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Trademark Abandonment: Android v. Android

How long do trademarks last? They can last forever, in theory. Bass beer’s distinctive red triangle label was the UK’s first registered trademark back in 1876. It is UK trademark registration Number 00000000001.

However, trademark rights disappear if they’re not in continuous use. Use it or lose it. Loss of rights in a trademark is referred to as “abandonment.”

I’ve written about trademark abandonment before, but a recent high-profile case involving Google’s Android mark has brought the issue to the public’s attention yet again.

Click here to read my post from last year, “When Has a Trademark Been Abandoned?

The Lanham Act is the federal law that governs trademarks. 15 U.S. Code Section 1127 states, in relevant part:

A mark shall be deemed to be “abandoned”…

(1)When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.

In my 2013 blog post, I wrote:

…the law imposes a high standard for a defendant who asserts a defense of trademark abandonment. The 9th Circuit said, in this case:

To prove abandonment of a mark as a defense to a claim of trademark infringement, a defendant must show that there was: “(1) discontinuance of trademark use and (2) intent not to resume such use.” Electro Source, LLC v. Brandess-Kalt-Aetna Grp., Inc., 458 F.3d 931, 935 (9th Cir. 2006). Even a “single instance of use is sufficient against a claim of abandonment of a mark if such use is made in good faith.” Carter-Wallace, Inc. v. Procter & Gamble Co., 434 F.2d 794, 804 (9th Cir. 1970). All bona fide uses in the ordinary course of business must cease before a mark is deemed abandoned. (Emphasis mine.)

So the defendant must show both discontinuance of use and intent not to resume such use in order to succeed with an abandonment defense.

On to the Android case. Erich Specht started using the trademark ANDROID DATA in 1998. He obtained a USPTO registration for the mark in 2002 for “Computer e-commerce software to allow users to perform electronic business transactions via a global computer network .” However, his business was coming to a close right around that time.

In 2005, Google purchased an unrelated company, Android, Inc. They launched the Android operating system in 2007. Google applied to register their mark ANDROID for “mobile phones; operating system software; software for use in developing, executing, and running other software on mobile devices, computers, computer networks, and global communication networks; computer software development tools; computer software for use in transmitting and receiving data over computer networks and global communication networks; computer software for managing communications and data exchange among and between mobile devices and desktop computers; computer middleware, namely, software that mediates between the operating system of a mobile device and the application software of a mobile device; computer application software for mobile phones .”

The application was rejected due to likelihood of confusion with Specht’s ANDROID DATA registration. Specht then sued Google for trademark infringement, among other claims, which led Google to respond by asking the court to cancel Specht’s registration due to abandonment.

The District (lower) Court found in Google’s favor; Specht appealed. In April, the U.S. Court of Appeals for the Seventh Circuit affirmed the decision, finding Specht had abandoned the mark as of Google’s initial use of the mark in commerce in 2007.

How and when did Specht abandon the mark? From the 7th Circuit opinion:

After 2002, Specht’s business activities were limited. He continued to host ADC’s website a while longer and conducted some hosting services for others. But he let the registration for the company’s URL (androiddata.com) lapse in 2005, at which time he could no longer be reached at his associated email address. Specht passed out business cards in 2005 bearing the Android Data mark, but the record does not disclose how many, to whom, or why.

After Google began using the mark, Specht made a few attempts to make use of the mark:

First, to promote his software suite to catalog companies, Specht sent out a mass mailing in December 2007 with the Android Data mark. These mailings garnered no sales. Second, two months later, Specht attempted to license his software to a healthcare consulting firm, also to no avail. He made no other use of “Android Data” in 2007 or the next year. In April 2009, he used the mark once again when he resurrected his website, albeit with a slightly different URL (android-data.com) because his previous URL had by then been registered by a third party.

 The 7th Circuit noted that the District Court had found:

…the few times Specht used the Android Data mark after 2002 did not demonstrate continued use or intent to resume use of the mark…therefore had forfeited any rights he might have to the mark…

TIP: You can’t just use your purported trademark in any way, shape, or form, and assume that suffices to show continued use. Courts will look for continued use in commerce in connection with the applicable goods and services.

After reviewing the evidence from the District Court, the 7th Circuit found:

…the evidence is conclusive that Specht ceased using the Android Data mark at the end of 2002…Specht replies that, even if he had abandoned the mark after 2002, he either resumed using or developed an intent to resume using the Android Data mark by December 2007, again citing his mass mailing. But by then it was too late. Specht had abandoned the mark by the end of 2002, and more than three years had passed before Google publicized its release of the Android operating system in November 2007. With the mark permanently abandoned by November 2007, Specht could not reclaim it the following month.

So, barring an unlikely successful appeal to the Supreme Court, this means that Specht’s trademark registration will be canceled, and, presumably, that Google’s ANDROID application will finally proceed to registration.

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