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!