competitor.
`
`25.
`
`The LEGALZOOM marks are of material importance to Legalzoom.
`
`Legalzocm has used the original LEGALZOOM marks continuously for more
`
`than a decade and has spent more than a hundred million dollars promoting those
`
`marks.
`
`26.
`
`Because of the invaluable goodwill that the LEGALZOOM marks
`
`represent, and its importance to the company, Legalzoom aggressively protects the
`
` LEGALZOOM marl<s.
`
`B.
`
`DEFENDANTS’ USE or THE BAILZOOM MARKS IN VIOLATION or
`LEGALZOOM’S RIGHTS IN THE LEGALZOOM MARKS.
`
`27.
`
`On
`
`information
`
`and
`
`belief, Defendant
`
`started
`
`operating
`
`www.bailzoom..cg1_n in direct competition with Legaizoom and in contravention of
`
`its rights in the LEGALZOOM marks. Through its bailzooincoin site, Defendant
`
`35 A true and correct copy of the transcript of a segment fi'om the March 5, 2012,
`Colbert Report is attached hereto as Exhibit HH and incorporated by reference as if
`set forth in full herein.
`36 A copy of the relevant portion of the August 22, 2011, broadcast of “Chelsea
`Lately” has been identified as Exhibit H and provided to the Court on a DVD,
`which has been attached to this pleading;
`3334—US2 $Z|2I4 Complaintdoc
`
`I 0
`COMPLAINT
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`offers information about bail bond agencies in various areas, including in the State
`of California and the Central District of California.
`it
`
`28. On information and belief fully aware that Legalzoom owned the
`rights to the famous LEGALZOOM marks,
`in the summer of 2009 Defendant
`
`started using the BAILZOOM marks.
`
`Indeed, Defendant was ‘aware of the
`
`LEGALZOOM marks and purposely chose to use the BAILZOOM marks in an
`
`attempt to capitalize on the hard earned fame of the LEGALZOOM marks.
`
`29.
`
`Specifically, on or about February 17, 2010, Defendant
`
`filed a
`
`trademark application with the USPTO,
`
`seeking federal
`
`registration for
`
`BAILZOOM for use in connection with providing bail bond services, Serial
`
`Number 77/937,341.37
`
`30. Again, on or about August 24, 2011, Defendant filed an application
`
`for BAILZOOMCOM NATIONWIDE BAIL BOND SERVICE, Serial No?
`
`85/406,236.”
`,
`31. Defendant’s use of the BAILZOOM marks on its services and in its
`
`promotional materials and advertising constitutes a use in commerce of a colorable
`
`imitation, copy and reproduction of LegalZoom’s LEGALZOOM marks.
`32. Defendant’s use of the BAILZOOM marks for providing online bail
`
`bond referral services is deceptively and confusingly similar to LegaiZoom’s use
`
`of LBGALZOOM marks for providing online self—help iegal services, including
`
`attorney referral services, and dilutive of LegaiZoorn’s famous LEGALZOOM
`
`marks.
`
`33.. Defendant’s BAILZOOM branded services are offered in the same
`manner, i.e., through the Internet, and targeted at the same classes of purchasers‘
`with legal needs as LegalZoom’s famous LEGALZOOM marks.
`A
`
`37 A true and correct copy of Defendant’s application, Serial Number 77/937,34l‘:
`
`._
`is attached hereto as Exhibit JJ.
`38 A true and correct copy of Defendant’s application, Serial Number 85/406,236,
`is attached hereto as Exhibit KK.
`3334»USZ 121234 Complaintdoc
`
`1 1
`COMPLAINT
`
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`34. Defendant’s use of the BAILZOOM marks
`
`is
`
`likely to cause
`
`confusion, mistake, or deception in the minds of the general consuming public,
`
`who will likely associate BAILZOOM with LEGALZOOM.
`
`35. Defendant’s use of the BAILZOOM marks is likely to diiute the
`
`_
`distinctiveness of Lega1Zoom’s famous LEGALZOOM marks.
`36. Despite LegalZoom’s repeated requests to stop such infringing
`activities, Defendant has continu