It is unbelievable to me that the United States Patent and Trademark Office allows LegalZoom.com to continue in what can only be described, at least in my opinion, as the unauthorized practice of law. It is perhaps even more unbelievable that the various State Attorneys General appear unwilling to stop what I believe to be widespread unauthorized practice of law, despite the fact that LegalZoom is likely creating irreparable harm to its customers by engaging in fraudulent activities prohibited by the regulations that govern the United States Patent and Trademark Office. The worst part of LegalZoom’s activities is not that they are practicing law without a license, but rather what they are telling their customers is flat wrong.
For many years LegalZoom.com has been assisting individuals and businesses with respect to filing trademark applications. All over the LegalZoom.com website are disclaimers that LegalZoom is not a law firm and they only provide directed self-help. Based on what I have been told by those within LegalZoom it is my opinion that they have crossed the line between legitimate self-help and the practice of law. In the wake of recently amended 37 CFR 11.5 one could make a persuasive argument that they are no longer able to provide any assistance with respect to preparing and filing trademark applications. What has to be clear though is that regardless of what tortured logic LegalZoom uses to convince themselves that they can prepare and file trademark applications, they simply do not have the authority to prosecute trademark applications once they are filed at the United States Patent and Trademark Office, but that is exactly what they are doing.
It has come to my attention recently that LegalZoom sends out e-mails to those who have filed what is called an Intent to Use Trademark Application explaining that in order to complete their application they must file a Statement of Use within 6 months of filing the application. LegalZoom also goes on to explain that they can file the Statement of Use for the customer. This is alarming because you do not file a Statement of Use in this situation, and it does not need to be done within 6 months of the filing of the application, and the application is considered complete and will be processed without any kind of information regarding use. So it would seem that LegalZoom is just wrong on the law here, or that they are engaging in unfair business practices aimed at generating unnecessary legal work. I really don’t know which it is, but it is clear that LegalZoom does not know US trademark law, so why would you want to use their service to file a trademark application?
Not long ago I wrote about LegalZoom and explained that on their website they claimed to file more trademark applications than the top 5 law firms combined. This is indeed what the website said, but not surprisingly that statement was removed shortly after my article was published. This time to show what LegalZoom has been doing I have decided to provide the following screenshots, the first of an e-mail message sent to a LegalZoom customer (with the customer’s name removed for obvious reasons) and the second a screenshot of what their website said as of earlier today.
US Trademark Law provides for filing an application based on the applicant’s bona fide intent to use the mark in commerce, registration cannot be granted until the applicant files an Allegation of Use. The allegation of use must include verified dates of first use and a specimen of use for each class of goods or services. The principal difference between the amendment to allege use and the statement of use is the time of filing. The amendment to allege use may be filed after the application filing date but before approval of the mark for publication. If the applicant does not file an acceptable amendment to allege use during initial examination, or if an amendment to allege use is filed and withdrawn, and the Office issues a notice of allowance the applicant must file a Statement of Use within six months of the mailing date of the notice of allowance, or within an extension of time granted for filing of the statement of use. So it is just flat out wrong to say that a Statement of Use must be filed within 6 months of the filing of the trademark application, as LegalZoom advises its customers (see first image above).
To many reading this you might ask what is the big deal between an allegation of use or a statement of use. Indeed, they are largely the same in substance because you need to explain to the Trademark Office that the trademark is actually in use, but the technical legal term “Statement of Use” is not what needs to be filed, and it is simply wrong to suggest that it needs to be filed within 6 months of the filing of an application in order to have a complete trademark application. So if you were to listen to the legal advice received from LegalZoom in this situation you would file the wrong document with the Trademark Office. Wasted money for nothing!
At best LegalZoom is simply using a term of art out of context and then making the additional incorrect statement that the pending trademark application is incomplete. At worst, they don’t know what they are talking about. In either case, if you are paying for a service to prepare and file a trademark application don’t you think that you ought to be able to rest assured that the service knows the law and doesn’t get such basic, fundamental things wrong?
This is exactly why you run a significant risk when you seek a low-cost non-attorney solution to provide legal services. Yes, you can save money by using LegalZoom, but if they don’t even understand basic fundamental concepts of Trademark Law why would you want to save a few hundred dollars? If you ask me, doing things right the first time and getting competent legal advice makes more sense than paying good money to those who simply do not understand the law and who are openly engaging in the unauthorized practice of law.
About the Author
|Eugene R. Quinn, Jr.
President & Founder of IPWatchdog, Inc.
US Patent Attorney (Reg. No. 44,294)
B.S. in Electrical Engineering, Rutgers University
Gene is a US Patent Attorney, Law Professor and the founder of IPWatchdog.com. He teaches patent bar review courses and is a member of the Board of Directors of the United Inventors Association. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, CNN Money and various other newspapers and magazines worldwide