When I heard about Android Data, the first thing that came to my mind was the popular Star Trek android (robot) named Data. However, this case has nothing to do with Star Trek; rather it is about Erich Specht, founder of Android Dungeon Corporation, who obtained a trademark for “Android Data”.
On April 28th, Erich Specht filed a lawsuit in the U.S. District Court for the Northern District of Illinois against Google and 47 other international corporations, including T-Mobile, Vodafone, Intel, Motorola, and Samsung, which used or had intended to use Google’s mobile operating system (OS) called “Android”. Erich Specht is asking for an injunction and also US$2 million from each defendant for trademark infringement.
Erich Specht started his Illinois based firm, Android Dungeon Corporation, in 1998, specializing in software that allows for secure and efficient web-based data transfer. His request to trademark Android Data, under “International Class 009,” which covers computer software and hardware, was granted in 2002 by the United States Patent and Trademark Office (USPTO). Since the term “data” is considered descriptive by USPTO, Specht’s lawyer argues that Specht has a claim to the one-word term Android with respect to computer software.
Google, on the other hand, applied to obtain a trademark for “Android”, under “International Class 009”, in October 2007. The USPTO rejected the application because of similarity to Specht’s mark. Google challenged the decision. The challenge was rejected. Since the USPTO rejection does not prevent Google from using the trademark, Google ignored the decisions. Without obtaining the trademark for “Android”, in April 2008, Google launched its open-source mobile OS Android.
So what happened? Did Google forget its own motto, “Don’t be evil”?
In evaluating whether marks are confusingly similar, US courts consider various factors, reflecting marketplace realities, such as “the differences between the marks, other similar marks in the marketplace, price points, channels of trade, other indicia used with the marks, the underlying goods or services, and sophistication of the customer”.
The above factors, will most likely work out in favour of Google since consumers can probably distinguish between Google and Specht’s small firm. In addition, Google’s Android mobile OS is significantly different than Specht’s e-commerce software.
Furthermore, it seems that Google believed that trademark use was abandoned since Specht’s company was dissolved in 2004 and did not have a functioning website for the past six or seven years. Under US laws a mark has been, prima facie, abandoned if its use has been discontinued for three consecutive years and there is no intent to use the mark. To avoid abandonment, Specht needs to show that he still intended to use the Android trademark.
According to Specht’s lawyer, “[Specht] put a lot of thought into that name, Android. And he felt Google is taking that away from him.” Specht’s lawyer claims “Google is hurting his clients business by making his software look like a copycat”.
Most likely this case, like the dispute between Apple and Cisco over the iPhone’s name, will be settled since otherwise Google will be expecting a long and complex legal battle, which may be very costly. In addition, it would be too expensive for Google to stop using the “Android” trademark, because of the gained popularity of “Android” phones.
One Response
It is safe to assume that Google knew that it was going to get itself in an infringement suit by ignoring the USPTO rejection of its trade-mark application and by using a potentially ‘confusingly similar’ trade-mark as Specht.
While it appears to be valid for Google to conclude that the Specht trade-mark is no longer in use by virtue of a non-functioning website and a dissolved company, the rejection of the trade-mark application in October 2007 negates that conclusion to some extent. For Google to go ahead and still launch its OS with the same name goes on to show the worth of the USPTO position for big pocketed businesses.
Unfortunately, the power with USPTO is limited to the registration process only. It cannot regulate the actual use of conflicting marks in the marketplace, or guarantee a victory in litigation to the rightfully registered mark.
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