06/29/2011
Isys Can't Stop Google From Using 'Chromebook' Mark (Law360)
By Ben James
The Utah federal judge overseeing Isys Technologies Inc.'s trademark infringement suit against Google Inc. denied Isys' motion Tuesday that sought to stop Google and its co-defendants from using the "Chromebook" mark.
U.S. District Judge Clark Waddoups signed an order denying Isys' bid for a temporary restraining order and preliminary injunction that asked the court to prevent irreparable damage to the plaintiff's trademark rights by barring the defendants from advertising, promoting and using the "Chromebook" mark.
Intellectual property management company Isys, which owns the mark for "ChromiumPC" for use on computer hardware, filed suit on June 6 against Google, Amazon.com Inc., Best Buy Co. Inc. Acer America Corp. and Samsung Electronics USA Inc., claiming that the use of the "Chromebook" mark by any of the defendants in connection with computer hardware constitutes trademark infringement.
"Google's use of the Chromebook mark is likely to cause reverse confusion and false association between Isys and Google," the motion said. "Google's use of the Chromebook mark, combined with its ability to completely saturate a market with a trademark similar to Isys' mark will irreparably damage Isys' rights and goodwill in its ChromiumPC mark."
The motion, filed the same day as the complaint, also said that Google was poised to launch a new computer system that would be sold under the name Chromebook on June 15. Chromebooks are now available through Amazon and at Best Buy.
Google has teamed up with hardware giants Samsung and Acer, and distribution giants Best Buy and Amazon, Isys said in a memorandum supporting its motion.
Isys subsidiary Xi3 Corp. announced its ChromiumPC modular computer on May 20, which it billed as the first desktop computer designed to run Google's Chrome operating system. General availability for the product was expected in the second half of 2011, Xi3 said.
However, neither Isys' original pleadings nor any declarations it had submitted stated that Isys had ever sold a product bearing the ChromiumPC mark, which would be necessary to establish trademark rights in that term, Google told the court in a memorandum opposing the motion.
A June 2 article on Xi3's website suggests that not only has Isys not sold any ChromiumPC computers, the ChromiumPC is not even fully developed yet, according to Google. Isys never asked Google for a license to use the Chrome OS software, Google added.
But Isys says it has been promoting the ChromiumPC computer since November 2009.
Isys' complaint alleges that Google has delayed Isys' application for the ChromiumPC trademark, filing unnecessary extensions until Google publicly launched its new hardware products in May. Google then told Isys to cease and desist using its own ChromiumPC trademark, and abandon its application, according to the plaintiff.
On May 11, Google announced the launch of its Chromebook PC products and also hinted at using "Chromebox" for a desktop PC, and it appears that the Chromebox PC is being prepared for sale, Isys says.
While Isys' application approval was delayed, Google ditched the original name for its products, Speedbook, for Chromebook, according to Isys.
The move allowed Google to launch its products with the "Chrome" mark, "confusing the public into believing that Google is the first to use a 'Chrome' mark in connection with computer hardware PC products," the complaint said.
While the project to develop Google's OS in 2008 was named Chromium, Isys argues that Google gave up trademark rights by failing to control the open source software developed by third parties under the Chromium name.
Todd Zenger of Kirton & McConkie PC, who represents Isys, declined to comment Wednesday. Attorneys for the defendants did not immediately respond to requests for comment about the case.
Isys is represented by Todd E. Zenger, Dax D. Anderson and Joshua S. Rupp of Kirton & McConkie PC.
The defendants are represented by
Peter Willsey and
Brendan Hughes of Cooley LLP, and Roger Myers, Thomas Rossa, Robert Stolebarger and Craig Buschmann of Holme Roberts & Owen LLP.
The case is Isys Technologies Inc. v. Google Inc. et al., case number 2:11-cv-00507, in the U.S. District Court for the District of Utah.
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