September 26, 2018

Via U.S. Mail

Solicitors Regulation Authority

The Cube
1999 Wharfside Street
Birmingham B1 1RN
0370 606 2555
report@sra.org.uk

Re: Nicholas Thad Santucci, Kaela Jean Joyner, and Alexander JSW
Johnson

Dear Solicitors Regulation Authority:

Our firm recently became aware of the conduct of a U.K. law firm hiring U.S.
licensed lawyers defying U.S. rules and law with respect to ownership of law firms. We
filed a grievance with the Legal Ombudsman (File Ref #F016536) but we received a
rejection letter dated August 28, 2018 saying that because we are not a client of this UK
law firm, they are unable to help. You address was provided for follow up, so we are
addressing this to you.

​Nicholas Thad Santucci ​(New York bar, residing in California), ​Kaela Jean
Joyner ​(New York bar, residing in California)​, and Alexander JSW Johnson ​(Iowa bar,
residing in Texas) ​who operate as U.S. trademark practitioners for clients across the
United States, as it relates to their association with a U.K. law firm known as LegalZoom
Legal Services, Ltd., formerly known as Beaumont Legal (“LegalZoom UK”), a wholly
owned subsidiary of LegalZoom.com, Inc. (“LegalZoom US”). Specifically, it appears that
the practitioners’ conduct may not comport with the USPTO Rules of Professional
Conduct, the California Rules of Professional Conduct, the New York Rules of
Professional Conduct, and the rules of the U.K. Solicitors Authority. They have
collectively filed 93 trademarks per Exhibit A before the USPTO while working for the
U.K. law firm (​Exhibit A​​). This letter is sent pursuant to my obligations under 37 CFR §
11.803.

Background

LegalZoom US is Delaware corporation, not authorized to practice law in any

state. According to filings with the Securities and Exchange Commission, LegalZoom
US is not a law firm and, instead, provides “self-help legal documents” and connects
clients to independent licensed attorneys who participate in their attorney network. ​See
LegalZoom.com, Inc., Form S-1 (May 10, 2012). LegalZoom UK utilizes the services of
LegalZoom US which “is not a regulated provider of legal services.” See, e.g.​,
LegalZoom Legal Services Ltd. Limited Scope Representation Agreement (hereinafter
“Representation Agreement”) ​available at
https://www.legalzoom.com/legal/product-service-terms/LZLS-TN-limited-scope-represe
ntation-agreement​. LegalZoom UK’s services specifically cater to US clients. ​Id. at 2
(“This Agreement specifically excludes the following services … [a]ny matter involving
the laws of jurisdictions outside of the United States or its subdivisions.”).

LegalZoom UK is a law firm registered by the Solicitors Regulation Authority

(“SRA”) of England and Wales under ID: 617803 and registered with the UK Companies
house under company number 08823370. LegalZoom UK has one solicitor, James
Peters, who also serves as a manager, alongside Craig Holt, Francis Monestere, Peter
Henry Oey, and Sham Telang. No other solicitors appear to be registered with
LegalZoom UK. It does not appear that the above attorneys working for the U.K. law firm
maintain a client trust account for U.S. clients.

Practice of Trademark Law before the USPTO

“Practice before the Office in trademark matters includes, but is not limited to,
consulting with or giving advice to a client in contemplation of filing a trademark
application or other document with the Office.” ​See 37 CFR § 11.5. Only attorneys may
represent others before the USPTO in trademark matters. ​See 37 CFR § 11.14. An
attorney is “an individual who is an active member in good standing of the bar of the
highest court of any State.” ​See ​37 CFR § 11.1.

Attorneys who practice before the USPTO in trademark matters are subject to
regulation by the states and should generally conform their practice to comply with both
state bar rules and the USPTO Rules of Professional Conduct. ​See, e.g​, 37 CFR § 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.”). Attorneys who practice
before the USPTO must ensure that they comply with the various USPTO Rules of
Professional Conduct, and their respective state rules.

Trademark Legal Services Performed by Attorneys of LegalZoom UK

On information and belief, US-based clients of LegalZoom US visit the

LegalZoom US website, select and purchase legal services, including trademark
registration and Office Action responses, and then purportedly engage LegalZoom UK to
perform the legal services through in-house attorneys or third party law firms. ​See

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Representation Agreement at 1. The payment for legal services is delivered to
LegalZoom US, the non-law firm entity. ​Id. (“LegalZoom UK uses certain service
providers to complete the services under this Agreement. Any funds required for those
covered services are included in your original payment and require no additional
payment by you.”). Any termination of LegalZoom UK “is subject to the agreement
between you and LegalZoom.com, Inc.” ​Id.​ at 3.

It appears that LegalZoom UK employs New York-licensed attorneys to practice

before the USPTO in trademark matters. ​See ​Spreadsheet of USPTO applications filed
by U.K. law firm LegalZoom Legal Services Ltd. for U.S. clients (​Exhibit A​)​ .

It appears that Mr. Santucci (Linkedin Santucci profile on ​Exhibit B​​), Ms. Joyner
(Linkedin Joyner profile on ​Exhibit C​​), and Mr. Alexander JSW Johnson (Linkedin
Joyner profile on ​Exhibit D​​) prepare the selected applications for clients of LegalZoom
US, on behalf of their employer, LegalZoom UK, while physically located within the
LegalZoom US office in Glendale, California.

Mr. Santucci and Ms. Joyner are generally permitted to practice before the
USPTO in trademark and other non-patent matters. Nevertheless, the attorneys must
generally comport their conduct to both the New York, the U.K. Solicitors Act, and
USPTO Rules of Professional Conduct. In this case, it appears that Mr. Santucci, who is
the “Lead Trademark Attorney” at LegalZoom UK, ​may have supervisory authority over
other practitioners under 37 CFR § 11.501 and is therefore responsible for their
compliance with the rules. ​See​ https://www.linkedin.com/in/nicholas-santucci-47701a41.

Client-Practitioner Relationship

“A practitioner may limit the scope of the representation if the limitation is

reasonable under the circumstances and the client gives informed consent.” ​See 37 CFR
§ 11.102(c). Practitioners must also reasonably consult with the client, including about
the means by which the client’s objectives are to be accomplished, and to explain
matters such that the client can make informed decisions. ​See 37 CFR § 11.104.
Practitioners should communicate the scope of the representation, and the fee
information before, or within a reasonable time after commencing the representation.
See 37 CFR § 11.105(b). Practitioners have been disciplined for, ​inter alia​, failing to
communicate and consult with their client regarding trademark applications. ​See In re
Meyer​, Proceeding No. D2010-41 (Sept. 7, 2011)

It appears that Mr. Santucci, Ms. Joyner and Mr. Johnson may not have properly
limited the scope of the representation or even communicated with the client prior to or
during the representation. On information and belief, it appears that Mr. Santucci, Ms.
Joyner and Mr. Johnson receive orders for legal services sold by LegalZoom US and

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fulfill those orders by preparing and/or filing US trademark applications before the
USPTO—all without communicating with the clients.

Conflicts of Interest

A conflict of interest exists if there is a risk that the representation will be limited
by the practitioner’s responsibilities to a third party, or the practitioner. ​See 37 CFR §
11.107(a). Practitioners may not accept compensation from a third party unless: “(1) The
client gives informed consent; (2) There is no interference with the practitioner's
independence of professional judgment or with the client-practitioner relationship; and
(3) Information relating to representation of a client is protected as required by § 11.106.”
See 37 CFR § 11.108(f). Practitioners have been disciplined for, ​inter alia​, failing to
obtain informed consent when the practitioner’s responsibilities were limited by a conflict
of interest and accepting compensation from a third party without informed consent. ​See
In re Virga​, Proceeding No. D 2017-14 (March 16, 2017).

It appears that the employment by LegalZoom UK, as a wholly owned subsidiary

that is controlled by LegalZoom US, along with the placement of Mr. Santucci, Ms.
Joyner and Mr. Johnson in Glendale, California at the offices of LegalZoom US poses a
concern for Mr. Santucci, Ms. Joyner and Mr. Johnson’s conflicts of interest as to their
duties to LegalZoom US. Specifically, it would stand that Mr. Santucci, Ms. Joyner and
Mr. Johnson are beholden to LegalZoom US.

Client Funds

Practitioners must keep client funds separate from their own, and specifically in
the state where the office is located, unless consented to by the client. ​See 37 CFR §
11.115(a). Practitioners with offices in a foreign country must keep their funds in that
country, unless consented to by the client. ​Id. Practitioners have been disciplined for,
inter alia, failing to keep client funds separate from their own. ​See In re Montgomery​,
Proceeding No. D2018-02 (January 10, 2018).

It appears that Mr. Santucci, Ms. Joyner and Mr. Johnson allowed clients to pay
LegalZoom US for legal services. In turn, those payments were accepted on behalf of
LegalZoom UK. Additionally, clients are expected to prepay USPTO filing fees to
LegalZoom US. On information and belief, it appears that client funds were not properly
placed separate from operating funds and therefore the anti-commingling rule was
violated.

Professional Independence

Practitioners are bound by the USPTO Rules of Professional conduct, even if

they acted at the direction of another person. ​See 37 CFR § 11.502. Practitioners may

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generally not: (1) share legal fees with non-practitioners; (2) form partnerships with
non-practitioners if the activities consist the practice of law (3) “permit a person who
recommends, employs, or pays the practitioner to render legal services for another to
direct or regulate the practitioner's professional judgment in rendering such legal
services;” or (4) practice law in a corporation where a non-practitioner owns an interest,
is a director or officer, or has the right to direct the professional judgment. ​See 37 CFR §
11.504. Indeed, practitioners have been disciplined for, ​inter alia,​ sharing fees with
non-practitioners and permitting others to regulate the practitioner’s professional
judgment. ​See In re Levenda,​ Proceeding No. D2018-21 (February 27, 2018).

Here, it appears that Mr. Santucci and Ms. Joyner may be beholden to their
employer, LegalZoom UK, which in turn is beholden to the non-practitioners owners and
officers of LegalZoom US. While officially Mr. Santucci and Ms. Joyner appear to be
employees of LegalZoom UK, it otherwise appears that the two practitioners provide
legal services to clients of LegalZoom US, work within the offices of LegalZoom US, and
assist LegalZoom US in the practice of law. It therefore appears that Mr. Santucci and
Ms. Joyner share legal fees with LegalZoom US and have formed a partnership with
LegalZoom US, which is owned and controlled by non-practitioners, and regulates their
professional judgment.

Assisting in the Unauthorized Practice of Law

“A practitioner shall not practice law in a jurisdiction in violation of the regulation

of the legal profession in that jurisdiction, or assist another in doing so.” ​See 37 CFR §
11.505. Practitioners are still subject to the USPTO Rules of Professional Conduct for
law-related services if they are not distinct from the legal services to the client. ​See 37
CFR § 11.507. Practitioners have been disciplined for conduct relating to their
employment by non-practitioner entities that provided legal services before the USPTO.
S​ee In re Mikhailova,​ Proceeding No. D2017-18 (June 16, 2017).

While the conduct of Mr. Santucci and Ms. Joyner does not amount to the
unauthorized practice of law, it appears that the conduct may still implicate the
provisions of 37 CFR § 11.505, in light of the prohibition of assisting others in the
unauthorized practice of law. Namely, by preparing and filing trademark applications on
behalf of LegalZoom US clients, Mr. Santucci and Ms. Joyner appear to be assisting
LegalZoom US in the unauthorized practice of trademark law before the USPTO.
Additionally, LegalZoom has been noted to have previously had non-practitioner
employees providing more than just document filing services. ​See ​Janson v.
LegalZoom.com,​ ​Inc.​, 802 F. Supp. 2d 1053, 1064 (W.D. Mo. 2011) (“LegalZoom
employees intervene at numerous stages of the so-called ‘self-help services.’ First, after
the customer has completed the online questionnaire, a LegalZoom employee reviews
the data file for completeness, spelling and grammatical errors, and consistency of
names, addresses, and other factual information. If the employee spots a factual error or

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inconsistency, the customer is contacted and may choose to correct or clarify the
answer.”).

Advertising

Practitioners may not give anything of value to a person for recommending the
practitioner service unless certain exceptions apply. ​See 37 CFR § 11.702(b).
Nevertheless, any advertisements “shall include the name and office address of at least
one practitioner or law firm responsible for its content.”​ See​ 37 CFR § 11.702(c).

It appears that Mr. Santucci and Ms. Joyner may also provide LegalZoom US
with pecuniary payments in exchange for referrals of legal matters. Additionally,
LegalZoom US advertisements for the sale of legal services performed by Mr. Santucci
and Ms. Joyner fail to include the name of LegalZoom UK or Mr. Santucci and Ms.
Joyner, as required by the rules.

Conclusion

It appears that the conduct of Mr. Santucci and Ms. Joyner, including by sharing
fees with non-practitioner LegalZoom US, and possibly violating multiple other conduct
rules by allowing LegalZoom US to market legal services without the appropriate
compliance with the advertising rules, likely violates various provisions of the USPTO
Rules of Professional Conduct. The status of LegalZoom UK as an SRA-licensed ABS
does not shield the attorneys from liability.

Even if LegalZoom UK complies with the SRA rules regarding conflicts and client
accounts, they likely cannot comply with the fee sharing and independence requirements
under the USPTO Rules of Professional Conduct. Furthermore, while LegalZoom US
also appears to also offer legal referral services, the sheer fact that LegalZoom US owns
LegalZoom UK, and likely controls certain legal functions, creates a possibly
insurmountable problem.

This letter should fulfill my obligations under 37 CFR § 11.803. Thank you for your
continued work to protect the public and the profession.

Respectfully submitted,

Raj Abhyanker, Esq.