August 13, 2015

Alphabet Soup; Annoyingly, but not Infringingly, Similar?

by Guest Blogger

Alphabet Google Bmw

GMW and Boogle got tangled up this week over trademarks, kind of. As you've likely heard, Google reorganized itself to create a holding company called Alphabet. As reported in the NYTimes, TechCrunch, and Business Insider, BMW has a subsidiary (that you had never heard of) also called Alphabet. From there, came a lot of hype about possible trademark infringement by Google.

Let's do a quick refresher on the requirements for trademark infringement. Infringement requires:

(1) Any person who shall, without the consent of the registrantâ (a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; ... shall be liable in a civil action by the registrant for the remedies hereinafter provided.

The mark owner must demonstrate that (1) it has a valid and legally protectable mark; (2) it owns the mark; and (3) the defendant's use of the mark to identify goods or services causes a likelihood of confusion.

Let's run it through. Does BMW (Alphabet) have a protectable mark? Note, the Lanham Act is only only valid in the U.S., so we look to see if BMW's Alphabet has a protectable interest in the Alphabet mark in the U.S. I didn't see a mark registered in the U.S. related to BMW's Alphabet business, which is automobile fleet management services. A quick search of the Alphabet website has no indication that this BMW subsidiary operates in the U.S. at all. So, while BMW's Alphabet may have a protectable mark outside the U.S., without use or registration in the U.S., it would not own the mark in the U.S. Next, Google's use of Alphabet must cause a likelihood of confusion in the marketplace.

The factors for likelihood of confusion are (see jury instructions in 9th circuit here):

the similarity in the overall impression created by the two marks (including the marks' look, phonetic similarities, and underlying meanings);

the similarities of the goods and services involved (including an examination of the marketing channels for the goods);

the strength of the plaintiff's mark;

any evidence of actual confusion by consumers;

the intent of the defendant in adopting its mark;

the physical proximity of the goods in the retail marketplace;

the degree of care likely to be exercised by the consumer; and

the likelihood of expansion of the product lines.

Typically, the first two elements are the most important. Here, the marks are identical (both Alphabet). However, BMW's Alphabet provides automobile fleet management services while Google's provides, well nothing yet. It appears to be destined to be a holding company, which is about as close to automobile management as Delta Faucets are to Delta Airlines, meaning they can live in peace.

This seems to be entertaining in the U.S., but that is about it. The more interesting question is about an investment fund called Alphabet Funds reported by NYTimes. I couldn't find much information about it online, so I can't run it through the steps. All I could find was a few vague references that it was managed by Saiers Capital and is an investment fund of some kind. Even if the Alphabet mark is also being used by Saiers Capital, there is still a question of whether an investment fund (customers being investors) would cause confusion in the marketplace with a holding company (that may not have customers, really).

Don't get me wrong, it sucks to have someone pick your name. Sometimes, it's just annoying though and not particularly confusing.

Good luck out there.