October 12, 2016
Originally posted 2018-11-19 11:20:27
By Sindy Wenjin Ding | amdlawgroup.com
Are you a user of “Hangouts” on your smartphone? Google is having trouble to keep using “Hangouts” as the name of its newly launched video-focused social media app.
A California-based company, Hanginout, Inc. filed a lawsuit against Google, Inc. in late November 2013, claiming that Google, Inc. has infringed its trademark for its video-focused social media app. The smaller company located in Carlsbad claims that the first use of “Hanginout” in commerce at least as early as June 6, 2012, before Google began use of “Hangouts.” In the complaint, it demands that Google immediately stop use of “Hangouts” and that the court awards lost profits and imposes punitive damages.
According to the registration records on the United States Patent and Trademark Office (USPTO), Hanginout, Inc. filed its trademark application for “Hanginout” with in July 2012. The application particularly identified its goods/serves as “Computer application software for mobile devices in the field of telecommunications and social networking services” as well as “providing an online community forum for users to share information, photos, audio and video content to engage in social networking”, which are covered under international class 038.
Google filed two trademark applications respectively for “Hangouts” and “Google+ Hangouts” in April of 2013, categorizing the goods and services that “Hangouts” provides into international classes 009 (Downloadable software for publishing and sharing digital media and information via global computer and communication network), 038 (telecommunications services), 041 (entertainment services) and 042 (Providing temporary use of on-line non-downloadable software for publishing and sharing digital media and information via global computer and communication networks). It actually essentially covers the same goods and services as the “Hanginout”, both providing multimedia broadcasting services for videos and instant messaging.
USPTO issued Google’s trademark application a suspension letter in July 2013, claiming that a likelihood of confusion with the registered mark (“Hanginout”) presents a bar to registration of applicant’s mark. Hanginout, Inc. claimed in its complaint that “Google’s Hangouts mark is ‘nearly identical’ to its own in both appearance and sound. The company also accused Google of causing confusion in the marketplace.
It is going to be very interesting to keep an eye on the further moves of the court and both parties. This trademark infringement lawsuit brought the IP scrambles between a big guy and a small guy to the front. Intellectual property rights particularly needs a fair marketplace and healthy competition environment, especially for small players on the stage. The philosophy is simple in this kind of scrambles; originality and good faith always go to the top of priorities. In a pragmatic way, court may refine the dispute back on the likelihood of confusion. A bigger challenge is not to make a fuss about the similarity from appearance any more, but to look at a big picture, including the influence of social media in contemporary society and the general acceptance of practicability of the goods/serves per se. The scrambles of IPR initiated by smaller guys may also raise issues of enterprise ethics as a direct result.