When someone needs to find information, the first place people go to is the Google search engine; arguably the biggest search engine in the world. Google is also the owner of the second most visited viewing platform Youtube. Despite this, the engine is no stranger to being caught up in intellectual property disputes or infringement claims, with the most recent case having the potential to cause severe implications for the company’s reputation and future.
The company’s own music speaker, titled the Google Nest, has fallen victim to a trademark dispute. The original trademark application submitted by Google for their ‘Nest’ line of products, including their music speaker, was filed in October of 2020, despite their products featuring under this name since at least 2010. The U.S. Patent and Trademark Office (USPTO) published a registration in July 2021 from Google into the Official Gazette that highlighted their recent application.
Despite Google’s Nest products existing over a decade ago, a Trademark Opposition was launched by key global supplier of architectural, outdoor and decorative lighting fixtures, Louis Poulsen A/S (LP), on August 12th 2021. The opposition filing stated that Google’s trademark application related closely to the LP’s Nest Brand, which was filed for in June 2010.
An absolute ground of refusal under the Trademark Act of 1994, is that the trademark must have distinctive character in order to be successful, however, this is not present between these two companies, as the classes that the goods and services provided by both companies are very similar; something that could result in similar marketing strategies and selling channels. This strengthens LP’s opposition filing and confirms the high possibility of confusion between the two companies’ customers. LP stated in their notice of opposition that it was based on the grounds of priority, with the likelihood of confusion.
The first to hear the LP and Google Nest case will be the Trademark Trial and Appeal Board (TTAB). LP has to submit an answer by September 21 to encourage procedures like pre-trial disclosures and arguments to take place in the dispute. If they fail to answer the trademark opposition, they will likely face a long battle to attempt to keep their ‘Nest’ brand untarnished.
This case could continue through to February 2023, so be sure to keep an eye out on the Reading Room to keep up to date with news on this Infringement dispute.
If you have any questions regarding the topics discussed or would like legal advice for your Trademark or other Intellectual Property, don’t hesitate to get in contact with the team at Lawdit Solicitors today.