Bloomberg Law®, an integrated legal research and business intelligence solution, combines trusted news and analysis with cutting-edge technology to provide legal professionals tools to be...
Jennifer Gaeta | Bloomberg Law Groupion, LLC v. Groupon, Inc., No. 11-CV-00870, 2011 BL 301435 (N.D. Cal. Nov. 28, 2011) The U.S. District Court for the Northern District of California denied Groupion, LLC's preliminary injunction motion against Groupon, Inc., the popular online coupon site, in a trademark dispute. The court further denied Groupion's motion for summary judgment for cancellation of Groupon's trademark registration.
GROUPION and GROUPON Marks DissimilarPutting the issue of priority aside, the court determined that Groupion, a company that develops customer service software, was unlikely to succeed on the issue of confusion by application of the likelihood of confusion factors set forth in GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1205 (9th Cir. 1999). The court noted that the similarity of the marks is the critical question in the analysis and that the likelihood of confusion is greater where the similarity of the marks is greater. "Despite the similarity in the spellings of the two words, the Court finds that the marks, when viewed in their entirety and as they appear in the marketplace, are dissimilar." Groupion at 4. The court explained that Groupion: (1) displays its marks using two different colors with the "group" component in black and the "ion" in green, (2) the "G" is the only capitalized letter, and (3) the letters are outlined in white and are on a grey background. The mark also has a tagline "Business Groupware and CRM for the Cloud." Id. The GROUPON mark, on the other hand, is all capitalized, and the letters are white on a black background. There is no tagline. The marks also have a different number of syllables. The court further explained that the GROUPON mark was formed by combining the words "group" and "coupon" whereas the GROUPION mark was formed from combining "groupware" with "companion." The court, therefore, found that the similarity factor weighed against finding a likelihood of confusion.
Products Were UnrelatedDiscussing the products, Groupion provides a web-based service and CRM platform, develops customer relations software, and provides a system for merchants to track their customers. Groupon promotes daily deals connecting merchants with consumers. The deals are not effective, however, until a certain, designated number of consumers buy into the deal. "Groupon utilizes 'tipping point' technology. The deals offered are not effective, and customers are not charged, unless the minimum number selected by the merchant purchase the deal." Groupion at 5. Accordingly, "[t]he parties' products are used for different functions and purposes, and are purchased by different classes of consumers. Therefore, the Court finds that Groupon's and Groupion's goods and services are not related." Id. at 6. With regard to the marketing channels, Groupion argued that both products are available on the Internet. The court explained, however, that in today's marketplace, the fact that products or services are available on the Internet is ubiquitous, and does not shed light on whether there would be a likelihood of confusion.
Remaining Factors Did Not Support ConfusionOn the issue of strength, the court determined that regardless of where the GROUPION mark falls on the inherent distinctiveness spectrum, there was no evidence of the commercial strength of the mark. Thus, this consideration weighed against finding confusion. On intent, the court noted that the GROUPION mark was not registered when Groupon chose its mark. Moreover, given the differences in the mark, the court found that Groupon's refusal to stop using the mark after receiving a cease and desist letter did not indicate bad faith. As to the remaining factors, the court either found them neutral or weighing against confusion, concluding that Groupion did not show a likelihood of success on the merits as to a likelihood of confusion. The court also stated that Groupion did not show irreparable harm, delayed in seeking preliminary injunctive relief and, therefore, denied injunctive relief. Because of its failure to show confusion, the court also found that it was not entitled to summary judgment on its infringement claim and that there were questions of fact as to Groupion's cancellation claim.
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to firstname.lastname@example.org.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to email@example.com.
Put me on standing order
Notify me when new releases are available (no standing order will be created)