Abandonment of Android Trademark Makes Google the Senior User

After the owner of a registration for the “Android Data” trademark alleged that Google infringed the mark, the Seventh Circuit has affirmed the district court's entry of summary judgment, based on a finding that the "Android Data" mark had been abandoned.  Specht v. Google, Inc., No. 11-3317 (7th Cir. April 4, 2014).

Erich Specht's application "to register the trademark “Android Data” with the United States Patent and Trademark Office . . . was approved in 2002."  However, at the end of 2002, Android Data Corporation (ADC), to which the mark was assigned, ceased operations.  In 2003, Specht unsuccessfully attempted to find a buyer for ADC's assets.

In December 2007, Specht included the "Android Data" mark in a mass mailing marketing software.  He made no sales. Specht's next use of the mark was in April 2009, "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."  Specht had "also assigned the Android Data mark to ADI [The Android’s Dungeon, Incorporated], retroactive to the December 2002 asset transfer."

Google released a public beta version of its Android operating system in November 2007, a month before Specht's mass mailing.  Google has been using the mark continuously ever since.  However, when "Google tried in November 2007 to register 'Android' as its own trademark, . . . the Patent and Trademark Office denied that application and Google’s subsequent appeal, citing the likelihood of confusion with Specht’s Android Data mark."

To counter Google's motion for summary judgment, Specht attempted to introduce screenshots alleged to be "from webpages of Specht’s former clients from 2005, bearing the Android Data mark."  However, the district court excluded this evidence because Specht provided no affidavit or testimony as to the reliability of the internet archive service from which the screenshots were taken.  The Seventh Circuit agreed that the district court was reasonable not to rely simply on the memory of witnesses proffered by Specht as to what the websites contained in 2005.

The Seventh Circuit also agreed that "the 'Android Data' trademark was abandoned after 2002."  After 2002, there was no evidence that Specht used the mark, or intended to resume use, until December 2007.  Alleged attempts to sell business assets in 2003 and 2004, including the mark, did not constitute a use of the mark in commerce.  Further, mere operation of ADC's website in 2005, including display of the mark, was not a use in commerce because "Specht did not identify any goods or services ADC could have provided through or in connection with the website after 2002."  Moreover, Specht's "two sales efforts in 2007 (the mass mailing and his failed bid to license software to a healthcare firm)" were "isolated and not sustained; sporadic attempts to solicit business are not a 'use in commerce' meriting the protection of the Lanham Act."

Specht conceded that Google first used the Android mark in commerce in November 2007.  However, Specht argued that Google had given a "naked license" by releasing Android "without retaining control over how developers or mobilephone companies like T-Mobile could use the software."  The court stated that this argument "presuppose[d] that Google had an enforceable right to the Android mark, a position that undercuts Specht’s claim to be the holder of that right."  Moreover, "an argument about naked licensing is an argument about Google’s rights against licensees, and licensees are not an issue in this case."

Setting aside the flaws in Specht's naked licensing argument, that argument ignored "the district court’s sound conclusion that Google became the senior user of the Android mark when it used the mark in commerce in November 2007."  The mark had been abandoned and returned to the public domain.  Google was first to adopt the abandoned mark, and has continuously and uniterruptedly used it since November 2007.  "That," said the court, "is enough to warrant trademark protection."  Specht's use in December 2007 was too late.