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Letters are always getting in the way of social harmony. Remember
the Louis Armstrong song, Let's Call the
Whole Thing Off:
like potato and I like potahto
like tomato and I like tomahto,
Dang letters always causing some kind of disagreement! If Louis
were alive today, he might add another verse on alphabetic disharmony:
say Groupon and I say Groupion
might have been a snappy tune for Louis, but earlier this month, Groupion was
handed a sour note by the Northern District of California. In Groupion, LLC v. Groupon, Inc., 2012
U.S. Dist. LEXIS 65772 (N.D. Cal. May 8, 2012) [enhanced version available to lexis.com subscribers],
Groupon was granted summary judgment on Groupion's trademark infringement
According to the complaint, Groupion:
started in Germany
in 2007, quickly expanding in the same year to the United States, building and
selling a web-based Business Groupware and Customer Relations Management
("CRM") platform (the "Software Portal") which helps companies and project
teams work together and execute different tasks within one integrated working
environment, including coupon management.
Groupion's claim of confusion is pretty obvious, made more so by the company's observation that:
... if one conducts a
search on www.google.com for "Groupion", the results expressly include a
statement: "Did you mean: groupon."
If Google's confused by the letter "i," then what about customers? In
granting Groupon summary judgment, the district court viewed things differently
than the befuddled search engine. Judge Jeffrey S. White stated that the similar spellings
notwithstanding, the marks, when viewed in their entirety and as they appeared
in the marketplace, were dissimilar. Groupion argued that it was significant
that both companies used a similar shade of green on their respective websites
where their marks appeared. However, the appearance of the two websites was not
at issue; rather, it was the companies' respective marks. The district court went
on to say:
Both "groupon "
and "groupion" are made up words. However, they were created by
different words and, thus, imply different meanings. Groupon was formed by
combining the words "group" and "coupon." The United States
Patent and Trademark Office ("PTO"), in categorizing the Groupon mark for search purposes, assigned the pseudo
mark "group coupon" to the Groupon mark. Groupion states that it was
created from the words "groupware" and "companion." The PTO
assigned the pseudo mark "group ion," as two words, presumably
because it believed Groupion means "group" and "ion."
Regardless of which is the accurate meaning of Groupion, neither has the same
as the meaning as Groupon.
the numerous functions provided by Groupion's software, there was no evidence
that the software created a market whereby consumers could purchase
coupons similar to what Groupon provided. And despite the fact that Groupon provided
some consumers information and provided a calendaring program, this small
potential overlap of services did not render Groupon's and Groupion's products relatable to the
point of confusion.
As for the
strength of the mark, the district court held that Groupion failed to submit
any evidence to show that its mark was conceptually
strong. As for commercial strength,
the district court held that:
regardless of where
Groupion's mark falls on the conceptual spectrum, Groupon submits evidence demonstrating the use of
similar marks in the relevant industry as well as the lack of Groupion's
commercial strength in the United States, which significantly undermines the
strength of its mark. The only evidence Groupion submits to demonstrate the
commercial strength of its mark in the United States is a list of customers in
2007, which includes 45 companies with addresses in the United States. However,
2007 is before Groupion started using the mark at issue. Therefore, this
customer list does nothing to show that Groupion's mark has commercial strength
in the United States.
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