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April 7 --A technology company that used the “Android Data” mark during the dot-com boom in the 1990s conclusively abandoned the mark when it ceased operating in 2002 and never successfully reclaimed the mark before Google Inc. launched its Android operating system in 2007, the U.S. Court of Appeals for the Seventh Circuit held April 4.
The appeals court accordingly affirmed a grant of summary judgment in Google's favor on claims that its Android operating system for mobile phones infringed the Android Data mark. The Android Data mark was “permanently abandoned” by 2007 and so it had returned to the public domain before Google began using its own Android mark, the court held.
The court also rejected the plaintiff's argument that it had reclaimed the mark by, among other things, sending out a mass email in December 2007 in which it used the Android Data mark in an attempt to solicit business. For one thing, that action took place only after Google had begun using the mark and so at that point Google was the senior owner of the “Android” mark. Moreover, these “efforts were isolated and not sustained; sporadic attempts to solicit business are not a 'use in commerce' meriting the protection of the Lanham Act,” the court said.
Erich Specht founded Android Data Corporation in the 1990s when the dot-com era was at its height. In 2002, the Patent and Trademark Office issued a registration for the Android Data mark for use with “Computer e-commerce software to allow users to perform electronic business transactions via a global computer network.” However, the company ceased operating that same year, and Specht transferred the rights to the mark to another of his wholly owned companies, Android Dungeon Inc.
In December 2007, Specht attempted to revive the mark by sending out a mass email and by attempting to license his software suite. Neither effort revived Specht's business.
Google launched its Android operating system in November 2007 after purchasing Android Inc. in 2005. Google sought a registration for the Android mark but the Patent and Trademark Office denied the application on the grounds that it would result in confusion with Specht's registration.
Specht filed a complaint against Google and the founders of Android Inc. asserting Lanham Act claims of trademark infringement and unfair competition. The district court dismissed the founders of Android Inc. from the case and then granted Google summary judgment of noninfringement.
The Seventh Circuit noted that Specht's appeal essentially rested on three relevant dates: when he abandoned the Android Data mark, when Google began using its mark and when--if ever--Specht reclaimed the Android Data mark.
“With respect to Specht's discontinued use of the mark, the evidence is conclusive that Specht ceased using the Android Data mark at the end of 2002,” Judge Ilana Diamond Rovner said. In so holding, the court determined that Specht's attempt to sell the company's assets in 2003 and 2004 did not amount to use of the mark in commerce in a manner that would negate the abandonment finding.
Likewise, evidence that the Android Data website operated until 2005 also did not demonstrate bona fide use in commerce beyond 2002, the court said. Indeed, “Specht did not identify any goods or services [Android Data Corp.] could have provided through or in connection with the website after 2002” and thus the website did not constitute a use of the mark in commerce, the court said. After rejecting Specht's argument that the marketing e-mail he sent in 2007 was a use in commerce, the Seventh Circuit affirmed that the Android Data mark was abandoned in 2002.
Turning to the second relevant date, the court said that it was undisputed that Google began using the Android mark in commerce in 2007. Specht did not refute this finding but rather argued that Google's decision to releases its operating system to mobile phone companies for free amounted to “naked licensing.”
Even if this was the case it would be of not help to Specht because “naked licensing is an argument about Google's rights against licensees, and licensees are not an issue in this case,” the court said.
The court finally addressed Specht's argument that he reclaimed the mark in 2007. The court had already dismissed Specht's argument that his December 2007 e-mail constituted use of the mark in commerce. Another problem with that argument, however, is that:
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.
The Seventh Circuit accordingly affirmed the district court's summary judgment ruling and it also affirmed an order requiring Specht's registration to be cancelled.
Judges Diane S. Sykes and John Daniel Tinder joined the opinion.
Google was represented by Herbert H. Finn of Greenberg Traurig LLP, Chicago. Specth was represented by Martin J. Murphy, Chicago.
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