Thursday, June 21, 2012

Test Your TTAB Judge-Ability: Are SOOGLE And GOOGLE Confusingly Similar for Travel Services?

Google, Inc. filed an opposition to registration of the mark SOOGLE for services involving arranging trips and travel, claiming a likelihood of confusion with its registered mark GOOGLE for various goods and services, including travel-related services. Applicant ACPS admitted that GOOGLE is a famous mark, but argued that the two marks are different because SOOGLE is "based on its sound and meaning in Chinese." Moreover, it claimed that its customers are "exclusively from mainland China with little English language ability" and therefore the parties' channels of trade are different. How do you think this came out? Google Inc. v. ACPS Global, Inc., Opposition No. 91198926 (June 11, 2012) [not precedential].

The Board granted Google's motion for summary judgment. It found the GOOGLE mark to be "exceedingly famous." Google's revenue figures were staggering, its website was highly rated, media coverage was significant, and the brand GOOGLE has been deemed the "single most popular brand" in three different years. From 2003 to 2011 its annual revenues grew from $1 billion to more than $17 billion. Of course, as a famous mark, GOOGLE is entitled to a broad scope of protection.

Comparing the marks, the Board found them to be quite similar in look and sound, and it observed that neither GOOGLE nor SOOGLE has any meaning.

As to the goods and services of the parties, Applicant admitted that, as with its SOOGLE services, a customer may obtain travel information and may make reservations using Google's services. "In other words, applicant admits that the parties' services are at the very least related."

Applicant's argument that its customers are exclusively from mainland China was irrelevant, since there is no such restriction in its recitation of services.

Finally, Applicant pointed to the lack of evidence of actual confusion and of bad faith, but the Board observed that neither actual confusion nor bad faith is necessary to establish likelihood of confusion, nor does this lack of evidence raise a genuine issue of material fact that would preclude the granting of a summary judgment motion.

Considering all the relevant factors, the Board found confusion likely and entered summary judgment in favor of Google.

TTABlog comment: I'm going to go out on a limb here and say that I don't think there is a likelihood of confusion. I don't think the marks sound or look alike.

PS: The Board declined to consider Google's dilution claim.

Test Copyright John L. Welch 2012.


At 11:38 AM, Anonymous Anonymous said...

I think the decision is appropriate considering the fame and strength of the GOOGLE mark. I frankly think this applicant had some nerve thinking it could actually register this mark for its services and continue to force the issue in an opposition.

"...Applicant pointed to the lack of evidence of actual confusion and of bad faith..."? Come on, I think arguing that is like inviting the counterargument just to put Google to its proofs.

" claimed that its customers are "exclusively from mainland China with little English language ability and therefore the parties' channels of trade are different..."
- then why is a U.S. registration necessary?

That's probably why Google won this in a summary judgment which we all know is rare at the Board.

At 12:25 PM, Anonymous Gene Bolmarcich, Esq. said...

Let's all us trademark attorneys remove ourselves from the DuPont factors for just a brief moment (there, I knew you could do it...don't you feel, ah forget it). Now, just what kind of confusion is likely here? Do we really believe that consumers will believe that Google would do this to their trademark? Why? Are there other examples of that kind of distortion of trademarks in the marketplace? If not, then why would we think that consumers are predisposed to accepting such a proposition? Is the problem that someone might be so incoherent that she would read "SOOGLE" as "GOOGLE"? Isn't this really a dilution concern over ANY mark that ends in "OOGLE"?


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