Hanging Around Trademark Disputes

by Winthrop & Weinstine, P.A.

When you hang around trademark disputes long enough you start to see patterns, at least, at the ends of the spectrum (or not).

We have spilled much digital ink over allegations of “trademark bullying” — something that does occur, but in the grand scheme of all trademark enforcement matters, the instances of actual bullying and abuse seem to be rare.

At the other end of the spectrum are those also rare but highly publicized trademark cases where David takes on Goliath, and asks for a lot of money, because Goliath has very deep pockets.

The vast majority of trademark disputes, of course, are more garden variety and they fall somewhere in between these two extremes, all the while commanding much less media attention.

Google, aka Goliath, is no stranger to defending trademark and other intellectual property infringement claims. Remember our coverage of the Firefly Digital trademark infringement case brought against Google a few years back over the terms GADGET and WEBSITE GADGET?

If so, you’ll remember that case didn’t go well for Firefly Digital as it used the D-word in explaining and describing its claimed GADGET brand. And the last we heard, summary judgment was granted in Google’s favor on all of Firefly Digital’s claims, and the court further ordered cancellation of the GADGET and WEBSITE GADGET registrations on genericness grounds. The USPTO uploaded the district court’s order into the trademark files last May, yet as of this writing, both registrations are shown to be “live” – if anyone knows why, please share your insights.

In any event, the most recent trademark infringement challenge to Google was filed in federal district court just last week, in fact, the day before Thanksgiving — no doubt, as the Google folks were preparing to hang with family and friends over the holiday. Here is a pdf of the complaint.

In the complaint, Hanginout Inc., a small San Diego-based social media company is asking for a disgorgement of Google’s profits, treble damages, punitive damages, and attorney’s fees, in addition to a permanent injunction forcing Google to stop using HANGOUTS as the name for its Google+ feature that allows users to bring their “conversations to life with photos, emoji, and even group video calls for free.” Hanginout notes that the USPTO appears poised to refuse registration of Google’s HANGOUTS mark once the HANGINOUT registrations issue, assuming for the moment, they actually do issue.

I’ve heard human resource personnel say a second incident of bad behavior establishes a pattern, and I’m no employment lawyer, but if two instances make a pattern, I suspect Google will be looking for one in the recently filed Hanginout trademark suit. And it might just find one.

Surprisingly, this kind of text can be found on Hanginout’s website, less than a week after taking on Goliath: “Auto Responses are little videos you record that make your profile feel like people are really hanginout with you.” Perhaps even more surprising, Hanginout submitted a specimen of use showing this self-inflicted descriptive use of its claimed inherently distinctive mark, three days before Thanksgiving. The USPTO’s trademark application files for the claimed HANGINOUT mark can be found here (word mark) and here (composite word and design mark).

But, it could always be worse, I guess. At least Hanginout describes its logo this way: “The mark consists of a human figure sitting down.”

I was worried the description of the mark might have read: “The mark consists of a human figure hanging out.”

What do you think, how long do you suppose Hangingout will be hanging around the courthouse with Google on this one?

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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