Enter to open, tab to navigate, enter to select
Abandoned Android Mark Paves Way for Google to Become Senior User: Seventh Circuit
Practical Law Legal Update 9-565-5527 (Approx. 4 pages)
Abandoned Android Mark Paves Way for Google to Become Senior User: Seventh Circuit
by Practical Law Intellectual Property & Technology
| Published on 18 Apr 2014 • USA (National/Federal) |
In Specht v. Google Inc., the US Court of Appeals for the Seventh Circuit affirmed the district court's grant of summary judgment holding that the plaintiffs-appellants had abandoned the ANDROID DATA mark.
On April 4, 2014, the US Court of Appeals for the Seventh Circuit issued an opinion in Specht v. Google Inc., affirming the US District Court for the Northern District of Illinois's grant of summary judgment to Google holding that Erich Specht and his wholly-owned companies (collectively, Specht) had abandoned the registered ANDROID DATA trademark (No. 11-3317, (7th Cir. April 4, 2014)).
In 1998, Specht founded the Android Data Corporation (ADC). In 2000, ADC applied to register the ANDROID DATA mark with the USPTO and received a federal registration in 2002. However, ADC soon ceased operating and Specht transferred the company's rights in the mark to another wholly-owned company, The Android's Dungeon Incorporated (ADI), by the end of that year. After 2002 Specht's business activities and use of the mark were sporadic and limited to:
- Hosting ADC's website through 2005, when Specht let the registration for the company's URL (androiddata.com) lapse.
- Passing out business cards in 2005 that bore the ANDROID DATA mark, but without clear evidence of how many were distributed, to whom, for what purpose and to what, if any, effect.
- Isolated later attempts to resume use of the ANDROID DATA trademark in:
- a December 2007 mass mailing promoting Specht's software;
- a February 2008 attempt to license software to a single licensee; and
- the April 2009 resurrection of ADC's website under a revised URL, android-data.com.
During this period, in 2005 Google purchased Android, Inc., a corporation not affiliated with Specht or his companies that was then developing an early version of the ANDROID smart phone operating system. Two years later, but before Specht's December 2007 attempt to revive his use of ANDROID DATA, in November 2007 Google released a public beta version of its ANDROID software. After its release of the beta version of the ANDROID software, Google continuously used the ANDROID mark.
Specht sued Google for infringement of the ANDROID DATA mark. Google counterclaimed for a declaration that Specht had abandoned its ANDROID DATA trademark and seeking cancellation of the mark. After discovery, Google moved for summary judgment dismissing Specht's action and granting Google's counterclaims. The district court granted Google's motion, finding:
- Specht had abandoned the mark in 2002.
- Specht's sporadic use of the mark after 2002 did not constitute continued use or intent to resume use of the mark.
- Because Specht had forfeited his rights to the mark, his claims failed as a matter of law.
On appeal, the Seventh Circuit affirmed the district court's grant of summary judgment and order canceling Specht's registration of ANDROID DATA, reasoning that:
- Under Section 45 of the Lanham Act (15 U.S.C. § 1127):
- a trademark is abandoned if its “use in commerce” has been discontinued with no intent to resume use; and
- three consecutive years of non-use is prima facie evidence of abandonment.
- To rebut this prima facie showing of abandonment, Specht was required to adduce evidence:
- excusing its nonuse of the trademark; or
- that during the three-year non-use period it had formed an intent to resume use of the trademark in the sale of goods or performance of services.
- Specht's sporadic use of ANDROID DATA after 2002 was insufficient to demonstrate an intent to resume use of this mark.
- Based on the three-year statutory abandonment period, it was clear by the end of 2005 that Specht had abandoned the ANDROID DATA trademark in 2002.
In particular, the Seventh Circuit ruled that Specht's evidence of the following activities during the relevant 2002-2005 period fell short of the showing needed to rebut Google's prima facie showing that Specht had abandoned the ANDROID DATA mark:
- Specht's attempted sale of his business in 2003 and 2004, which, the court concluded, was not a use of the business's mark in commerce because it represented an effort to sell business assets rather than to sell goods or services under the ANDROID DATA mark.
- Specht's continued use of the trademark on the ADC website (androiddata.com), which, while made during the relevant period (until 2005), similarly failed to establish the required use in commerce because Specht was unable to show that this use was in connection with any sale of goods or services.
The court then:
- Noted that the evidence that Google first used the ANDROID mark in commerce in November 2007 was undisputed.
- Ruled that, by that time, Specht had long abandoned the ANDROID DATA trademark.
- Agreed with the district court's determination that, with its adoption of ANDROID, Google became the mark's senior user.
- Ruled that Google's exclusive trademark rights in ANDROID had become protectable by virtue of its status as senior user and its subsequent uninterrupted and continuous use of the mark.
- Rejected Specht's argument that he either resumed using or developed an intent to resume using the ANDROID DATA trademark in December 2007, when Sprecht used the mark in a mass mailing, because he had by then permanently abandoned, and could not reclaim, the mark.
The Seventh Circuit's holding in Specht v. Google Inc. is notable for providing a virtual blueprint of errors for trademark owners to avoid if they wish to retain exclusive rights in their marks.
Update: On December 1, 2014, the US Supreme Court denied a petition for certiorari filed by Specht ( (Dec. 1, 2014)).