UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT LEGALFORCE RAPC No. 23-2855 WORLDWIDE, PC, D.C. No. 3:22-cv-03724- Plaintiff - Appellant, TLT v. LEGALFORCE, INC., a Japanese OPINION corporation,

Defendant - Appellee.

Appeal from the United States District Court for the Northern District of California Trina L. Thompson, District Judge, Presiding

Argued and Submitted October 23, 2024 San Francisco, California

December 27, 2024

Before: Sidney R. Thomas, Kim McLane Wardlaw, and Daniel P. Collins, Circuit Judges.

Opinion by Judge Sidney R. Thomas; Concurrence by Judge Daniel P. Collins 2 LEGALFORCE RAPC WORLDWIDE V. LEGALFORCE, INC.

SUMMARY *

Lanham Act

The panel affirmed the district court’s dismissal, for failure to state a claim, of an action under the Lanham Act alleging trademark infringement in defendant’s advertising and selling of equity. LegalForce RAPC Worldwide, P.C. (“LegalForce USA”), a California S corporation that operates legal services websites, sued LegalForce, Inc. (“LegalForce Japan”), a Japanese corporation that provides legal software services, for trademark infringement, alleging that Legal Force Japan’s United States expansion plan, website ownership, and advertising and selling of equity all infringed LegalForce USA’s mark. The district court dismissed the website claims for lack of jurisdiction and dismissed the expansion plan claims as unripe. The district court dismissed the claims concerning equity for failure to state a claim. As to the equity claims, the panel affirmed the district court’s conclusion that advertising and selling equity is not connected to a sale of goods or services, and so cannot constitute trademark infringement. The panel also affirmed the district court’s conclusion that LegalForce USA failed to justify an extraterritorial application of the Lanham Act because LegalForce Japan’s

* This summary constitutes no part of the opinion of the court. It has been prepared by court staff for the convenience of the reader. LEGALFORCE RAPC WORLDWIDE V. LEGALFORCE, INC. 3

services in Japan could not satisfy the “in connection with” goods or services requirement under the Lanham Act. Concurring in the judgment, Judge Collins agreed that a company’s own equity or stock shares do not count as a “good” or “service” it offers to customers in the market for purposes of the Lanham Act. Judge Collins wrote that, in his view, it was not necessary to reach any additional issues in order to resolve this case, and he disagreed with the majority’s importation, into the Lanham Act, of a definition of “goods” limited to goods that are “movable” or “tangible.”

COUNSEL Raj V. Abhyanker (argued), LegalForce RAPC Worldwide PC, Mountain View, California; R. Chris Lim, Law Office of R. Chris Lim, Los Angeles, California; for Plaintiff- Appellant. David A. Makman (argued), Law Offices of David Alan Makman, Redwood City, California; Zoni V. Sai, Tokyo International Law Office, Tokyo, Japan; for Defendant- Appellee. 4 LEGALFORCE RAPC WORLDWIDE V. LEGALFORCE, INC.

OPINION S.R. THOMAS, Circuit Judge:

This appeal presents the question, inter alia, of whether using a trademark in connection with the sale of equity constitutes using the mark in connection with “goods or services” within the meaning of the Lanham Act, 15 U.S.C. § 1051 et seq. We conclude that it does not, and we affirm the district court’s dismissal of the action for failure to state a claim. The district court had subject matter jurisdiction under 28 U.S.C. § 1338(a), because LegalForce USA alleges claims under