Specht v. Google Inc.
2010 U.S. Dist. LEXIS 133772
N.D. Ill.2010Background
- Specht created the Android Data Software Suite and formed ADC in Illinois in 1998, acquiring and later transferring the ANDROID DATA assets to ADI in December 2002; ADC registered ANDROID DATA in 2002 (Registration No. 2,639,556) and generated about $600,000 in gross revenue through 2002.
- ADC lost key clients in 2002, reduced operations, and Specht moved Android Data assets to ADI to avoid Illinois corporate fees; ADC ceased active business after 2002 but continued some domain hosting and related activity through 2005.
- Specht transferred all ADC assets to ADI on December 26, 2002, and staff and clients largely ceased, with invoices and services thereafter issued under Android’s Dungeon rather than Android Data.
- Google announced Android and formed the Open Handset Alliance in November 2007; Google filed a trademark application for ANDROID, which the USPTO ultimately rejected for likelihood of confusion with ANDROID DATA, yet Google continued to use ANDROID in commerce.
- Plaintiffs filed suit in 2009 alleging infringement of ANDROID DATA and related marks; Google counterclaimed for abandonment, arguing Plaintiffs abandoned the marks before November 5, 2007, when Google asserts Android rights attached.
- The court must determine whether abandonment occurred before November 5, 2007, and whether Google’s 2007 rights bar Plaintiffs’ claims, applying the Lanham Act 3-year nonuse rule and the requirement of intent to resume use.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether ANDROID DATA was abandoned before 11/5/2007 | Specht maintained some use and attempted to sell ADC/ANDROID DATA; nonuse was not conclusively abandonment | Plaintiffs ceased bona fide use by 2002; 3-year nonuse presumption established by 2005; Google rightfully adopted ANDROID in 2007 | Plaintiffs abandoned ANDROID DATA by 12/26/2005; Google obtained rights in 11/5/2007; infringement claims fail |
| Whether Google established rights to the ANDROID mark on 11/5/2007 | Use by Google post-November 2007 supports senior rights dependent on substantial public use | Press releases and media coverage show bona fide use in commerce; rights attach upon use in commerce | Google established rights to ANDROID in commerce beginning 11/5/2007; Plaintiffs’ prior abandonment leaves Google senior user status |
| Whether Plaintiffs’ post-2007 uses affect abandonment analysis | Post-2007 uses show continuing rights to ANDROID DATA | Abandonment analysis must look to the period ending 11/5/2007; post-2007 uses do not defeat abandonment | Post-2007 uses do not defeat abandonment; analysis limited to pre-11/5/2007 period |
| Whether Android’s Dungeon and other marks tack to ANDROID DATA for abandonment purposes | ANDROID’S DUNGEON tacks to ANDROID DATA; preserves rights | ANDROID’S DUNGEON is not the legal equivalent of ANDROID DATA; cannot tack | Android’s Dungeon is not the legal equivalent of ANDROID DATA; tacking rejected; abandonment analysis unaffected |
| Whether Google’s abandonment ruling bars other claims (unfair competition, etc.) | If abandonment occurred, Google infringes; Gaz compensation | With abandonment, Google is senior; other claims fail as derivative of Lanham Act status | All direct and related claims fail; Google granted summary judgment on Counts I-V; Google’s Counterclaim granted in part (cancellation of ANDROID DATA) |
Key Cases Cited
- Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947 (7th Cir.1992) (dominant element protection limits abandonment conclusions when Jonny changes are minor)
- Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156 (Fed.Cir.1991) (tacking analysis requires same commercial impression; substantial changes break tacking)
- Roulo v. Russ Berrie & Co., Inc., 886 F.2d 931 (7th Cir.1989) (abandonment burden includes showing nonuse and intent not to resume)
- Saratoga Vichy Spring Co., Inc. v. Lehman, 625 F.2d 1037 (2d Cir.1980) (nonuse with business continuity and legitimate reasons may negate abandonment)
- Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir.2009) (use in commerce and TTAB-type considerations inform abandonment/registration)
- Johnny Blastoff, Inc. v. Los Angeles Rams Football Co., 188 F.3d 427 (7th Cir.1999) (complaints as admissions; context for use and rights)