Erich Specht v. Google Incorporated
747 F.3d 929
| 7th Cir. | 2014Background
- Specht founded Android Data Corporation and registered the Android Data trademark; ADC ceased major operations in 2002 and transferred its assets, including the mark, to ADI.
- Specht attempted to revive use of the Android Data mark in 2007 after lapse of ADC’s business activity and after Google began developing Android; he assigned the mark to ADI retroactively to December 2002.
- Google purchased Android, Inc. in 2005 and released Android in commerce in November 2007; Google’s use later became continuous.
- Plaintiffs alleged infringement under Lanham Act claims and related state-law and common-law claims; Google counterclaimed for abandonment and cancellation of Specht’s mark.
- District court granted summary judgment for Google, finding abandonment of the Android Data mark by Specht in 2002 and cancellation of the registration; Specht and ADC dismissed from infringement standing; only ADI had standing.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Standing to sue for infringement | Specht/ADC had standing as registrants with assignee ADI. | Assignee ADI alone has standing; Specht/ADC no standing post-transfer. | ADI has standing; Specht and ADC dismissed from infringement |
| Whether Android Data was abandoned after 2002 | Specht retained use or intent to resume; post-2002 activities show use. | Nonuse after 2002 with no intent to resume; abandonment occurred. | Abandonment proven; no resumed use prior to 2007 |
| Whether Google acquired senior user rights after November 2007 use | Specht retained potential rights; naked-licensing theory invalidates Google's rights. | Google became senior user upon first use in commerce; abandonment returned mark to public domain. | Google became senior user; rights protected by continuous use since 2007 |
| Validity of district court’s cancellation of Specht's registration | Cancellations require proper authority under applicable statutes. | Cancellation appropriate where asserted rights are invalid. | Cancellation proper; district court’s citation, though to §1064, valid under §1119 authority |
Key Cases Cited
- Gaia Techs, Inc. v. Reconversion Techs., Inc., 93 F.3d 774 (Fed. Cir. 1996) (assignee stands in place of registrant for standing)
- Gillette Co. v. Kempel, 254 F.2d 402 (C.C.P.A. 1958) (assignee may sue to enforce mark rights)
- Central Mfg., Inc. v. Brett, 492 F.3d 876 (7th Cir. 2007) (abandonment leads to loss of rights; restoration governs)
- Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir. 2009) (use in commerce contentions for website marks)
- Zazu Designs v. L’Oreal, S.A., 979 F.2d 499 (2d Cir. 1992) (sporadic solicitations not use in commerce)
- Indianapolis Colts, Inc. v. Metro. Baltimore Football Club Ltd. P’Ship, 34 F.3d 410 (7th Cir. 1994) (abandonment returns mark to public domain)