Lower Case “i” Stymies Groupion’s Trademark Claim against Groupon

Letters are always getting in the way of social harmony. Remember the Louis Armstrong song, Let's Call the Whole Thing Off:

You like potato and I like potahto

You 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:

You say Groupon and I say Groupion

The "ion" Group vs. The "on" Group

Letter confusion 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 claims.

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." 

It's Just an "i" So What's the Big Deal?

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.

Moreover, despite 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.

(citations omitted)

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