A recent appeals court decision from the Seventh Circuit has ended a small company’s challenge to Google’s ANDROID trademark, underscoring the truth behind the adage oft-repeated by U.S. trademark lawyers: “Use it or lose it.”
Don’t Use It, You WILL Lose It
Our story begins when Google rolled out the beta version of its ANDROID operating system for mobile phones in November 2007. When Google tried to register its ANDROID mark with the U.S. Patent and Trademark Office, the application was denied. Turns out, Android Data Corporation (“AD”), a holdover from the dot-com boom of the 1990s, already owned a U.S. trademark registration for ANDROID DATA, which blocked Google’s application.
There was hope for Google, though: U.S. trademark rights are not dependent on registration, so Google pressed on with its plans for the ANDROID mobile operating system. As a savvy trademark owner, Google would have investigated this “prior user” and discovered that AD was no longer using the ANDROID DATA mark. So Google was ready when AD sued for trademark infringement in 2009. Google counterclaimed for cancellation of AD’s trademark registration on the ground that AD had abandoned its ANDROID DATA mark before Google adopted its ANDROID mark in 2007.
The case turned on AD’s use or non-use of its mark since 2002, when AD ceased operations. If AD abandoned and never resumed use of the mark after 2002, then Google could not have infringed when it adopted its mark in 2007 and the ANDROID DATA mark would be cancelled. (A trademark is abandoned if its “use in commerce” has been discontinued with no intent to resume use. Under the trademark statute, non-use for 3 consecutive years is persuasive evidence of abandonment, subject to the mark owner’s rebuttal evidence demonstrating use, intent to resume use, or circumstances that excuse the non-use.)
Where the Case Against Google Fizzles
AD wasn’t ready to give up, though. AD relied on two pieces of evidence to show it had resumed use during the 3-year period after 2002: attempts in 2003 and 2004 to sell the business’s assets and its website, which operated until 2005. Applying trademark abandonment principles, the court found AD’s evidence wanting because AD sold no goods or services under the ANDROID DATA mark during its efforts to sell the business assets, and the website failed to identify any goods or services offered through or in connection with the website.
AD also submitted evidence of an attempt to generate sales with a mass mailing in December 2007. Because this single mailing resulted in no sales and, according to the Court, was “isolated” and “sporadic,” it also failed as trademark use. Plus, by then it was too late. This December mailing took place two years after the mark was presumed abandoned and one month after Google began using the ANDROID mark. As the first to adopt the abandoned mark, Google became the senior user in November—one month before AD’s mailing.
Having refuted all of AD’s rebuttal evidence, the court concluded that AD had abandoned the ANDROID DATA mark when it first stopped operations in 2002. Once a mark is abandoned, that mark returns to the public domain and is free for others to appropriate. Thus, Google was free to adopt its ANDROID mark in 2007, without threat from AD’s prior use of ANDROID DATA.
3 Keys to Brand Protection
So what’s the take-away for U.S. brand owners? Remember to “use it or lose it!” If you stop using a brand for a period of time, make sure that within the 3-year time period after you cease use, you have evidence of at least one of the following:
- Resumed, proper trademark use of the brand, which must include bona fide sales of goods or services under the mark. Token use as part of a “trademark maintenance program” will not fly—at least not in the United States.
- Intent to resume use in the near-ish future. A vague notion that you may want to revive the brand someday is not enough. Only evidence of “actual and concrete plans” to resume use is acceptable. A business or marketing plan discussing the company’s plans to launch a new campaign under the revived brand is a good example of evidence that might meet this test.
- A valid business reason for the period of non-use. A 13-month hiatus in use of a trademark was excused for one brand owner because the owner demonstrated the reason for the hiatus—a switch to a new edition of the product, which was a literary series.
Nothing Beats Persistent Use
Make efforts to ensure that your valued brands are in continuous use in commerce (i.e., sales of goods or services) so as to maintain trademark rights. This is particularly important when your brand’s trademark use relies on licensee use.
If one of your brands has a history of interrupted use, make sure you really are the prior user before you challenge another’s mark based on that brand. Otherwise, you risk losing not only your U.S. trademark registration, but also any claim you may have had to your common law rights.
If you choose to enforce a brand with a history of interrupted use, stay out of federal court if you can. Fight your battle in the Trademark Office, where an adverse ruling will affect your right to registration only. Your ability to use the brand under common law rights will not be affected unless and until a court finds you have abandoned all rights to the brand. AD learned this the hard way.