San Diego Trademark Attorney® Blog

Results tagged “Google” from San Diego Trademark Attorney® Blog

"Hanginout" Alleges Google's Use of "Hangouts" is a Trademark Infringement

December 11, 2013,

google.jpgSan Diego - A lawsuit filed in late November by San Diego based Hanginout, Inc. claims that Google, Inc. has infringed its trademark for its video-focused social media app. The smaller company located in Carlsbad claims that it was using "Hanginout" before Google began use of "Hangouts." The complaint demands that Google immediately stop use of "Hangouts" and that the court award lost profits and impose punitive damages.

Hanginout, Inc. filed its trademark application for "Hanginout" with the United States Patent and Trademark Office (USPTO) in July 2012, through the company's complaint claims that the brand has been around since 2009. The application covers, among other things, "Computer application software for mobile devices for sharing information, photos, audio and video content" as well as "providing online and telecommunication facilities for real-time and on-demand interaction between and among users of computers, mobile and handheld computers."

In contrast, Google's trademark application for "Hangouts" was filed in April of 2013 and through more expansive, covers essentially the same goods and services as the "Hanginout" Application. According to the lawsuit, which was filed with the U.S. District Court for the Southern District of California, Hanginout is a platform that enables users to build video profiles and send video chat messages to followers. The description of the Google Hangouts app on its website describes how the program allows users to "Turn any Hangout into a live video call with up to 10 friends."

Google's trademark application was suspended upon filing by the USPTO due to Hanginout's previously filed Application. The complaint claims that, "Google's 'Hangouts' trademark is nearly identical to Hanginout's 'Hanginout' trademark in both appearance and sound," and that "Google's infringement of Hanginout's trademarks was willful and with knowledge that ... use of the 'Hangout' trademark would or was likely to cause confusion and deceive others."

The complaint goes on to point out that, "Google has advertised Google's Hangouts to replicate Hanginout's products' capabilities." It also brings to light several examples of what Hanginout describes as intentionally confusing marketing materials. Google has yet to offer any response as to the lawsuit.

Google Fails To Shake Cybersitter AdWords Trademark Infringement Claims

October 25, 2012,

google.jpgSan Diego - Google Inc. cannot slip away from Cybersitter LLC's claims that it aided and abetted a competitor in misusing Cybersitter's trademarked name in advertisements drawing traffic away from Cybersitter's business, a Los Angeles federal judge ruled Wednesday.

Cybersitter, which developed, markets and sells an Internet content-filtering program, sued Google and ContentWatch Inc. over ContentWatch's marketing of its own Internet content-filtering software, Net Nanny, and its use of Google's AdWords paid advertising program.

A portion of Google's revenue comes from displaying sponsors' paid advertisements on its search engine and other websites. In response to keyword searches on Google's search engine, sponsors' paid advertising results, which it calls "sponsored links" are displayed with other search results.

The AdWords program specifically allows ad sponsors to purchase certain keywords that trigger the sponsor's ad whenever a Google user conducts a search through its search engine.

Earlier this year, Cybersitter learned that ContentWatch was running paid ads for Net Nanny through AdWords that included the Cybersitter trademark. When an Internet user would search on Google for Cybersitter or similar terms, ContentWatch's ads with the trademark would be displayed, often as the first result in the user's search, according to the court.

Google has violated federal and California laws by selling the right to use the Cybersitter trademark to ContentWatch, which in turn illegally uses the trademark in its online ads through the AdWords program, Cybersitter alleges. It has also wrongly permitted and encouraged ContentWatch's use of the trademark in its online ads, Cybersitter claims.

Judge Ronald S.W. Lew denied Google's motion to transfer the case to Santa Clara federal court, as well as its motion to dismiss Cybersitter's claims, saying Cybersitter had adequately pled and provided sufficient facts to support its trademark infringement claims.

"In sum, for the state law claims of trademark infringement, contributory infringement, and unfair competition, plaintiff has sufficiently pled the facts necessary to establish defendant's acts as independent torts that are not barred by [Communications Decency Act] immunity," Judge Lew said.

The judge did, however, grant Google's motion to dismiss Cybersitter's claim for unjust enrichment.