2
May/09

Text of Complaint in Android Data v Google Android


Plaintiff filed for ANDROID DATA and registered it in 2002. Google filed for ANDROID covering software and hardware. I’m assuming it filed that broadly for Paris Convention reasons. It later narrwed its identification to cover more closely the mobile communications operating system that it distributes under the ANDORID mark.
Plaintiff’s prior reg for ANDROID DATA covering ecommerce software was cited against Google. Evidence suggested that plaintiff was no longer using the mark and Google choose to wait it out as Plaintiff’s registration was in the Section 8 grace period without having filed (a Section 8 affidavit of continued use must be filed by the end of the sixth year of registration followed by a six month grace period).
However, alas, plaintiff has reappeared and filed a Section 8 (note – no Section 15) on the last day of the grace period, April 20, and eight days later sued Google and 47 other corporations that are using the ANDROID open source system.
Practice pointer: In attempting to overcome the citation, Google argued that prior registrant was dissolved. As the examining attorney correctly noted, the PTO will not remove a 2(D) citation on that basis if the Section 8 period has not expired (it will suspend the application if the period has lapsed but the registration has not yet been cancelled).
A common strategy in a situation where the prior registrant has presumably abandoned its mark but is not close to cancellation, is for applicant to file a petition to cancel, in the hopes that the dissolved prior registrant will default. The filing of a petition ‘cuts off’ the ability of the registrant’s ‘resumed use to cure the defect.’ In other words, if the prior registrant wishes to maintain its registration (if for no other reason than to sell out to the junior user), it can’t simply rush to resume use – it will likely have to prove that it hasn’t previously abandoned the mark. You may want to go to the Wayback Machine and check out android-data.com.
On the other hand. Google, being Google, attracts trouble. It may have chosen to wait out prior registrant’s Section 8 grace period without petitioning to cancel in the hopes of letting sleeping dissolved dogs lie.
Bonus points: Here is the Android SDK license. The reps and warranties and all that begin at para. 10.
Complaint Google Android