Motion For Summary Judgment, LegalForce RAPC v. Demassa (UPL, California, Before USPTO)

Case 3:18-cv-00043-MMC Document 134-1 Filed 10/30/19 Page 1 of 29
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 RAPC Worldwide, P.C.
UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
LEGALFORCE RAPC WORLDWIDE, Case No.: 3:18-cv-00043-MMC

P.C.,
MEMORANDUM OF POINTS AND
Plaintiff, AUTHORITIES IN SUPPORT OF
MOTION FOR PARTIAL SUMMARY
v. JUDGMENT
CHRIS DEMASSA, d/b/a Date: December 6, 2019

TMEXPRESS.COM & Time: 9:00 A.M.
URGENTTRADEMARK.COM, Dept.: Courtroom 7, 19th Floor
Judge: Honorable Maxine M. Chesney
Defendants.
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Memorandum In Support Of Motion For Partial Summary Judgment
Case No.: 3:18-cv-00043-MMC
TABLE OF CONTENTS
I. INTRODUCTION 6
II. BACKGROUND 7
A. Procedural History 7
B. Undisputed Facts 10
III. PLAINTIFF IS ENTITLED TO PARTIAL SUMMARY JUDGMENT 11

A. Summary Judgment Legal Standard 11
B. California’s UCL, Cal. Bus. & Prof. Code § 17200 11
C. Demassa’s Business Practice Violates UCL’s Unlawful Prong 12
1. Undisputed facts demonstrate that Demassa’s entire business practice violates 37
C.F.R. § 11.14. 12
a. Selecting the classification of trademark. 14
b. Contemplation of filing a trademark application. 14
c. Preparing an application for trademark registration, including analyzing or
pre-approving documents before filing. 14
d. Prosecuting an application for trademark registration. 15
2. Undisputed facts demonstrate that Demassa’s entire business practice violates Cal.
Bus. & Prof. Code § 6125, et seq. 15
a. Performing trademark filing services before the USPTO is practicing law. 16
b. Giving legal advice is practicing law. 17
i. Modifying the descriptions of goods and services is practicing law. 18
ii. Advising on the acceptability of specimens is practicing law 21
c. Preparing legal instrument by which legal rights are secured is practicing law. 25
d. Demassa’s service is not merely clerical. 26
D. This Court May Create New Federal Common Law On What Constitutes The Practice Of
Law In Federal Trademark Filing 28
IV. CONCLUSION 28
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TABLE OF AUTHORITIES
Cases
Anderson v. Liberty Lobby, Inc.
477 U.S. 242 (1986) ....................................................................................................... 10
Aycock Eng’g, Inc. v. Airflite, Inc.
560 F.3d 1350 (Fed. Cir. 2009) …..………..…….....…………………………..…….. 21
B & B Hardware, Inc. v. Hargis Indus., Inc.
135 S. Ct. 1293 (2015) …………..……………...…………………………………..…. 15
Baron v. City of Los Angeles
2 Cal. 3d 535 (Cal. 1970) …………......….…….…...………………………..… 14,15,16
Benninghoff v. Superior Court
136 Cal. App. 4th 61 (Cal. 4th Dist. 2006) …….…………………….………..…….. 15
Birbrower, Montalbano, Condon & Frank v. Superior Court

17 Cal. 4th 119, 127 (Cal. 1988) ………..……………………………….…..…….. 14,24
Candelore v. Tinder, Inc.
19 Cal. App. 5th 1138 (2nd Dist. 2018) ………....….…….…..….…….…………..…. 11
Cel-Tech Communications, Inc. v. Los Angeles Cellular Telephone Co.
20 Cal. 4th 163 (1999) …...…………..…………………....…………..…………… 10,11
Coll. Sav. Bank v. Fla. Prepaid Postsecondary Educ. Expense Bd.
527 U.S. 666 (1999) ……………………….....………………………....………..…... 24
Eley v. Miller
7 Ind. App. 529, 34 N.E. 836 (1893) …………………………..….............................. 14
In re Cedar Point, Inc.

220 USPQ 533 (TTAB 1983) ………………...……………………...…………..…... 21
In re Nationwide Mut. Ins. Co.
124 USPQ 465 (TTAB 1960). ………………...……………………………...…..…... 21
In re Nat’l Sec. Agency Telecommunications Records Litig.
483 F. Supp. 2d 934 (N.D. Cal. 2007) ………………………..……………………... 26
In re Port Auth. of N.Y.
3 USPQ2d 1453 (TTAB 1987) ……………...…………………………………..…... 21
In re Reynoso
477 F.3d 1117 (9th Cir. 2007) ……….……...……………………………….....…….. 24
K mart Corp. v. Cartier, Inc.
485 U.S. 176, 185-186 (1988) ………….……..……………………………….....…... 24
-3-
Kroger Co. v. Lidl US, LLC

2017 WL 3262253 (E.D. Va. July 31, 2017) ...…………………………………..…... 19
LegalForce RAPC Worldwide P.C. v. Swyers
2018 WL 4961660 (N.D. Cal. Oct. 12, 2018) ……………………….……………..…. 16
LegalForce RAPC Worldwide P.C. v. Trademark Engine LLC
2018 WL 5734621 (N.D. Cal. Oct. 31, 2018) ..……...…….…….………...….....…..... 11
Modern Grp. v. Tiger Envtl. & Rental Servs., LLC
2017 WL 3262253 (E.D. Va. July 31, 2017) ...…………………………………..…... 19
Moss v. Infinity Ins. Co.
197 F. Supp. 3d 1191 (N.D. Cal. 2016) ……………………………..……………..….. 10
Murgia v. Mun. Court
15 Cal. 3d 286 (1975) ….………..…………………………………..……………….... 26
November 2001 v. Fame Jeans Inc.
525 F.3d 8 (D.C. Cir. 2008) …....……………...…………………………………..…... 22
People v. Landlords Prof'l Servs.
215 Cal. App. 3d 1599 (4th Dist. Ct. App. 1989) …………………….……..……...... 25
People v. Sipper
61 Cal. App. 2d Supp. 844 (Cal. App. Dep’t Super. Ct. 1943) ………………..…….... 25
Richardson-Vicks, Inc. v. Franklin Mint Corp.
216 USPQ 989 (TTAB 1982) ………………...…………………………………..….... 21
Sneed v. McDonald
819 F.3d 1347 (Fed. Cir. 2016) ………………....…………………………………..… 16
Soremekun v. Thrifty Payless, Inc.
509 F.3d 978 (9th Cir. 2007) …..….....……….….…….…….....……………....……. 10
The Clorox Company v. Salazar

108 U.S.P.Q.2d 1083 (TTAB 2013) ……...……………………………………...……. 22
Statutes and Regulations
15 U.S.C. §1051 ….….…….…………………...………………………………………….…. 20

15 U.S.C. §1052(d) ….…….…………………...………………………………………….…. 17
15 U.S.C. §1057 ….….…….…………………...………………………………………….…. 24
15 U.S.C. §1127 ….….…….…………………...………………………………………….. 21,22
37 C.F.R. § 2.21 ……….…………………...………………………………………….……... 18
-4-
37 C.F.R. § 11.5 ..………….…………………...………………………………………….…. 11

37 C.F.R. § 11.14 ………….…………………...……………….…………………… 11,12,14
Fed. R. Civ. P. 56 …….………...…………...………………………………………………... 9
Cal. Bus. & Prof. Code § 17200 ……….....…………………………………………….… 6,10
Cal. Bus. & Prof. Code § 6125 …..…….....…………………………..…………… 11,14,24-26
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I. INTRODUCTION
Pursuant to Rule 56 of the Federal Rules of Civil Procedure, plaintiff LegalForce RAPC
Worldwide, P.C. (“Plaintiff”, “RAPC”) moves this Court for the entry of partial summary
judgment against Chris Demassa (“Defendant”, “Demassa”) with respect to Count III, Unfair
Competition under Cal. Bus. & Prof. Code § 17200, et seq. of the Second Amended Complaint
(“SAC”). Specifically, LegalForce RAPC only asks the court to rule on the unlawful prong of
AC ¶ 73.
California Unfair Competition Law (“UCL”). See S
This case is a very important one. The decision in this case will govern what is
permissible with respect to the filing and prosecution of U.S. trademark applications before the
United States Patent & Trademark Office (“USPTO”). As such, a decision in this case will have
far reaching implications on access to law and the value of higher education in law in the United
States. Specifically, this case presents questions as to the value of law school education and
prerequisites altogether of being a licensed attorney (in any state) for practice of trademark
filing and prosecution before the USPTO. The USPTO routinely and regularly scruitizes and
evaluates licensed U.S. attorneys who practice before it. However, the USPTO has asserted that
it lacks the Congressional authority to regulate non-attorneys (which it refers to as “non
practitioners”).1 This enables a marketplace in which the least qualified are the least regulated
and run amok ( such as Demassa as his numerous entertaining hand-scrivener asides and
commentary in the instant case manifest), while the most qualified are the most regulated and
harrassed by the USPTO (such as Plaintiff). Therefore, this Court is asked to opine on the
fundamental question of whether the USPTO’s selective application of its rules creates unfair
competition in the marketplace or whether in fact its own rules are unenforceable against both
1
This Court agreed with the USPTO’s argument that “[t]he USPTO is statutorily authorized to
promulgate regulations ‘govern[ing] the recognition and conduct of agents, attorneys, or other
persons representing applicants or other parties before the Office.’ 35 U.S.C. § 2(b)(2)(D).
Congress has not authorized USPTO to regulate entities such as LegalForce RAPC and
LegalZoom.” See LegalForce RAPC WorldWide, P.C. v. LegalZoom.com, Inc., Case No.
17-CV-07194-MMC, ECF No. 97 at 5 (N.D. Cal. Apr. 4, 2018). This Court agreed that the
USPTO cannot regulate non-practitioners because the USPTO has no ability to file complaints or
take away rights of unlicensed individuals representing trademark filers, such as Demassa.
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attorneys and non-attorneys such as Demassa.

In particular, the Court is invited to answer the question of what business practices
constitute the practice of law in trademark matters, both at the federal and state level. As the
evidence will show, for decades Demassa and his business have been illegally preparing, filing,
and prosecuting trademark applications for his clients before the USPTO. Demassa and his staff
have been illegally giving advice to their existing and potential clients on whether a client
should contemplate the filing of a trademark, on how to select classifications of trademark, on
how to adjust the descriptions of goods and services of a trademark, and on whether a specimen
of a trademark would be acceptable to the USPTO. As the argument will show, these business
practices violate federal regulations with respect to practicing law before the USPTO and
California law with respect to the unauthorized practice of law. Yet, Demassa is a free man.
Particularly, since Demassa practices only federal law, his actions are beyond the
purview of the State Bar of California. The USPTO claims it lacks congressional authority to
enforce its rules against him, and even if it does, it lacks the ability to file formal charges for
violations of its rules and cannot apply its ethics rules against individuals not approved to
practice before it (such as Demassa). Therefore, DeMassa acts as though he is above the law at
least with respect to the USPTO. DeMassa carries a bravado in defiance of the law, and openly
wears his status as a fake lawyer with pride, (while feigning ignorance of the law as a simpleton
to this Court)2, while consumers, Plaintiff and marketplace competition suffers. Demassa’s
unlawful business conduct of practicing law must be permanently enjoined by this Court to
prevent future harm to Plaintiff and to the public at large.
II. BACKGROUND
A. Procedural History
The initial complaint was filed on 1/3/2018. On 4/9/2018, by the “Related Case Order”
the case was re-assigned to this Court (ECF No. 29). Plaintiff filed a first amended complaint on
4/23/2018. ECF No. 33. Demassa then filed a motion to dismiss on 6/18/2018 (ECF No. 44). On
2
For example, DeMassa boasts he is “MORE experienced” than trademark attorneys as “since
1992 we have done over 75,000 trademarks” and claims “we have 5 trademark attorneys who
have over 30 years experience each,” (Exhibit 20).
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9/7/2018, this Court denied the motion and ordered Mr. Demassa to “file an answer, as well as
any other responsive pleading, to the FAC no later than September 28, 2018.” ECF No. 53 at 3.
On 10/2/2018, seeing Demassa repeatedly disregarded the deadlines set by this Court, Plaintiff
filed the (third) request for entry of default. ECF No. 54. The clerk entered default on
10/16/2018. ECF No. 55. On 10/31/2018, this Court ordered Plaintiff to file a motion for default
judgment “no later than December 7, 2018”. ECF No. 57 at 2.
On 11/2/2018, Demassa filed a motion to set aside the entry of default. Dkts. 58, 60. This
Court conditionally granted the motion on the condition that Demassa must file an answer no
later than 12/21/2018. ECF No. 63. On the last day of the deadline, almost a year after the initial
complaint was filed, Demassa curiously filed an answer to the complaint. ECF No. 65.
The first case management conference was held before the Court on 2/8/2019. On the
same day, a scheduling order was issued. See ECF No. 69. At the request of the parties, the
Court referred the case for a settlement conference to Magistrate Judge Laurel Beeler. A
settlement conference was held before Judge Beeler on 4/24/2019. At the settlement conference,
based on the representations of Demassa, Plaintiff “agreed on the monetary component of a
settlement, subject to the verification process,” which would “take approximately 30 days.”
ECF No. 82. Unfortunately, information discovered during the audit process after the settlement
conference contradicts to what Demassa represented at the settlement conference. The
settlement offer was off the table.
On 5/10/2019 Plaintiff filed a motion for leave to file the SAC. ECF No. 85. Plaintiff
proposed to include in the SAC all the exhibits previously filed in the initial complaint as well
as to add 37 C.F.R. § 11.14 as an additional predicate under the unlawful prong of the UCL
claim. The Court granted the motion. ECF No. 93. The SAC, which is now the operative
complaint, was filed on 6/6/2019. ECF No. 94. Demassa filed an amended answer and two
supplemental answers. ECF Nos. 95, 97, 98.
On 4/14/2019, because Damassa has been refusing to respond to discovery requests,
Plaintiff filed a motion to compel discovery to this Court. ECF No. 79. The discovery motion
was referred to Magistrate Judge Thomas S. Hixson. A hearing was held in Judge Hixson’s
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court on 5/23/2019, who granted the motion in part. Judge Hixson ordered Demassa to produce
documents that show the revenue, expenses and profits of his business since January 2014. ECF
No. 91 at 5. The court ordered Demassa to produce the documents in 30 days to Plaintiff’s
outside counsel, Mr. Bruno Tarabichi. Id. Unsurprisingly, Demassa again refused to produce
documents. Plaintiff was left with no recourse other than filing the motion for sanctions to
Judge Hixson on 7/17/2019. ECF No. 99.
The motion for sanctions was denied without prejudice by Judge Hixson on 8/12/2019.
ECF No. 103. In his order, Judge Hixson noted Demassa’s pro se status and permitted Demassa
a “final opportunity to comply with [the court’s] previous order” in 15 days. Id. at 7-8. By
9/6/2019, Demassa still had not produced all the documents ordered by Judge Hixson,
especially, the financial documents of his business for 2018 and 2019 to present. Plaintiff filed a
second motion for sanctions on 9/11/2019. ECF No. 118. The motion was granted by Judge
Hixson on 10/22/2019. Mr. Demassa was ordered to pay RAPC fees and costs in the amount of
$2,000 plus a per diem fine of $100. ECF No. 132.
Demassa filed an untimely “Answer–$1,666,666 Counterclaim” against Plaintiff on
8/29/2019. ECF No. 110. As a response, Plaintiff filed a motion to strike or dismiss the
counterclaim on 9/19/2019. ECF No. 119. The Court granted the motion and Demassa’s
counterclaim was “stricken in its entirety. “ ECF No. 131.
Fact discovery ended on 9/9/2019. See ECF No. 69. During the discovery period Plaintiff
took three depositions: The deposition of Mr. Chris Demassa was taken on 2/27/2019; the
deposition of Mr. Thomas Cook, a retired trademark attorney who unknowingly conspired with
Mr. Demassa since 1993, was taken on 3/5/2019; the deposition of Ms. Dione Di Lascio, the
office manager of Demassa’s business Trademark Express, was taken on 3/13/2019.
Plaintiff designated two experts in this case, Ms. Nora Ostrofe, an economist and MBA at
J.S. Held, a global consulting firm, and Mr. Jonathan H. Bari, an online advertising expert at
Bari Consulting Group, also an Adjunct Instructor of Business at Temple University. Written
reports from the two experts were served on Demassa on 10/7/2019 pursuant to the scheduling
order and Fed. R. Civ. P. 26(a)(2). No expert disclosure was received from Demassa, nor did
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Demassa serve any rebuttals to Plaintiff’s expert reports.

A further status conference will be held on 11/1/2019 in this Court. The jury trial date is
scheduled for 2/24/2019 for 3-4 days. See ECF No. 69.
B. Undisputed Facts
The facts below are undisputed:
1. Mr. Demassa is not an attorney. His sole proprietor business, Trademark Express
(www.tmexpress.com), is not a law firm.
2. At least as of 2/27/2019, on www.tmexpress.com website Mr. Demassa states that
“[s]tarted in 1992 in Los Altos, California, TradeMark Express now has a staff of 21,
xhibit 1 (Deposition Transcript of Chris
including 5 trademark attorneys.” See E
Demassa (“Demassa Trnspt”) Ex. 6) at 1.
xhibit 2 (Demassa
3. The five attorneys are not employees of Trademark Express. See E
Trnspt at 43).
4. At least as of 3/19/2019, Trademark Express had 10 to 15 employees. See Exhibit 3
(Demassa Trnspt at 166); see also Exhibit 4 (Deposition Transcript of Dione Di
Lascio (“Di Lascio Trnspt”) at 45).
5. As part of the services offered by Trademark Express, Demassa and his staff would
xhibit 5 (Demassa Trnspt at 90
select classification of trademark for his clients. See E
lns. 9-11); Exhibit 6 (Demassa Trnspt at 139-40).
6. Before potential clients decide to hire Demassa, Demassa would analyze clients’
situation and advise clients on whether they should file a trademark application. See
Exhibit 7 (“Pre-Litigation Call Transcript”).
7. Demassa would make sure that the trademark application forms are filled out
correctly before filing. See Exhibit 5 (Demassa Trnspt at 90).
xhibit 8 (Di Lascio Trnspt at
8. Demassa would respond to minor office actions. See E
56-57).
9. Demassa and his staff would modify the description of goods and services to meet the
xhibit 9 (Di Lascio Trnspt at 60-62).
USPTO requirements. See E
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10. Demassa and his staff would advise their clients on the acceptability of specimens.
See Exhibit 9 (Di Lascio Trnspt at 60-61).
III. PLAINTIFF IS ENTITLED TO PARTIAL SUMMARY JUDGMENT
A. Summary Judgment Legal Standard
A party may move for summary judgment on a “claim or defense” or “the part of each
claim or defense.” Fed. R. Civ. P. 56(a). Summary judgment is appropriate when there is no
genuine dispute as to any material fact and the moving party is entitled to judgment as a matter
of law. Id. Material facts are those that “might affect the outcome of the suit under the
governing law”. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A dispute as to a
material fact is “genuine” if there is sufficient evidence for “a reasonable jury [to] return a
verdict for the nonmoving party.” Id.
Where the moving party will have the burden of proof at trial, like Plaintiff here, it must
demonstrate that no reasonable trier of fact could find other than for the moving party.
Soremekun v. Thrifty Payless, Inc., 509 F.3d 978, 984 (9th Cir. 2007). If the moving party meets
its initial burden, the opposing party must then set out specific facts showing a genuine issue for
trial in order to defeat the motion. Anderson, 477 U.S. at 250. The inquiry performed by the
court here is a “threshold inquiry”. Id. I t is to determine “whether there is the need for a
trial—whether, in other words, there are any genuine factual issues that properly can be
resolved only by a finder of fact because they may reasonably be resolved in favor of either
party.” Id.
B. California’s UCL, Cal. Bus. & Prof. Code § 17200
California Unfair Competition Law (“UCL”) “defines ‘unfair competition’ to include
‘any unlawful, unfair or fraudulent business act or practice.’ (§ 17200.) Its coverage is
‘sweeping, embracing’ ‘anything that can properly be called a business practice and that at the
same time is forbidden by law.” Cel-Tech Communications, Inc. v. Los Angeles Cellular
Telephone Co., 20 Cal. 4th 163, 180 (1999).
In the SAC, Plaintiff alleges that Demassa has violated all three prongs of California’s
AC ¶ 72. To state a claim under UCL, “a plaintiff
UCL, Cal. Bus. & Prof. Code § 17200. See S
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must establish that the practice is (1) unlawful (i.e., is forbidden by law), (2) unfair (i.e., harm to
victim outweighs any benefit) or (3) fraudulent (i.e., is likely to deceive members of the
public).” Moss v. Infinity Ins. Co., 197 F. Supp. 3d 1191, 1198 (N.D. Cal. 2016). The plaintiff
“only needs to establish a violation of the UCL under one of these three prongs, as each
operates independently from the others.” Id. (citation omitted).
The instant motion only focuses on Demassa’s violation under the unlawful prong of
UCL. In addition, in light of this Court’s order in the related Trademark Engine’s case, Plaintiff
withdraws the claim under the unfair prong of California UCL as alleged in SAC ¶ 74. See
LegalForce RAPC Worldwide P.C. v. Trademark Engine LLC, No. 17-cv-07303-MMC, Docket
No. 114 at 16-17, 2018 WL 5734621 at *9 (N.D. Cal. Oct. 31, 2018).
C. Demassa’s Business Practice Violates UCL’s Unlawful Prong
“By proscribing any unlawful’ business practice, section 17200 borrows violations of
other laws and treats them as unlawful practices that the unfair competition law makes
independently actionable.” Cel-Tech, 20 Cal. 4th, 180 (internal quotation marks omitted).
“[V]irtually any law or regulation—federal or state, statutory or common law—can serve as [a]
predicate for [an] . . . “unlawful” [prong] violation.” Candelore v. Tinder, Inc., 19 Cal. App. 5th
1138, 1155 (2nd Dist. 2018) (citations omitted) (internal quotation marks omitted). Here,
Plaintiff has alleged both federal and state unauthorized practice of law (“UPL”) statues and
regulations as predicates for the claim under the unlawful prong: (1) 37 C.F.R. § 11.14
(“Individuals who may practice before the Office in trademark and other non-patent matters”);
and (2) Cal. Bus. & Prof. Code § 6125, et seq. (California UPL statute). See S
AC ¶ 73.c.
1. Undisputed facts demonstrate that Demassa’s entire business practice
violates 37 C.F.R. § 11.14.
According to federal regulation 37 C.F.R. § 11.14(b), subject to a bygone exception,
“[i]ndividuals who are not attorneys are not recognized to practice before the Office in
trademark and other non-patent matters.” Id. (emphasis added). Implicit in this regulation is the
underlying concept that “practice before the Office” is tantamount to the “practice of law”, as
non-attorneys are not recognized to practice before the Office, but attorneys are automatically
recognized to practice before the Office. See § 11.14(a) ( “[a]n attorney is not required to apply
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for registration or recognition to practice before the Office in trademark and other non-patent
matters.”).
The term “practice before the Office” is explicitly and broadly defined in § 11.5(b) as
follows:
Practice before the Office includes, but is not limited to, law-related service that
comprehends any matter connected with the presentation to the Office or any of
its officers or employees relating to a client’s rights, privileges, duties, or
responsibilities under the laws or regulations administered by the Office for the
grant of a patent or registration of a trademark, or for enrollment or disciplinary
matters. Such presentations include preparing necessary documents in
contemplation of filing the documents with the Office, corresponding and
communicating with the Office, and representing a client through documents or at
interviews, hearings, and meetings, as well as communicating with and advising a
client concerning matters pending or contemplated to be presented before the
Office.
37 C.F.R. § 11.5(b) (emphasis added). Thus, “practice before the Office” includes not only the
actual presentation of trademark application to the USPTO, but also “communicating with and
advising a client concerning matters [] contemplated to be presented before the Office.”
Moreover, the federal regulation further defines the term “practice before the Office in
trademark matters” in 37 C.F.R. § 11.5(b)(2) to include the following:
(1) “consulting with or giving advice to a client in contemplation of filing a
trademark application or other document with the Office.” and
(2) “preparing and prosecuting an application for trademark registration.”
In addition, according to the Trademark Manual of Examining Procedure (“TMEP”),
“[a]n individual who does not meet the requirements of 37 C.F.R. § 11.14 cannot: prepare an
application, response, post-registration maintenance document, or other document to be filed in
xhibit 10 (“TMEP § 608.01”).
the USPTO.” See E
Other than the federal regulation and the TMEP, the practice of law (or giving legal
advice) is also defined on USPTO’s own website as below:
We cannot give legal advice. This includes:
● Advising applicants on proper responses to USPTO office actions
● Conducting pre-filing searches for potentially conflicting trademarks
● Analyzing or pre-approving documents before filing
● Advising applicants on substantive examination issues, such as the
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acceptability of specimens and classification of goods and services.

ECF No. 46-2 at 2; Exhibit 11.
Undisputed facts show that Mr. Demassa’s entire trademark filing business is built upon
the unauthorized practice of law as defined by federal regulations, TMEP and the USPTO.
According to the above definitions, Demassa and his staff “practice before the USPTO in
trademark matters”. The facts are listed below.
a. Selecting the classification of trademark.
As part of the application, Demassa would select classification of trademark for all his
xhibit 6 (“We don't want a client to select -- what are they hiring us for? ... I
clients. See E
mean, why are they hiring us? They’re hiring us to get it right, to file in their correct class that
they're in. Whatever the client tells us that they think their class is, we're still going to look it up
and see what exactly class they’re in.”).
b. Contemplation of filing a trademark application.
Before potential clients decide to hire Demassa, Demassa would analyze clients’ situation
and advise clients on whether they should file a trademark application. During a call made by
Plaintiff’s counsel Raj Abhyanker to Demassa in 2017, Mr. Demassa analyzed a hypothetical
presented by Mr. Abhyanker and advised that he does not have a valid use in commerce mark
and can apply for a new trademark. See Exhibit 7 at 2 (“No. You have nothing, it has
evaporated.”).
c. Preparing an application for trademark registration, including
analyzing or pre-approving documents before filing.
Demassa would make sure that the trademark application forms are filled out correctly by
xhibit 8 (Di Lascio Trnspt at 56 lns. 17-23). See also E
the client. See E xhibit 5 (Demassa
Trans. at 90) (“Everything has to match so the application goes through smoothly.”).
In addition, according to the USPTO, “[a]nalyzing or pre-approving [trademark
application] documents before filing” is giving legal advice. ECF No. 46-2 at 2. Demassa
claims that his company provides “full service” that is different from other “form-filling
companies”. ECF No. 44-1 at 25:793-794. One difference of his service is that half of his staff
are spending 2-4 hours on a trademark application “because so many people do not provide
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correct information and specimens for filing.” Id. at 22:660-662. According to this statement,
his staff analyze the information and specimens submitted by clients to see which information
or specimens are incorrect, and revert back to the clients to obtain the correct information or
specimens. This statement is a judicial admission that Demassa has been engaging in the
unauthorized practice of law because his staff will analyze and pre-approve a trademark
application before filling.
d. Prosecuting an application for trademark registration.
Demassa would respond to major defects in office actions (which Demassa in true shyster
form testifies as “minor” issues), including office actions which the USPTO asks his clients to
“disclaim a word”, for “clarification on goods and services”, or for “a better specimen.” See
Exhibit 8 (Di Lascio Trnspt at 56-67). Demassa even offers “one-year office action protection”.
Id. at 93-94. In the call between Abhyanker and Demassa, Demassa stated that the service fee
for filing the trademark also includes services for responding to any office actions, if received.
See Exhibit 7 at 4 (“[Office actions are] covered - we do those for free. We will respond free
and … that’s included in our $500 fee.”).
Therefore, the above undisputed facts demonstrate that Demassa illegally practices before
the USPTO in trademark matters by giving advice to his clients on how to plan and file
trademark applications and respond to office actions. He illegally identifies and chooses
classifications of goods and services for his clients. He illegally modifies the descriptions of
goods and services for his clients before filing. He illegally prepares and files trademark
applications for his clients. As Mr. Demassa is not an attorney, all the above business practices
violate 37 C.F.R. § 11.14 and constitute the practice of law under federal laws and regulations.
2. Undisputed facts demonstrate that Demassa’s entire business practice
violates Cal. Bus. & Prof. Code § 6125, et seq.
Cal. Bus. & Prof. Code § 6125 proscribes that “[n]o person shall practice law in
California unless the person is an active licensee of the State Bar.” Violation of this statute is
“guilty of a misdemeanor punishable by up to one year in a county jail or by a fine of up to one
thousand dollars ($1,000)”, or both. Cal. Bus. & Prof. Code § 6126(a). Moreover, “[n]o one
may recover compensation for services as an attorney at law in this state unless [the person] was
- 15 -
at the time the services were performed a member of The State Bar.” Birbrower, Montalbano,
Condon & Frank v. Superior Court, 17 Cal. 4th 119, 127 (Cal. 1988).
“The practice of law” is defined by the California Supreme Court as “doing and
performing services in a court of justice”. Baron v. City of Los Angeles, 2 Cal. 3d 535, 542 (Cal.
1970). However, in a larger sense, the practice of law also includes “legal advice and counsel,
and the preparation of legal instruments and contracts by which legal rights are secured,
although such matter may or may not be depending in a court.” Eley v. Miller, 7 Ind. App. 529,
34 N.E. 836, 837–38 (1893). See also Birbrower, 17 Cal. 4th 142.
Therefore, the practice of law in California includes: (1) performing services in a court of
justice (or an administrative agency, see infra) ; (2) giving legal advice; and (3) preparing legal
instruments by which legal rights are secured. Each of these factors, to the extent it is related to
trademark application and applicable to the practice of Demassa, is discussed below.
a. Performing trademark filing services before the USPTO is
practicing law.
Although USPTO is an agency of the United States, not a court of law, performing
trademark filing services before the USPTO (and the related services such as responding to an
office action, advising clients in contemplation of filing a trademark application, etc.)
constitutes the practice of law.
An activity does not have to be performed before a court of justice for it to be the practice
of law, which includes matters “may or may not be depending in a court”. Baron, 2 Cal. 3d 542.
Furthermore, it is “the character of the act, and not the place where it is performed, [that] is the
decisive element” of determining what constitutes the practice of law. Id. at 543. “[I]f the
application of legal knowledge and technique is required, [then] the activity constitutes the
practice of law, even if conducted before an administrative board or commission.” Id. at 543
(emphasis added). For example, representing parties before “administrative and regulatory
agencies” was held to be practicing law. Benninghoff v. Superior Court, 136 Cal. App. 4th 61,
69 (Cal. 4th Dist. 2006).
USPTO is “an agency of the United States [] within the Department of Commerce.” 35
U.S.C.A. § 1 (West). The role of the USPTO is to grant patents for the protection of inventions
- 16 -
and to register trademarks.3 Under the Lanham Act, 15 U.S.C. § 1051, et seq., “an applicant can
seek to register a trademark through an administrative p rocess within the [USPTO].” B & B
Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 1299 (2015) (emphasis added). It is also
stated on USPTO’s own website that “[t]he trademark application process is a legal proceeding
governed by U.S. law”.4 Therefore, trademark application service conducted before the USPTO
is an administrative process and a legal proceeding that could constitute the practice of law in
California, if “the application of legal knowledge and technique is required” to perform the
services. Baron, 2 Cal. 3d 543.
The services Mr. Demassa provides—providing advice on trademark applications,
preparing and filing the applications, modifying the descriptions of goods and services,
responding to office actions, etc.—all require the application of legal knowledge and technique
to specific facts. Therefore, Demassa’s services before the USPTO constitutes the practice of
law in California.
b. Giving legal advice is practicing law.
What makes an advice for another a legal advice, and accordingly, subject the advisor of
that advice the ramifications of practicing law? California State Bar has stated that legal advice
includes ‘that which requires the exercise of legal judgment beyond the knowledge and capacity
of the lay person,’ such as when an attorney ‘mak[es] a recommendation about a specific course
of action to follow.’” Sneed v. McDonald, 819 F.3d 1347, 1356 (Fed. Cir. 2016) n.2.
California courts “have determined that the resolution of legal questions for another by
advice and action is practicing law if difficult or doubtful legal questions are involved which, to
safeguard the public, reasonably demand the application of a trained legal mind.” Baron, 2 Cal.
3d 543. Since any difficult or doubtful legal questions would reasonably demand the application
of a trained legal mind, the test of whether an advice constitutes legal advice in California can
be simplified to the question of whether “difficult or doubtful legal questions are involved” in
the advice and action. See id.; see also LegalForce RAPC Worldwide P.C. v. Swyers, No.
17-cv-07318-MMC, 2018 WL 4961660 at *7 (N.D. Cal. Oct. 12, 2018) (“the Court declines to
3
See https://www.uspto.gov/patents-getting-started/general-information-concerning-patents
4
See h ttps://www.uspto.gov/trademarks-getting-started/trademark-basics
- 17 -
find at the pleading stage that the alleged acts by [] non-lawyer staff do not, as a matter of law,
constitute “difficult or doubtful legal issues” .) (emphasis added) (citations omitted).
The facts are undisputed that during the course of providing trademark application
services to his clients, Demassa consults with or gives advice to clients in contemplation of
filing trademark applications with the USPTO and prepares applications for trademark
registration for clients. In particular, he advises potential clients on whether they should file a
trademark application; he chooses classifications; he modifies descriptions of goods and
services; he advises on the acceptability of specimens for his clients; he makes sure the forms
are filled out correctly before filing; and he responds to minor office actions.
As discussed below, all these advice involve difficult or doubtful legal questions.
Accordingly, providing these advice to customers constitute giving legal advice.
i. Modifying the descriptions of goods and services is
practicing law.
After the descriptions of goods and services are initially provided by customers, Mr.
Demassa and his staff modify the descriptions to meet the “USPTO requirements”. Below are
some excerpts from the depositions of Ms. Di Lascio (Office Manager of Trademark Express)
and Mr. Demassa:
● “[Clients] tell us what goods and services they offer. And then our application
staff member, she -- she writes up a formal goods and services description that
xhibit 9 (Di Lascio Trnspt at 60).
meets the USPTO’s requirements.” See E
● “[The staff member] writes out the description, she sends them to the client. And
if the client agrees with it, we file it that way. Or if they feel like something needs
to be edited, we -- we edit it[.]” Id. at 60.
● “[W]e formulate the goods and services description to include their answer and
that it meets the USPTO requirements.” Id. at 62.
● “The clients tell us their goods and services, and then we write it in a form []
that's professional. We double check the research to make -- their initial order to
make sure that everything's covered. We send it back to the client for approval
and they tinker with it and we file it.” Exhibit 19 (Demassa Trnspt at 85-86).
- 18 -
● “The client tells us their goods and services, and our application staff will rewrite
it.” Id. at 87.
● “[W]e’re at a better position to describe people’s goods and services than they
are.” Id. at 294.
Clearly, giving advice to applicants on how to modify the descriptions of goods and
services on a trademark application is a regular business practice of Mr. Demassa. To determine
whether Mr. Demassa is giving legal advice, the Court must first answer the question of
whether identifying goods and services in a trademark application involves “difficult or
doubtful legal questions.”
Identification of goods and services is a critical element in trademark application because
xhibit 12 at 6
an application must include the identification to receive a filing date. See E
(TMEP § 1402.02); 37 C.F.R. § 2.21(a)(4). According to TMEP, when applying for a
trademark, “[t]he applicant must identify the goods and services specifically to provide public
notice and to enable the USPTO to classify the goods and services properly and to reach
xhibit
informed judgments concerning likelihood of confusion under 15 U.S.C. §1052(d).” See E
12 at 1 (TMEP § 1402.01) (emphasis added). An application for trademark may be refused if it
“[c]onsists of or comprises a mark which so resembles [an existing] mark … as to be likely,
when used on or in connection with the goods of the applicant, to cause confusion[ .]” Id.
(emphasis added).
Thus, to prevent the application from being refused on “likelihood of confusion” ground,
a trademark applicant must submit appropriate identification of goods and services to enable the
USPTO to determine that there is no “likelihood of confusion” between the applied mark and
the existing marks. For example, “[a]ny identification of goods for computer programs must be
sufficiently specific to permit determinations with respect to likelihood of confusion.” See
Exhibit 12 at 13 (TMEP § 1402.03(d)) (emphasis added); “Content provider” marks must
include the subject matter of online videos “to assist in likelihood of confusion determinations
under 15 U.S.C. §1052(d).” See Exhibit 12 at 31 (TMEP § 1402.11(a)(ii)) (emphasis added);
Certain cloud computing activities “must be further specified for purposes of examination on
- 19 -
the basis of likelihood of confusion under §2(d), 15 U.S.C. §1052(d).” See Exhibit 12 at 36
(TMEP § 1402.11(a)(xi)) (emphasis added); and certain house marks applications “must define
the type of goods or services with sufficient particularity to permit proper classification … to
enable the USPTO to make necessary determinations under §2(d) of the Trademark Act, 15
U.S.C. §1052(d).” See Exhibit 12 at 44 (TMEP § 1402.03(b)).
Understanding the legal concept of “likelihood of confusion” and all its relevant case
laws is important in a trademark application because USPTO “uses the same [Lanham Act §
43(a) likelihood of confusion] test under Lanham Act § 2(d) in determining whether a mark
which is the subject of an application for registration is likely to cause confusion with a
previously used or registered mark.” 4 J. Thomas McCarthy, McCarthy and Unfair Competition
(“McCarthy”) § 23:1 (5th ed. 2019)5.
Determining if there is a “likelihood of confusion” between the applied mark and an
existing mark is undoubtedly a difficult legal question. “Likelihood of confusion” is a legal
jargon and a longstanding legal question that comprises a variety of legal topics and issues.
Likelihood of confusion test is the “fundamental test of both state common-law and statutory
trademark infringement and federal statutory trade mark infringement.” Id. § 23:1. “Through
decades of case law precedent and the influence of the Restatement, the federal courts have
developed a multi-factor test to assist in the difficult determination of whether [there] is or is not
a likelihood (probability) of confusion.” Id. § 24:28.
The question of likelihood of confusion is so comprehensive that the McCarthy book has
devoted 124 sections in Chapter 23 on likelihood of confusion and 66 sections in Chapter 24 on
xhibits 13, 14. The subject encompasses the
likelihood of confusion’s multi-factor tests. See E
gamut of difficult legal topics including, but not limited to, the meaning and scope (§§ 23:1-11),
factors leading to confusion (§§ 23:19-35), proving the likelihood of confusion (§§ 23:62-63),
the 13 Du Pont factors (§ 23:79), intent and proof of intent (§§ 23:107-120), the 8 Polaroid
5
The McCarthy book has been widely accepted in courts and the legal community as the “bible
on trademarks”. See Kroger Co. v. Lidl US, LLC, No. 3:17-CV-480-JAG, 2017 WL 3262253 at
*5, fn. 5 (E.D. Va. July 31, 2017) (referring to the book as “‘bible’ on trademarks”); see also
Modern Grp. v. Tiger Envtl. & Rental Servs., LLC, 640 F. Supp. 2d 820, 826 (W.D. La. 2009)
(referring to the book as a “widely recognized authority on Trademark Law”).
- 20 -
Factors (§ 24:32), etc.

“Trademark law protects the public by making consumers confident that they can identify
brands they prefer and can purchase those brands without being confused or misled.” 1
McCarthy § 4:11 fn.1. Wrong determination of the likelihood of confusion of the applied mark
may result in failed trademark registration and/or possible future trademark infringement. In
either situation, consumer interest is harmed.
Based on the above, identifying goods and services of a trademark application, which
necessarily requires the analysis of likelihood of confusion, involves “difficult or doubtful legal
questions which, to safeguard the public, reasonably demand the application of a trained legal
mind.” Accordingly, modifying the descriptions of goods and services is practicing law.
In addition, at the deposition of Mr. Thomas Cook, the trademark attorney who
bumblingly conspired with Mr. Demassa for several decades while at the same time being paid
other than promises of future work from customers of Demassa (which rarely came), agrees that
modifying goods and services is the practice of law:
● “I don't talk to [my clients] about classification. It's about goods and service and
about relatedness of goods and services. What I do, I think, is legal work. It's the
xhibit 17 (Deposition Transcript of Thomas Cook (“Cook
practice of law.” See E
Trnspt”) at 94).
● “Do you think amending descriptions is a practice of law?” Id. at 94. “[I]f I make
a suggestion or if I change something, I set it back in front of the client again and
say, “Is that accurate? Is it complete?” ¶ They say, “Yes.” ¶ And then I file it. ¶
To me, that’s the practice of law.”See id at 6 (Cook Trnspt at 96).
Because Mr. Demassa gives advice on how to modify descriptions of goods and services
and actually modifies them, his business practice is the practice of law and violates Cal. Bus. &
Prof. Code § 6125.
ii. Advising on the acceptability of specimens is practicing law
“A United States trademark registration will not be granted unless and until applicant
files a verified statement, together with specimens of use, that it has used the mark in United
- 21 -
States interstate or foreign commerce.” 3 McCarthy § 16:27. Use in commerce proven by

specimen is “fundamental to United States trademark registration practice.” 3 McCarthy §
19:61.50. In a “use-based” application, the Lanham Act requires that a complete application for
registration include “such number of specimens or facsimiles of the mark as used in commerce
as may be required by the Director.” Id. fn. 2 (citing 1 5 U.S.C. § 1051(a)(1)). In an intent-to-use
(“ITU”) application, a “verified statement that the applicant has a bona fide intention to use the
xhibit 15 (TMEP 1101, Bona Fide Intention To
mark in commerce must be included[.]” See E
Use the Mark In Commerce).
Thus, as a “fundamental” step in trademark registration practice, a trademark practitioner
must analyze a client-submitted specimens and advise whether the specimens is sufficient to
prove that the mark was “used in commerce”. If the mark is for goods, the application must
show that the goods are “sold or transported” in commerce in the ordinary course of trade. 15
U.S.C.A. § 1127. An “examining attorney must refuse registration if the specimen indicates that
the goods have not been ‘sold or transported’ in commerce.” See Exhibit 16 (TMEP § 904,
Specimens).
“Sold or transported in commerce” is a legal term which would require a trained legal
mind to fully understand its meaning. First, the “in commerce” concept invokes the Commerce
Clause of the U.S. Constitution. See 3 McCarthy § 19:108. The Lanham Act defines
“commerce” as “all commerce which may be lawfully regulated by Congress.” See 3 McCarthy
§ 19:117. Therefore, understanding “in commerce” requires the understanding of the
Constitution, the Commerce Clause, the interstate commerce and foreign commerce, all of
which are legal concepts that will be covered by Constitution Law class of any U.S. law school.6
Second, “sold or transported”, although a seemingly easy terminology, has difficult legal
implications. Simply advertising the use of a mark does not constitute a statutory “trademark
use” of that symbol. See 3 McCarthy § 19:108; see also 3 McCarthy § 16.29 (on the distinction
6
Not
to mention the added complication that the predecessor court of the Federal Circuit held
that certain intra-state sales of goods may also satisfy the “in commerce” requirement. See 3
McCarthy § 19:117; Application of Silenus Wines, Inc., 557 F.2d 806, 808, 194 U.S.P.Q. 261
(C.C.P.A. 1977).
- 22 -
between advertising uses and point of purchase displays). For example, to illustrate a webpage
for placing pre-sale orders for goods that are not yet available does not satisfy the “sold or
transported” requirement, the TMEP has to provide five legal citations below:
Richardson-Vicks, Inc. v. Franklin Mint Corp., 216 USPQ 989, 991-92 (TTAB
1982) (finding that the goods to be identified by the mark must be in existence at
the time of a sale); cf. Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 1360, 90
USPQ2d 1301, 1308 (Fed. Cir. 2009) (holding that actual use of the mark in
commerce in connection with an existing service is required and that mere
preparations to use a mark sometime in the future does not constitute use in
commerce); In re Port Auth. of N.Y., 3 USPQ2d 1453, 1455 (TTAB 1987)
(finding advertising and promoting telecommunications services before the
services were available insufficient to support registration); In re Cedar Point,
Inc., 220 USPQ 533, 535-37 (TTAB 1983) (holding that advertising of a marine
entertainment park, which was not yet open, was not a valid basis for
registration); In re Nationwide Mut. Ins. Co., 124 USPQ 465 (TTAB 1960)
(holding that stickers placed on policies, bills, and letters announcing prospective
name change is mere adoption, not service mark use).
Exhibit 16 (TMEP § 904). Each trademark applicant’s situation is different. Thus, advising
clients on whether a specimen satisfies the “sold or transported” requirement requires a
trademark practitioner to apply law to facts.
Third, a trademark applicant must have a “bona fide” use in connection with goods sold
or transported in commerce in the ordinary course of trade. See 3 McCarthy § 19:108; 15
U.S.C.A. § 1127. The term “bona fide” is a complicated, multi-factor legal concept. It is not
even defined in the Act because of the “impossibility of identifying every factor that might be
determinative of whether an applicant’s intent is indeed bona fide at every stage of the
registration process.” 3 McCarthy § 19:14 (citing USTA, “The Trademark Law Rev. Act of
1988,” comment on § 1(b) at p. 43 (1989)). The test of “bona fide” was intended by Congress to
be “objective” evidence of “circumstances” showing “good faith.” Id. “ There must be both
actual intent to use a mark and evidence, contemporary with the application, that objectively
demonstrates such an intent.” Id. (quotation marks omitted) (citing November 2001 v. Fame
Jeans Inc., 525 F.3d 8, 21 (D.C. Cir. 2008)). T
hus, based on the applicant’s objective evidence
at the time of application, a trained legal mind is reasonably necessary to evaluate and advise
the applicant on the question of “bona fide” intention of use.
- 23 -
Lastly, the USPTO similarly states on its website that advising on the acceptability of
xhibit 7; ECF No. 46-2 at 2 (“We cannot give legal advice.
specimens is legal advice. See E
This includes: … Advising applicants on substantive examination issues, such as the
acceptability of specimens[.]”).
In summary, advising trademark applicants on the acceptability of specimens, which
necessarily requires the analysis of whether the goods were used “in commerce” under the
Commerce Clause of the U.S. Constitution, whether the goods were “sold or transported” in the
ordinary course of trade, and whether there is a bona fide intention of use, involves many
“difficult or doubtful legal questions” that reasonably requires a trained legal mind.
Accordingly, such advice is legal advice under California law.
In their regular business practice, Mr. Demassa and his staff invariably advise their
clients on the acceptability of specimens. For example, at the deposition of Ms. Di Lascio, the
office manager states:
We make sure that [the specimens] [], in fact, match with what the client is saying
they are offering … For example, if a client is selling a product, we make sure
that they actually have the product, that it's not a computer-generated picture, that
it’s posted online, and that the name of the trademark is prominently displayed.
Or, for example, if they're offering a service, we make sure that it’s posted
somewhere where it's open to the public and the public has access to purchasing
those services. So we just make sure that it’s an acceptable specimen.
Exhibit 9 (Di Lascio Trnspt at 60-61). Apparently, while preparing for their client’s application,
Mr. Demassa and his team verify their client’s bona fide intention of use (“we make sure that
they actually have the product, that it's not a computer-generated picture”) and evaluates if the
product is sold or transported in commerce (“that it’s posted online ...”). In addition, just to
check if a product is posted online is insufficient for evaluating the “sold or transported in
commerce” requirement. See 3 McCarthy § 19:108 ( “[A]ny material whose function is simply
to tell a prospective purchaser about the goods or to promote the sale of the goods is
unacceptable to support trademark use.” For example, “the use of a mark on a website prior to
the time the goods were sold was not a ‘use’ which could support a trademark registration.” Id.
at 2 (citing The Clorox Company v. Salazar, 108 U.S.P.Q.2d 1083, 1086, 2013 WL 5498171
(T.T.A.B. 2013)).
- 24 -
Mr. Thomas Cook, the trademark attorney who cooperated with Mr. Demassa for several
decades, also agrees in his deposition that advising on the acceptability of specimens is the
practice of law:
Q. [D]o you think advising on the specimens is a practice of law? Clients send
you a specimen, and then you tell them, “This is not good; this doesn’t match; this
doesn’t fit into the class”?
A. Yeah. I'll put aside those particular examples, but I think advising on
specimens is the practice of law.
Q. How would you advise your client if your client sent you a specimen and you
think it’s not good?
A. I would send it back to them and say, “This is not going to be acceptable to the
patent office for these three reasons.”
Q. And that is the practice of law, right?
A. In my view, it is.
Exhibit 17 (Cook Trnspt at 97-98).
Based on the above, Demassa’s business practice of advising clients on the acceptability
of specimens constitutes legal advice, is the practice of law and violates Cal. Bus. & Prof. Code
§ 6125.
c. Preparing legal instrument by which legal rights are secured is
practicing law.
“California courts have long accepted that, in a general sense, ‘the practice of law ...
includes legal advice and counsel and the preparation of legal instruments and contracts.’” In re
Reynoso, 477 F.3d 1117, 1125 (9th Cir. 2007) (citing Baron, 2 Cal. 3d 535).
“Trademark law, like contract law, confers private rights, which are themselves rights of
exclusion. It grants the trademark owner a bundle of such rights” K mart Corp. v. Cartier, Inc.,
485 U.S. 176, 185-186 (1988). The Lanham Act prescribes that “[a] certificate of registration of
a mark ... shall be prima facie evidence ... of the owner’s ownership of the mark, and of the
owner’s exclusive right to use the registered mark in commerce on or in connection with the
goods or services specified in the certificate …” 15 U.S.C § 1057 (emphasis added). The
Supreme Court observed that “[t]he hallmark of a protected property interest is the right to
exclude others. Coll. Sav. Bank v. Fla. Prepaid Postsecondary Educ. Expense Bd., 527 U.S.
666, 673 (1999). This right to exclude is “one of the most essential sticks in the bundle of rights
- 25 -
that are commonly characterized as property.” Id. ( citation omitted).

In addition, trademark owner has the right to prevent confusion when “trademark is
invaded by a junior user’s use of a similar mark.” See 1 McCarthy § 2:10 (citations omitted).
Trademark owner has the right to invoke government enforcement. Id. Furthermore, trademark
is a symbol of business goodwill. Id. “ It is like any ‘property right’”. Id. T
rademarks can be
bought, sold or licensed. Id.
Based on the above, there is no doubt that a trademark application is a legal instrument
by which the trademark rights are secured. In California, the practice of law includes “the
preparation of legal instruments and contracts by which legal rights are secured, although such
matter may or may not be depending in a court.” See supra, Birbrower, 17 Cal. 4th 142. As his
routine business practice, Mr. Demassa prepares and submits trademark application for his
emassa Trnpt at 113 (“TradeMark Express will ... prepare and submit your federal
clients. See D
USPTO trademark application for one low fee.”).
Therefore, Demassa’s business practice of preparing trademark application, which is a
legal instrument by which trademark rights are secured, is the practice of law in California and
violates Cal. Bus. & Prof. Code § 6125. Here, preparing a trademark application includes:
selecting classification of trademark, modifying the descriptions of goods and services,
preparing and filing the application, preparing the form responding to an office action. See,
supra, Section III.C.1 (Demassa’s entire business practice violate 37 C.F.R. § 11.14).
d. Demassa’s service is not merely clerical.
Providing “merely clerical” service in California is not practicing law if the service just
“made forms available for the client’s use, filled the forms in at the specific direction of the
client and filed and served those forms as directed by the client. ” People v. Landlords Prof'l
Servs., 215 Cal. App. 3d 1599, 1608, (4th Dist. Ct. App. 1989) (emphasis added). In addition,
merely giving a detailed manual containing specific advice is not practicing law if “the service
did not personally a dvise the client with regard to his specific case.” Id. (emphasis added); see
also In re Reynoso, 477 F.3d 1125 (“merely clerical preparation services do not constitute the
practice of law, and that impersonal instruction on form completion—such as may appear in a
- 26 -
detailed manual—may also be permissible.”).

Demassa’s service, however, is not merely clerical. If Demassa “had only undertaken to
perform the clerical service of filling in the blanks on a particular form in accordance with
information furnished him by the [client], or had merely acted as a scrivener to record the stated
agreement of the parties to the transaction, he would not have been guilty of practicing law
without a license.” People v. Sipper, 61 Cal. App. 2d Supp. 844, 846–47 (Cal. App. Dep’t
Super. Ct. 1943), disapproved of by Murgia v. Mun. Court, 15 Cal. 3d 286 (1975). But here,
Demassa knowingly advises his clients on how to select certain contents in trademark
application. He actively and consciously modifies certain contents provided by his clients to
increase the chance of success. For example,
● Demassa and his staff select classifications and check to see if the specimens
xhibit 18 (Demassa Trnspt at 75 lns. 19-21)
matches the classifications. See E
xhibit 6 (Demassa Trnspt
(Demassa’s staff selects the class for clients); see also E
at 139-40) (“We don't want a client to select [classes]. They’re hiring us to get it
right, to file in their correct class that they’re in. Whatever the client tells us that
they think their class is, we’re still going to look it up and see what exactly class
they’re in.”).
● Demassa and his staff would make sure that the trademark application forms are
filled out correctly by the client. Exhibit 8 (Di Lascio Trnspt at 56 lns. 17-23).
xhibit 5 (Demassa Trnspt at 90) (“Everything has to match so the
See also E
application goes through smoothly.”).
● Demassa and his staff modify the descriptions of goods and services and send it
back for client’s approval. See Exhibit 19 (Demassa Trnspt at 85-86) (“The
clients tell us their goods and services, and then we write it in a form [] that's
professional. We double check the research to make -- their initial order to make
sure that everything's covered. We send it back to the client for approval and they
tinker with it and we file it.”).
Thus, Demassa has done more than simply filling in blanks or acting as a scrivener
- 27 -
according to the specific directions of the client. He does not fall under the “clerical service”
exception. Therefore, his business practice of selecting or modifying certain contents on a
trademark application constitutes the practice of law in California and violates Cal. Bus. & Prof.
Code § 6125.
D. This Court May Create New Federal Common Law On What Constitutes
The Practice Of Law In Federal Trademark Filing
Absent congressional authorization, courts may only create new federal common law if
the operation of state law governing the dispute would (1) “significant[ly] conflict” with (2)
“uniquely federal interests.” In re Nat’l Sec. Agency Telecommunications Records Litig., 483 F.
Supp. 2d 934, 940 (N.D. Cal. 2007).
So far, Plaintiff has demonstrated that Demassa’s same business conduct simultaneously
violates both the federal regulation 37 C.F.R. § 11.14 and California unauthorized practice of
law statute Cal. Bus. & Prof. Code § 6125, et seq. In that sense, California law does not
significantly conflict with the federal interest of preventing unauthorized practice of trademark
law before the USPTO. However, even if this Court finds that the California and federal laws
are in significant conflict in governing what constitutes the practice of law in trademark matters,
federal regulations in Part 11 of 37 C.F.R. will preempt California state law. See 3 7 C.F.R. §
11.1 (“Nothing in this part shall be construed to preempt the authority of each State to regulate
the practice of law, except to the extent necessary for the United States Patent and Trademark
Office to accomplish its Federal objectives.”). In that situation, this Court may create new
federal common law on what constitutes the practice of law in federal trademark filing.
IV. CONCLUSION
As shown above, there is no genuine dispute as to the undisputed material facts that
Demassa’s business conduct is illegally practicing law, both under federal regulations and under
California state law. The evidence is sufficient for a reasonable jury to return a verdict for
Plaintiff. Accordingly, Plaintiff is entitled to partial summary judgment on California UCL as a
matter of law. For these reasons, Plaintiff respectfully requests that this Court enter partial
summary judgment against Chris Demassa and grant the permanent injunctive relief set forth in
the attached proposed order.
- 28 -
Dated: October 30, 2019 LEGALFORCE RAPC WORLDWIDE P.C.
_____/Raj Abhyanker/__
Raj V. Abhyanker
Attorneys for Plaintiff:
LegalForce RAPC Worldwide P.C.
- 29 -

Motion For Summary Judgment, LegalForce RAPC v. Demassa (UPL, California, Before USPTO)

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Case 3:18-cv-00043-MMC Document 134-1 Filed 10/30/19 Page 1 of 29

RAJ V. ABHYANKER, California SBN 233284

LEGALFORCE RAPC WORLDWIDE, P.C.

Attorneys for Plaintiff,

UNITED STATES DISTRICT COURT

LEGALFORCE RAPC WORLDWIDE, Case No.: 3:18-cv-00043-MMC

CHRIS DEMASSA, d/b/a Date: December 6, 2019

III. PLAINTIFF IS ENTITLED TO PARTIAL SUMMARY JUDGMENT 11

Birbrower, Montalbano, Condon & Frank v. Superior Court

In re Cedar Point, Inc.

Kroger Co. v. Lidl US, LLC

The Clorox Company v. Salazar

Statutes and Regulations

15 U.S.C. §1051 ….….…….…………………...………………………………………….…. 20

37 C.F.R. § 11.5 ..………….…………………...………………………………………….…. 11

attorneys and non-attorneys such as Demassa.

Demassa serve any rebuttals to Plaintiff’s expert reports.

acceptability of specimens and classification of goods and services.

Factors (§ 24:32), etc.

States interstate or foreign commerce.” 3 McCarthy § 16:27. Use in commerce proven by

that are commonly characterized as property.” ​Id. (​ citation omitted).

detailed manual—may also be permissible.”).

Dated: October 30, 2019 LEGALFORCE RAPC WORLDWIDE P.C.

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that are commonly characterized as property.” Id. ( citation omitted).