Before Google came around, the only place you were likely to hear the word “android” was at a sci-fi convention. But the term has become popularized since Google branded its smartphone operating system ANDROID. Commercials and advertisements for the newest smartphones promote devices offering the latest version of Android along with a host of other features. Due to the popularity of the operating system, Android has become somewhat of a buzzword. But as it turns out, geeks and nerds weren’t the only ones using the term Android before Google and now Google will need to consult its trademark attorneys because it is facing a lawsuit for trademark infringement.
Oko International Co. is the owner of the U.S. Trademark Registration Nos. 3,467,615 and 3,729,178 for the mark ANDROID covering timepieces, watches and watch bands and bracelets in International Class 14. Oko began marketing its watches using the Android mark in 1994 and had its trademark attorney file a trademark application in 2007. In 2008, Oko was granted a trademark registration for the Android mark.
Oko’s trademark registration does not cover mobile phone operating systems, so one would think Google could avoid a branding fight so long as it does not make any Android branded watches. It is possible for multiple parties to use identical marks so as long as there is not a likelihood of confusion. This usually means the parties concurrently using the same mark are using the mark on very different goods which are sold in different channels of trade. For example, Shell Trademark Management B.V. has a trademark registration for the mark SHELL for “liquefied petroleum gas.” Another company, U.S. Foodservice, Inc., also has a trademark registration for the mark SHELL, but covering “flatware, namely, forks, knives, and spoons.
Why would the trademark attorney for U.S. Foodservice file a trademark application for the mark SHELL knowing that Shell Trademark Management B.V. already owned a trademark registration for the mark SHELL? Because the trademark attorney for U.S. Foodservice would know that there is not a likelihood of confusion between the use of SHELL for petroleum products and cutlery. In other words, a consumer viewing SHELL branded cutlery is not likely to think that it came from the same source as SHELL branded liquefied petroleum gas, or vice versa. So Oko and Google may coexist as registered trademark owners for the Android mark so long as there isn’t sufficient overlap between the goods and services they offer.
So why did Oko have its trademark attorneys file a lawsuit against Google for trademark infringement? Although speculation has recently increased that Google might be entering the watch market, the accused product identified in the lawsuit is actually a watch manufactured by Modify Watches. Modify Watches are offered for sale on Google’s online store under the name Android. Oko is seeking monetary damages for the watches sold and an injunction to remove the watches from the Google Store. Oko may also be trying to send a message to Google not to use the Android brand if and when Google decides to enter the watch market as speculated. Oko is a relatively small company, but their trademark attorneys do not seem to fear Google. With a registered trademark in their arsenal and priority apparently dating back to 1994, Oko seems to be in a good position.