Property, intangible

a blog about ownership of intellectual property rights and its licensing

Google Is the Senior User of ANDROID Mark

Google has successfully defeated an infringement claim over its use of the ANDROID trademark.  So I thought I’d take a look at the bases, which include rarer claims of tacking and abandonment, along with a first use date kicker.
Plaintiff Specht had a trademark registration for ANDROID DATA but went out of business. He assigned the mark to another company he owned, Android’s Dungeon, which was moribund. When Specht learned that Google had announced the ANDROID mobile phone operating system, he used the mark some more and then sued Google for trademark infringement. Google won on summary judgment based on the following findings of fact and law:
Tacking: Specht’s use of ANDROID’S DUNGEON cannot tack to his former use of ANDROID DATA. Specht “materially altered the mark, which does not provide tacking rights,” when he:

dropped the disclaimed word (‘data’), made the dominant portion of the mark possessive, and added the word ‘dungeon’ to the dominant portion. . . .  ‘Data,’ as used by Plaintiffs in ANDROID DATA, presumably suggests the definition of ‘information in numerical form that can be digitally transmitted or processed.’ ‘Android,’ considering the robot logo that Plaintiffs use with the mark, suggests a meaning of ‘mobile robot usu[ally] with a human form. The word ‘dungeon,’ however, has an entirely different meaning: ‘a dark usu[ally] underground prison or vault.’  Plaintiffs have altered their original mark–which created a computer services or products impression–and created a mark with allusions to robotic prisons, futuristic vaults, or a number of other meanings about which the Court will not speculate.

(Perhaps a comic book store in “The Simpsons.” – ed.)
Google’s first use: The court found that Google had first use on November 5, 2007, the date of Google’s press release announcing the Android operating system. I find this somewhat interesting, since the first distribution of software under the Android mark (in the form of a development kit) was not until November 12, 2007, and the first product with the Android operating system was not until October 22, 2008. I would have thought the November 5, 2007 use was a use analogous to trademark use (still sufficient to secure rights), with actual use November 12.
Specht’s abandonment of ANDROID DATA: The mark was used continuously from 1998 to 2002. On the first prong of the abandonment analysis, discontinued use, the period of non-use began when Specht ceased operations at the end of 2002 and started using ANDROID’S DUNGEON instead–no matter the continuing use of the domain name or the information at the web site, because it did not provide a means for ordering software or offer information about Specht’s services. (NB that, according to the court, this is the only decision to address whether a “ghost site” remaining after a company has gone out of business will be use of a trademark in commerce.) There was no use for three years, thus a rebuttable presumption that the trademark was abandoned. On the second prong of abandonment, intent not to resume use, Specht’s only evidence that he did not intend not to resume use (phew) was his own statement in the Statement of Material Facts that 

With his new day job intact, Specht’s interest in selling Android Data’s assets significantly lessened. By May 2004, he decided to keep the assets with every intention of further developing the Android Data Software Suite and returning the Android Data business to profitability at the earliest opportunity.

That “purely subjective intention in the abandoner’s mind to re-engage in a former enterprise at some indefinite future time” wasn’t enough to defeat the presumption of abandonment. The mark ANDROID DATA was abandoned.
Summary judgment granted in favor of Google declaring that it is the senior user of ANDROID, for cancellation of the Specht registration, and that Google does not infringe the Specht mark.
Hat tip to counsel on both sides; it’s clear the arguments were well-formed and well-supported.
Specht v Google, Inc., No. 09 C 2572 (N.D. Ill. Dec. 17, 2010). 
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