Munson v. Legal One Law Grp.

BRUCE MUNSON, Plaintiff, v. LEGAL ONE LAW GROUP, et al., Defendants.

No. 21-cv-07178-JCS

United States District Court, N.D. California

April 18, 2022

ORDER GRANTING MOTION TO DISMISS PLAINTIFF BRUCE MUNSON'S FIRST AMENDED COMPLAINT PURSUANT TO FED. R. CIV P. 12(B)(3) AND 12(B)(6), OR, IN THE ALTERNATIVE, TO TRANSFER VENUE PURSUANT TO 28 U.S.C. § 1404 RE: DKT. NO 24

JOSEPH C. SPERO CHIEF MAGISTRATE JUDGE

I. INTRODUCTION

Plaintiff Bruce Munson brings this action against Defendants Legal One Law Group (“Legal One”), Avo Zorabian and Gayane Gevorkian, asserting claims under the Lanham Act for trademark infringement, trademark dilution, false designation of origin, and cybersquatting in connection with his registered trademark LEGAL 1. Presently before the Court is Defendants' Motion to Dismiss Plaintiff Bruce Munson's First Amended Complaint Pursuant to Fed.R.Civ.P. 12(b)(3) and 12(b)(6), or, in the Alternative, to Transfer Venue Pursuant to 28 U.S.C. §1404 (“Motion”). The Court finds the Motion is suitable for determination without oral argument and therefore vacates the Motion hearing set for April 22, 2022 pursuant to Civil Local Rule 7-1(b). The Initial Case Management Conference set for the same date is also vacated. For the reasons set forth below, the Court finds that venue in this District is improper under 28 U.S.C. § 1406 and therefore GRANTS the Motion and dismisses this action without prejudice to refiling in an appropriate venue.^[1]

II. BACKGROUND

A. The First Amended Complaint

This action is based on alleged “unauthorized use of the registered trademark LEGAL 1 and variations thereof including but not limited to ‘LegalOne', ‘LegalOneLaw.com', ‘Legal One Law Group, APC', and ‘Legal One Law Group' ” by Defendants. First Amended Complaint (“FAC”) ¶ 1. Munson alleges that “[b]y using a trade name and trademark that wholly incorporates and emphasizes the two decade old registration LEGAL 1” that he owns and administers, “Defendants have caused and are likely to continue to cause confusion that they, Defendants, are the source or sponsor of services under the LEGAL 1 mark.” Id. ¶ 2. He further alleges that Defendants “are likely to cause dilution of the LEGAL 1 trademark.” Id.

Munson alleges that he “has been an Indiana licensed attorney who has specialized in providing legal services for a variety of clients both within and outside Indiana, including serving clients who had legal dealings within the State of California, and California-based clients who had matters extending into other states within the United States.” Id. ¶ 7. He alleges that he resides in Muncie, Indiana and that he has been serving clients under the LEGAL 1 mark for twenty years. Id.

According to Munson, “Defendant Legal One Law Group has a principal place of business at 500 N. Central Avenue, Ste. 720, Glendale, CA 91203” and “is a partnership offering legal serves under the unregistered mark ‘Legal One Law Group.' ” Id. ¶ 8. Munson alleges that “Legal One Law Group promotes its services at the website www.legalonelaw.com, in addition to advertising on various social media platforms and through the purchase of adwords through Google Adwords.” Id. He further alleges, on “information and belief, ” that “Legal One Law Group targets customers and clients nationwide over its website and through social media and search engines, including customers and clients in California and Indiana.” Id. Munson alleges that Defendant Avo Zorabian and Gayane Gevorkian are partners of Legal One Law Group who market its services “online through social media platforms.” Id. ¶¶ 10-11.

Munson alleges that the “LEGAL1 mark is a registered mark with the United States Trademark Office (Reg. No. 2496610), for the services PROVISION OF GENERAL LEGAL SERVICES.” Id. ¶ 12 & Ex. A. According to Munson, the LEGAL1 mark was registered on October 9, 2001 and renewed on January 24, 2007 and again on July 15, 2021. Id. He alleges that he has utilized the mark LEGAL1 “for the entire period from October 9, 2001 through to the present-day” and that “LEGAL1 was the subject of marketing throughout the United States, including in Indiana.” Id. ¶ 14. Munson alleges that “[a]s a result of the marketing effort for LEGAL1, [he] has provided legal services to Indiana based clients who required business services relating to California.” Id. He further alleges that in 1997, he “secured the domain name www.legal1.com” and used it to “advertise[ ] online legal services under the LEGAL1 mark.” Id. ¶ 15.

Munson alleges that on April 23, 2018, Defendant Avo Zorabian attempted to register “Legal One Law Group” for “Attorney services, namely, representation of clients in litigation, corporate law and business, personal injury, criminal, property damage and lemon law matters” by filing application 87889183 with the U.S. Trademark Office. Id. ¶ 16 & Ex. B. According to Munson, on August 15, 2018, the Trademark Office issued an Office refusal on the basis of likelihood of confusion with Munson's registration.” Id. ¶ 17 & Ex. C. Munson alleges that Defendant Zorabian did not file a response to the refusal and therefore the mark was abandoned on March 14, 2019. Id. ¶ 18. He further alleges that “Defendants[ ] have consistently provided, and continue to provide, legal services under the mark ‘Legal One Law Group' [and] have provided legal services under that mark since past August 15, 2018, when Defendant Avo Zorabian was fully aware of the likelihood of confusion between the mark ‘Legal One Legal Group' and Plaintiff Munson's mark LEGAL1.” Id. ¶ 19.

Munson alleges that Defendants have used “search engine optimization, to ensure their mark ‘Legal One Law Group' is high ranking upon a search for ‘Legal One' or the equivalent” and “have held themselves out to be owner of the LEGAL1 registered mark through reviews and promotions on various platforms, including but not limited to yelp.com, superlawyers.com, linkedin.com, nolo.com, facebook.com, and instagram.com[.]” Id. ¶¶ 22, 24.

In the FAC, Munson asserts the following claims: 1) trademark dilution under 15 U.S.C. § 1125(c); 2) trademark infringement under 15 U.S.C. § 1114; 3) cybersquatting under 15 U.S.C. § 1125(d); 4) false designation of origin under 15 U.S.C. § 1125(A); and 5) unjust enrichment. He seeks injunctive relief, damages and attorneys' fees and costs. He alleges that venue in the Northern District of California (“District”) is proper pursuant to 28 U.S.C. §1391(b) and (c) because, on information and belief, “Defendants reside in this judicial district, transact, or have transacted business in this judicial district, and may be otherwise found here, and a substantial part of the events, omissions, and injuries, giving rise to Plaintiff's claims occurred in this judicial district.” Id. ¶ 6.

B. The Motion

In the Motion, Defendants ask the Court to dismiss the case on the basis of improper venue under 28 U.S.C. § 1406 or in the alternative, to transfer the case to the Central District of California under 28 U.S.C. § 1404. They further contend Munson fails to state a claim under Rule 12(b)(6) because he committed fraud on the Trademark Office in connection with his most recent renewal of the trademark registration for LEGAL1. In particular, according to Defendants, Munson submitted in support of the renewal a Section 8 Declaration of Continuing Use stating that he was still providing legal services by and through the mark even though he had been disbarred from the practice of law by the Indiana Supreme Court six months before. In support of that argument, Defendants have filed a request for judicial notice (dkt. no. 25) asking the Court to take judicial notice of: 1) a 2019 Disciplinary Complaint against Munson filed in the Indiana Supreme Court; 2) an order from that court dated January 14, 2021 reflecting that Munson resigned from the practice of law in response to the charges of misconduct against him and is barred from practicing law for five years; 3) Munson's Section 8 Declaration, filed on July 15, 2021 with the United States Patent and Trademark Office in connection with the mark LEGAL1 stating that it was still being used for the provision of legal services and attaching a “screenshot of the website https://www.brucemunson.com obtained on July 15, 2021 showing the mark promoting the identified services”; and 4) a printout of the website www.brucemunson.com and www.brucemunson.com /services, dated October 12, 2021 advertising Munson's legal services.

Because the Court concludes that Defendants are correct as to the first argument, that venue in this District is improper, it does not address the parties' contentions with respect to the second and third arguments and need not rule on Defendants' requestion for judicial notice. Likewise, the Court need not rule on Munson's motion for leave to file a surreply (dkt. no. 34-1), which relates only to Defendants' Rule 12(b)(6) challenge.

As to the question of whether venue in this District is proper Defendants contend they have no meaningful connection with this District, offering declarations by Defendants Gevorkian and Zorabian stating that they are exclusively residents of Los Angeles, California and that Defendant Legal One is a professional corporation with its principal place of business in Glendale, California and has only existed and operated in or around the city of Glendale. Motion at 6 (citing Gevorkian Decl. ¶¶ 2-10; Zorabian Decl. ¶¶ 2-10). With respect to outreach on social media, Defendants Zorabian and Gevorkian attest that Legal One owns and operates the website https://www.legalonelaw.com (the “Legal One Website”) and controls and operates a Facebook profile (www.facebook.com/legalonelaw), an Instagram profile (www.instagram.com/ legalonelaw), and a Yelp...