Thursday, April 26, 2007

Fame of "GOOGLE" Blows Away "BLOGLE" in TTAB 2(d) Summary Judgment

Despite obvious differences in the marks, the Board granted summary judgment to Google, Inc. in its Section 2(d) opposition to registration of the mark BLOGLE (Stylized) for "computer software for searching, compiling, indexing and organizing information." The Board found that mark confusingly similar to the registered and famous mark GOOGLE for search engine software and services. Google, Inc. v. Pivot Design, Inc., Opposition No. 91171124 (April 20, 2007) [not precedential].

The Board first turned to the "fame" factor, since fame plays a "dominant role" in its du Pont analysis. Opposer Google's proofs were staggering: in 2006, the GOOGLE website received more than 300 million visitors per day and the company's revenues grew from $400 million in 2002 to $7.3 billion in 2006. Surveys showed that GOOGLE and were among the top five leading brands worldwide from 2001-2005.

Opposer submitted two online dictionary entries for GOOGLE, which list the term as a "trademark" and a "proprietary name." Moreover, the entry for GOOGLE in the 2006 edition of The American Heritage Dictionary of the English Language reads:

"Google - A trademark used for an Internet search engine. This trademark often occurs in print as a verb, sometimes in lowercase: 'A high school English teacher ... recently Googled a phrase in one student's paper and found it had been taken from a sample essay of an online editing service.'"

There was no genuine issue of material fact regarding the fame of the GOOGLE mark. The Board noted that "[t]he Lanham Act's tolerance for similarity between competing marks varies inversely with the fame of the prior mark." Moreover, when the goods are identical, the degree of similarity between marks necessary to support a finding of likely confusion declines.

Here, Opposer's goods "encompass applicant's goods and opposer's services are closely related to applicant's goods." In fact, Applicant did not dispute this relatedness.

Applicant Pivot's argued that the differences in the marks create a genuine issue of material fact that precluded summary judgment. Not so, said the Board.

It pointed out that each mark contains six letters, the last four being identical. Each mark has two syllables having a similar cadence.

"Importantly, the connotation of applicant's mark includes the word 'blog.' A 'blog' is defined as an abbreviation for 'weblog,' which is further defined as 'a website that displays in chronological order the postings by one or more individuals and usually has links to comments on specific postings.'" [Gee, I never thought of it that way! - ed.]

Thus the impression of applicant's mark is that of a "search engine for blogs." In light of their use on legally-identical goods, the marks have a "similar overall commercial impression."

Furthermore, the manner of use of the two marks adds to the overall similarity of their commercial impressions. Pivot's mark appears in its specimen of use in two colors, orange and blue. [nice! - ed.]

Google's mark, as shown on one of its specimens of use, appears in red, blue, green, and yellow. "The use of colored letters in the parties' marks as well as the similarities in their stylizations enhances the inherently-similar commercial impressions made by the marks."

The Board found "no genuine issue of material fact that the marks are confusingly similar."

Weighing the pertinent factors, and finding no genuine and material factual dispute, the Board granted Google's summary judgment motion.

TTABlog comment: If you had been thinking that use of "google" as a verb might be bad for the GOOGLE trademark, perhaps you should think again!

Text Copyright John L. Welch 2007.


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