IP Law Daily, TRADEMARK—N.D. Cal.: LegalForce trademark infringement case against LawFirms.com can proceed, (Jun 28, 2024)

By Steven Melendez

A court ruled Legal Force adequately argued that consumers would be confused by the parties’ similar logos.

The federal district court in San Francisco declined to dismiss a trademark infringement suit by law firm LegalForce against a company that operates LawFirms.com, a website connecting consumers to legal experts, saying LegalForce had adequately alleged consumers could be confused by the companies’similar white-on-orange logos (LegalForce Rapc Worldwide P.C. v. MH SUB I, LLC, No. 3:24-cv-00669-WHA (N.D. Cal. June 27, 2024)).

"LegalForce’s complaint plausibly alleges the marks are similar, making likely confusion increasingly plausible," according to the ruling.

LegalForce's logo includes the white letters "L" and "F" on an orange background having two rounded corners and two square ones, along with the name LegalForce, with the "Legal" portion bolded. LawFirms.com uses a white Roman column on a darker orange or red background, also with two corners squared and two rounded, along with the text "LawFirms.com" with the "LawFirms" part in bold.

LegalForce alleges the LawFirms.com logo is confusingly similar to its own, and that consumers might see it and choose LawFirms.com based on positive associations from LegalForce's marketing.

LawFirms.com argued, in urging the court to dismiss the suit, that the two businesses are in different lines of work. LegalForce is a law firm, while LawFirms.com is a tool to help clients find a law firm. But the court found LegalForce plausibly alleged that the two are targeting the same consumers and that LawFirms.com has marketed some of the same services, including "tailored case review."

"Such a lawyerly distinction may not make a difference to the consumer—and so cannot make a difference in this posture," according to the ruling.

The two logos also "plausibly impress similar sights, sounds, and meanings," according to the court ruling. LawFirms.com had argued that the two are distinct because one is in Calibri font and one is in Cambria and that the LegalForce logo uses a red background while LawFirms.com's is perceived as orange. The two rounded boxes are only as similar as the boxes in the Lego and Domino's Pizza logos, LawFirms.com argued.

But the court found that LegalForce had adequately argued in its complaint that the two are similar.

“Moreover, and turning now to compare the whole of one mark to the whole of the other, the plausibly similar elements are also arranged in plausibly similar ways,”according to the ruling.“Each logo appears to place the rounded box to the left of the stylized text and to scale that rounded box in similar proportion to the text.”

The judge also found that LegalForce had sufficiently alleged the two companies used similar marketing channels, including social media. LawFirms.com had argued that consumers would search online for company names, not logos, but the court found LegalForce adequately argued the two companies both target consumers with ads featuring those logos.

“Whatever consumer searches or steps, if any, trigger the purported targeting is a detail beyond the scope of what plaintiff must allege to put defendant on notice to defend the action,”according to the ruling.

The court allowed claims of trademark infringement under federal law and under California law to proceed.

The Case is No. 3:24-cv-00669-WHA.

Judge: Alsup, W.

Attorneys: Raj Vasant Abhyanker (Raj Abhyanker, PC) for LegalForce RAPC Worldwide P.C. Wendy Evelyn Giberti (Igeneral Counsel, PC) for MH Sub I, LLC.

Companies: LegalForce RAPC Worldwide P.C.; MH Sub I, LLC

Cases: Trademark CaliforniaNews GCNNews