• Google is, Irrelevantly, Confirmed as the Senior User of the ANDROID Mark

    by  • April 7, 2014 • trademark • 0 Comments

    Artwork by Bersam under CC-BY 3.0 unported, click for source

    Artwork by Bersam, CC-BY 3.0 unported

    Before Google acquired Android, Inc., and later released the Android operating system, Erich Specht had registered the mark ANDROID DATA. Specht claimed Google infringed his trademark; Google was successful in the trial court with a claim that Specht had abandoned the trademark, as I previously blogged.

    The Court of Appeals for the Seventh Circuit now upholds the trial court. There’s nothing particularly notable about the decision; the appeals court simply agrees that Specht’s cessation of use when he shut down his business was an abandonment, and that a few intermittent efforts at use after that weren’t enough to maintain his trademark rights.

    There were a few arguments that didn’t go anywhere. Specht argued that “Google released its operating system without retaining control over how developers or mobile-phone companies like T-Mobile could use the software, giving them a so-called ‘naked license.'” I’m not sure why Google’s rights was an issue at all; as far as I can tell Google never alleged Specht infringed so it shouldn’t matter whether or when Google established its own trademark rights. I guess it mattered because Specht had some more substantial use after Google adopted its ANDROID mark that might have carried the day, but that wasn’t really explained.

    So the court addresses the naked licensing argument but dismisses it. First, Specht raised it for the first time on appeal so the argument was waived. I don’t really follow the next reasons though, so I’ll just quote the opinion for you:

    Second, because a naked licensor abandons an already-owned mark, Specht’s argument presupposes that Google had an enforceable right to the Android mark, a position that undercuts Specht’s claim to be the holder of that right. [No it doesn’t, they could both have rights. Ed.] Third, an argument about naked licensing is an argument about Google’s rights against licensees, and licensees are not an issue in this case. [So what would you call the developers using the software? Ed.]

    As much as I am not a fan of the naked license doctrine, and don’t believe that the Android mark is nakedly licensed, if you’re going to address a theory it should be a well-considered response. “Irrelevant” and “not raised, therefore waived” would have been good enough to dispose of the point, rather than these random statements made without the benefit of full fact-finding and argument (which is why you can’t raise new issues on appeal).

    The court cited the wrong statutory section as its authority to cancel the Specht registration; that argument didn’t go anywhere. And costs go to the prevailing party whether the judgment says so or not.

    Specht v. Google Inc., No. 11-3317 (7th Cir. April 4, 2014).

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