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Hello Divorce, Hello PreNup, Hello New Trademark Infringement Issues?

Last
week,
consumer-facing
legal
tech
enjoyed
a
moment
in
the
mainstream
sun
when

HelloPreNup

and
its
founders
Sarabeth
Jaffe
and
Julia
Rodgers
appeared
as
contestants 
and
snagged
a
deal
on
the
popular
television
hit,

Shark
Tank

When
I
shared
news
of
the
win
in
the
popular

Lawyer
on
the
Beach

Facebook
group,
several
commenters
immediately
asked
if
the
company
was
connected
to

HelloDivorce
,
the
recently

VC-funded
,
DIY
divorce
site
founded
by

Erin
Levine

In
other
words,
Hello
Likelihood
of
Confusion,
Hello
Trademark
Infringement.

I’m
not
a
trademark
expert
(though
I
did
speak
at
the

AltLegal

conference)
but
I
decided
to
embark
on
a
little
DIY
trademark
research. 
In
my
first
stop
at
the

USPTO.gov

website,
I
learned
that
on
September
16,
2016,
HelloDivorce
applied
for
a
service
mark
in

Class
045

for
legal
services
and
“in
particular,
services
rendered
by
lawyers,
legal
assistants
and
personal
advocates.” 
The
mark
was
registered
a
year
later
on
September
12,
2017.


HelloPreNup
was
filed
on
December
17,
2018,
actually
in
two
classes

Class
035
(attorney
referral
services)
and

Class
042

which
pertains
to
“Scientific
and
technological
services
and
research
and
design
relating
thereto;
industrial
analysis
and
industrial
research
services;
design
and
development
of
computer
hardware
and
software.”
The
service
mark
for
Class
042
was
granted
April
13,
2021.


After
checking
the
registration
history,
I
next
considered
whether
a
likelihood
of
confusion
exists
between
the
two
marks. 
As
I
learned,
likelihood
of
confusion
involves
a
case-by-case,
fact-specific
inquiry,
applying
the
factors
listed

here

in
the
Trademark
Manual
Examining
Procedure. 
As
a
starting
point,
the
“similarity…of
the
marks
in
their
entirety
including
sound
and
appearance”
are
considered.
Granted,
the
HelloDivorce
and
HelloPreNup
websites
and
logos
don’t
look
similar,
but
the
names
sure
sound
similar.
And
while
Hello
is
a
generic
term,
and
popular
with
lots.
of
brands
(think

HelloFresh

or

HelloSeven
),
the
term
isn’t
commonly
used
in
legal.
Which
means
that
DIY
service
preceded
by
the
word
Hello

like
HelloTrademark
or
HelloWills

could
arguably
raise
confusion.
And
that’s
not
a
farfetched
conclusion.
Seems
the
term
“zoom”
to
describe
a
law-related
service
is
off
limits
after

LegalZoom


prevailed
in
an
infringement
action

against
a
company
called
BailZoom
which
is
a
network
of
bond
agents
doing
work
that’s
entirely
outside
the
scope
of
what
LegalZoom
offers.

In
addition
to
common
name,
the
similarity
of
services
heightens
heightens
the
possibility
of
confusion
between
HelloDivorce
and
HelloPreNup.
Both 
HelloDivorce
and
HelloPreNup
services
provide
computer-generated,
DIY
self-help
products
in
the
family
law
space
and
in
fact,
were
both
founded
by
female
divorce
lawyers. 
In
fact,
it’s
probably
the
family-law
connection
that
most
accounts
for
the
confusion
between
HelloDivorce
and
HelloPrenup.

Geography
can
also
be
a
factor
that
bears
on
likelihood
of
confusion. 
So
for
example,
you
may
be
able
to
have
a
Pyramid
Family
Law
Firm
in
Buffalo,
NY
and
a
Pyramid
Family
Law
Group
in
Omaha,
Nebraska
assuming
those
practices
are
limited
to
their
respective
states
or
where
the
lawyers
are
licensed
to
practice.
But
DIY
providers
like
HelloDivorce
or
HelloPreNup
explicitly
define
themselves
as

not

being
law
firms

so
the
geographic
limitations
that
might
otherwise
protect
a
name
within
a
certain
region
don’t
apply
here.
Nor
would
legal
tech
companies
want
that
because
after
all,
the
whole
point
is
to
scale,
even
if
those
companies,
by
necessity
due
to
the
balkanized
state
court
system
can
only
launch
a
few
states
at
a
time
(currently,
HelloDivorce
operates
in
about
5-6
states
while
HelloPreNup
is
open
in
18
states).

Finally,
the
fact
that
the
two
marks
are
registered
in
different
classes
has
little
bearing
on
the
analysis

though
it
is
interesting
that
HelloDivorce
selected
legal
services
as
a
category
while
HelloPreNup
opted
for
classification
as
a
computer
program. 
The
classifications
seem
accurate
since
HelloDivorce
offers
add-on
legal
services
and
paralegal
review
whereas
HelloPreNup
does
not;
the
site
only
suggests
seeking
attorney
review
of
the
documents
produced.
And
while
HelloDivorce
is
not
classified
as
a
computer
software
product,
the
company’s

Divorce
Navigator
,
the
tech
tool
that
powers
creation
of
the
site’s
forms
is
separately
trademarked
in
Class
042
for
software
products.

So
what
does
all
of
this
mean? 
First,
companies
in
the
legal
tech
consumer
space
need
to
spend
time
researching,
developing
and
protecting
brand. 
LexThis
and
LexThat
may
work
fine
in
the
biglaw
space
where
product
customers
are
more
sophisticated
and
unlikely
to
be
confused,
it’s
a
different
ballgame
when
companies
are
targeting
consumers. 
Second,
branding
and
brand
protection
matter
when
developing
legal
products
more
than
for
traditional
legal
services
because
brand
recognition
builds
trust,
helps
gain
market
share.
And
brands
can
be
used
as
a
shield
as
much
as
a
sword
because
they
help
deter
knock
offs

which
isn’t
all
that
difficult
given
the
low
cost
of
tech
these
days.
Third,
in
an
emerging
industry,
confusion
can
be
highly
problematic.
If
a
company
generates
documents
that
aren’t
enforceable
or
legally
compliant,
it
could
damage
that
company’s
reputation
as
well
as
the
company
that’s
similarly
named.
In
nascent
industries,
quality
and
reputation
matter,
arguably
more
than
in
established
spaces.
Finally,
as
legal
tech
matures,
it
must
deal
with
the
same
run-of-the-mill
business
issues
like
trademarks
that
all
entrepreneurs
deal
with
in
addition
to
ensuring
legal
ethics
compliance
and
jumping
through
all
the
other
bar-specific
hurdles.
Which
honestly,
is
a
positive
development
because
it’s
evidence
that
the
legal
tech
industry
for
consumer
products
is
maturing.

For
me,
this
post
was
an
interesting
exercise
and
a
way
to
learn
about
a
new
practice
area

trademarks

that’s
way
outside
of
my
expertise.
So
I
draw
no
conclusions,
but
just
you
with
this
observation:
the
names
HelloDivorce
and
Hello
PreNup
may
be
confusing,
but
one
thing
is
not:
the
future
of
DIY
law
and
a
DIY
legal
industry
is
here.
Time
to
say
Hello
New
Law!