Businesses launching new lines of products or services must be prepared to conduct a review of those products or services, along with their associated marketing plans, against existing IP uses and registrations prior to launch. Failure to do so in the presence of competing IP can prove to be, at best, a costly distraction or, at worst, the end of the business line and the basis for civil penalties. While some very large businesses, like Google, may have the luxury of pursuing marketing plans notwithstanding the presence of competing IP, one wonders whether the search giant’s recent, soon-to-be-costly woes over its use of the “Android” trademark could have been avoided with a modicum of planning prior to launch.

With much hype, Google has been publicizing since late 2007 its “Android” Linux-based software platform for mobile devices, which it is developing in conjunction with a group of several, prominent tech companies (including Broadcom, Intel, LG, Motorola, Qualcomm, Samsung, Sprint, T-Mobile, and Texas Instruments), called the Open Handset Alliance (OHA). On October 31, 2007, Google filed an application with the U.S. Patent & Trademark Office (USPTO) seeking registration of the Android mark in connection with a broad set of goods and services:

mobile phones; operating system software; software for use in developing, executing, and running other software on mobile devices, computers, computer networks, and global communication networks; computer software development tools; computer software for use in transmitting and receiving data over computer networks and global communication networks; computer software for managing communications and data exchange among and between mobile devices and desktop computers; computer middleware, namely, software that mediates between the operating system of a mobile device and the application software of a mobile device; computer application software for mobile phones

However, and unfortunately for Google, more than five years prior to Google’s application, the USPTO had granted to Android Data Corporation, an Illinois software development and Internet application service provider, registration of another mark – “Android Data” – for use in connection with a narrower, but potentially competitive set of services:

Computer e-commerce software to allow users to perform electronic business transactions via a global computer network.

In response to Google’s application, the USPTO issued an Office Action refusing to register the mark based on a likelihood of confusion with the registered mark (for which the USPTO had required the applicant to disclaim any exclusive right to the word “Data” apart from the mark, leaving the word “Android” as the dominant element). Google initially responded to the Office Action by pointing out that “Android Data” appeared to be no longer used in commerce and by showing that Android Data Corporation had been involuntarily dissolved in 2004. However, this sort of collateral attack, while potentially useful in a proceeding to cancel the original registration, generally is unavailing in the USPTO’s likelihood-of-confusion analyses as long as the earlier mark retains its registration status. The USPTO therefore made final its initial refusal in a second Office Action in August 2008. In response, Google drew the examining attorney’s attention to mandatory filings due for the Android Data mark and asked that the examining attorney suspend action on the application and reconsider its decision in light of the outcome of those filings. (The mandatory filings subsequently were submitted to and accepted by the USPTO in late April, 2009, thereby maintaining the registration status for the earlier mark.) Google also filed a notice of appeal with the Trademark Trial and Appeal Board.

However, on April 28, 2009, Erich Specht, principal for Android Data Corporation and for The Android’s Dungeon, Inc., filed a complaint in the U.S. District Court for the Northern District of Illinois, seeking $2 million in civil penalties and injunctive relief against Google, the OHA and various OHA members for willful infringement of its registered mark. Thus, in addition to the costs associated with the handling and appeal of its trademark application at the USPTO, Google now faces the much more significant costs and financial exposure of a federal lawsuit alleging trademark infringement under the Lanham Act. It will be very interesting to see the outcome of this lawsuit and any effect it has on Google’s marketing plans for the Android operating system.

In the meantime, for all businesses that do not have the resources to contend with the sort of legal thicket in which Google now finds itself, this case serves as an excellent reminder of the importance of advance planning from a legal perspective before devoting time and money to the promotion of new goods and services. The costs of working with a knowledgeable attorney to perform early due diligence are much, much less than working with that attorney to work through a lengthy trademark application process and appeal or to defend against a federal lawsuit.