Judge lets Atticus trademark challenge proceed

A federal judge has allowed an Orange County personal injury lawyer to pursue claims seeking cancellation of Atticus Labs Inc.'s ATTICUS trademark, preserving a dispute over whether the venture-backed operator of atticus.com can claim trademark rights for legal services.

U.S. District Judge Fred W. Slaughter dismissed a false advertising claim and narrowed claims based on California referral-service law, but ruled that Atticus Injury Law and attorney Atticus Wegman adequately alleged key trademark claims against Atticus Labs, founder Samuel Byker and Atticus Law PC.

The case centers on whether Atticus Labs, which plaintiffs characterize as a referral service, can hold a trademark covering "legal services."

Slaughter allowed claims alleging abandonment, nonuse and fraudulent procurement of the trademark to proceed. The plaintiffs allege Byker signed Atticus Labs' trademark application in December 2018 asserting the company was providing legal services, although it was not doing so. The ATTICUS mark was registered in July 2019.

Nate Camuti, counsel for the plaintiffs, said the ruling allows them to challenge the validity of the registration.

"We believe the facts will show that the Atticus trademark registration obtained by Defendant Atticus Labs, Inc. was not valid when the application was filed," Camuti said. He said the plaintiffs intend to show the registration was obtained by misleading the U.S. Patent and Trademark Office.

Atticus disputes those allegations.

"This is a routine trademark dispute that was triggered after Mr. Wegman decided to knowingly infringe our mark," Atticus chief legal officer Arpit K. Garg said in a statement. He said the company serves more than 100,000 Americans annually and has obtained more than $7 billion in benefits for clients.

Atticus operates through two entities. Atticus Labs holds employees, intellectual property and technology, while Atticus Law PC is the professional entity through which legal services are provided.

Slaughter found the plaintiffs adequately alleged that Atticus Labs failed to exercise quality control over legal services provided under the mark, potentially supporting an abandonment claim based on "naked licensing."

The judge also declined at the pleading stage to decide whether Atticus' referral activities themselves constituted legal services, noting that some referral conversations can include legal advice.

Slaughter dismissed the plaintiffs' Lanham Act false advertising claim for lack of standing and narrowed state unfair competition and advertising claims because the plaintiffs had not sufficiently connected alleged referral-service violations to lost business.

He also rejected the defendants' anti-SLAPP motion, finding the suit targets alleged misconduct rather than protected speech involved in seeking a federal trademark.

Plaintiffs have until Sept. 7 to amend the dismissed claims. If they do not, defendants must answer the surviving claims by Sept. 21.

Atticus Injury Law, Atticus Wegman v. Atticus Labs, Inc., et al, 8:26-cv-00362-FWS-ADS (C.D. Cal.).