Google Inc.v.Pivot Design, Inc.

Trademark Trial and Appeal Board

Apr 20, 2007

No. 91171124 (T.T.A.B. Apr. 20, 2007)

FSW

Mailed: April 20, 2007

Opposition No. 91171124

Google Inc.

v.

Pivot Design, Inc.

Before Quinn, Hairston and Kuhlke,
Administrative Trademark Judges.

By the Board:

Opposer, Google, Inc., has filed an opposition against
registration of the mark BLOGLE (stylized) for “computer
software for searching, compiling, indexing and organizing
information”1 alleging that the mark so resembles opposer’s
previously-used and registered mark GOOGLE,2 which opposer

1 Ser. No. 78664488, filed July 6, 2005.

2 In the notice of opposition, opposer alleged ownership of three
registrations and four pending applications for the mark GOOGLE.
One of the applications has now matured to registration. The
registrations are: Reg. No. 2806075 for the mark GOOGLE for,
inter alia, “providing multiple user access to proprietary
collections of information by means of global computer
information networks,” registered January 20, 2004; Reg. No.
2884502 for the mark GOOGLE for “computer hardware; computer
software for creating indexes of information, indexes of web
sites and indexes of other information resources;” registered
September 14, 2004; Reg. No. 2954071 for the mark GOOGLE for
goods in international classes 9, 11, 12, 16, 18, 21, 25, 28, and
35, registered May 24, 2005; and Reg. No. 3140793 (identified as
Ser. No. 76317811 in the notice of opposition) for the mark
GOOGLE for, inter alia, “computer software for searching,
compiling, indexing and organizing information on computer
networks;” registered September 12, 2006. The applications are
Ser. Nos. 78433507, 78828042, and 78828053.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451 THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Opposition No. 91171124
2
uses in connection with a search engine provided to
consumers for searching the Internet, as to cause confusion,
mistake, or deception. Applicant filed an answer to the
notice of opposition, denying the salient allegations of the
complaint.
This case now comes before the Board for consideration
of opposer’s motion (filed November 22, 2006) for partial
summary judgment on its pleaded claim of likelihood of
confusion, and for consideration of applicant’s motion
(filed October 5, 2006) to amend the filing basis of its
application from Trademark Act Section 1(a) to Section 1(b).
Office records indicate no response was filed to applicant’s
motion to amend. The motion for summary judgment has been
fully briefed.
A motion for summary judgment is a pretrial device,
intended to save the time and expense of a full trial when a
party is able to demonstrate, prior to trial, that there is
no genuine issue of material fact, and that it is entitled
to judgment as a matter of law. See Fed. R. Civ. P. 56(c);
TBMP § 528.01 (2d ed. rev. 2004). To prevail on its motion,
opposer must establish that there is no genuine issue of
material fact in dispute, thus leaving its claim of
likelihood of confusion to be resolved as a matter of law.
See Celotex Corp. v. Catrett, 477 U.S. 317 (1986); Opryland
USA Inc. v. Great American Music Show Inc., 970 F.2d 847, 23
USPQ2d 1471 (Fed. Cir. 1992).
Opposition No. 91171124
3
Opposer has submitted certified copies showing current
status and title of its registrations and applications for
the mark GOOGLE. This proof, in addition to establishing
that there are no genuine issues of material fact regarding
opposer’s standing, removes the issue of priority from this
case. See King Candy Company v. Eunice King's Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108(CCPA 1974).
Accordingly, the focus of our determination is whether
there are any genuine issues of material fact in dispute as
to opposer’s claim of likelihood of confusion. Our
determination is based on an analysis of the probative facts
in evidence that are relevant to the likelihood of confusion
factors set forth in In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
We turn first to the factor of fame, because this
factor “plays a ‘dominant role’ in the process of balancing
the du Pont factors.” Recot Inc. v. Becton, 214 F.3d 1322,
54 USPQ2d 1894, 1897 (Fed. Cir. 2000); see also Kenner
Parker Toys Inc. v. Rose Art Industries, Inc., 963 F.2d 350,
22 USPQ2d 1453 (Fed. Cir. 1992). In order to measure the
fame of a mark, we look to “the volume of sales and
advertising expenditures for the goods and services sold
under the mark, and by the length of time those indicia of
commercial awareness have been evident.” Blue Man
Productions, Inc. v. Tarmann, 75 USPQ2d 1811, 1817 (TTAB
2005).
Opposition No. 91171124
4
Opposer has submitted the declaration of its senior in-
house trademark attorney, Rose Hagan, in support of its
assertion that its mark is famous. Ms. Hagan states that
opposer has used its mark continuously since 1997 in
connection with the offering of “search engine software” and
that opposer has provided “blog searching” since 2000. Ms.
Hagan further states that over 300 million “visitors with
I.P. addresses in the United States” per day visited the
Google website in 2006; that “considering only United States
revenue” the company’s revenues have risen from over 400
million dollars in 2002 to 7.3 billion dollars in 2006; and
that “recognition of opposer’s mark (and the associated
growth in opposer’s revenues) has occurred without extensive
advertising.”
These sales and usage figures evidence wide consumer
exposure of opposer’s mark. Also significant are two
surveys submitted under the declarations of Ms. Hagan and
Matthew Schneller (one of opposer’s attorneys). The
“Reader’s Choice” survey conducted by Interbrand Consultancy
indicates that “Google” and “Google.com” were among the top
5 leading brands worldwide from 2001-2005. A “Data Memo”
from Pew Internet American Life Project, entitled “Search
Engine Use November 2005,” indicates that “Google was the
most heavily used search engine [in the United States] in
October 2005.”
Opposition No. 91171124
5
Opposer has also submitted two online dictionary
definitions of “Google,” which have been authenticated by
Mr. Schneller. The Merriam Webster Collegiate (2006) online
dictionary defines “google” as a “trademark for a search
engine.” The Oxford English Dictionary Online defines
“google” as a “proprietary name for an Internet search
engine” in an entry dated June 2006; but the entry is marked
as only a “draft.” We additionally take judicial notice of
the definition of the term “google” that appears in The
American Heritage Dictionary of the English Language, 4th
ed. 2006):3
Google - A trademark used for an Internet search
engine. This trademark often occurs in print as a
verb, sometimes in lowercase: "A high school
English teacher ... recently Googled a phrase in
one student's paper and found it had been taken
from a sample essay of an online editing service"

“When a trademark attains dictionary recognition as a
part of the language, we take it to be reasonably famous.”
B.V.D. Licensing v. Body Action Design, 846 F.2d 727, 6
USPQ2d 1719, 1720 (Fed. Cir. 1988); see also The B.V.D.
Licensing Corporation v. Florencio Rodriguez, ___ USPQ2d
___, (TTAB 2007). Applicant has presented no evidence or
argument to rebut opposer’s evidence of fame. Based on this

3 Retrieved April 13, 2007, from Dictionary.com website:
http://dictionary.reference.com/browse/google. The Board may take
judicial notice of online dictionary definitions where the
dictionary exists in printed format. See In re CyberFinancial.Net
Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002); University of Notre
Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594
(TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Opposition No. 91171124
6
record, we find that the mark GOOGLE is famous for search
engine software and related services, and opposer has
established that no genuine issue of material fact remains
as to this issue.
Two additional considerations in determining whether
there is a likelihood of confusion are the similarities or
dissimilarities between the marks and the similarities or
dissimilarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). The Lanham Act’s tolerance
for similarity between competing marks varies inversely with
the fame of the prior mark. “As a mark’s fame increases,
the Act’s tolerance for similarities in competing marks
falls.” Kenner Parker Toys, 963 F.2d at 353. Moreover,
“when marks would appear on virtually identical goods or
services, the degree of similarity necessary to support a
conclusion of likely confusion declines.” Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992).
Here, opposer’s goods encompass applicant’s goods and
opposer’s services are closely related to applicant’s goods.
Applicant seeks to register its mark for “computer software
for searching, compiling, indexing and organizing
information.” Opposer’s registrations cover, inter alia,
“computer software for creating indexes of information,
indexes of web sites and indexes of other information
Opposition No. 91171124
7
resources” and “providing multiple user access to
proprietqry collections of information by means of global
computer information networks.” There are no genuine issues
of material fact that the goods are legally identical for
purposes of our likelihood of confusion analysis and that
opposer’s services are closely related to applicant’s goods.
Further, applicant does not dispute the relatedness of the
goods and/or services.
The crux of applicant’s argument is that genuine issues
of material fact preclude summary judgment because the marks
are different. The similarity or dissimilarity of the marks
is assessed by comparing the marks “in their entireties as
to appearance, sound, connotation and commercial
impression.” See Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005)(quoting du Pont, 476 F.2d at
1361). In appearance, both marks contain six letters, the
last four of which are identical, giving the marks a similar
appearance despite the difference in the beginning letters
of each. As for their pronunciations, each mark is made up
of two syllables having a similar cadence. Importantly, the
connotation of applicant’s mark includes the word “blog.” A
“blog” is defined as an abbreviation for “weblog,” which is
further defined as “a website that displays in chronological
order the postings by one or more individuals and usually
Opposition No. 91171124
8
has links to comments on specific postings.” The American
Heritage Dictionary of the English Language (4th ed. 2006).4
Applicant admits that the word “blog” is descriptive of
an online diary (response to request for admissions No. 9),
and that it intends to use its mark for an Internet search
engine (response to request for admissions No. 2). Thus,
the impression of applicant’s mark is that of a “search
engine for blogs.” Ms. Hagan states that opposer engages in
“blog searching.” When considered in the context of the
connotation of applicant’s mark and the fact that the marks
are used, or intended to be used, on legally-identical
goods, there are no genuine issues of material fact that the
marks have a similar overall commercial impression.
The manner of use of applicant’s mark adds to the overall
similarity of the commercial impression of the marks. While
applicant now seeks to amend its application to claim Section
1(b) as a basis, when it initially filed its application,
applicant claimed that it had used the mark on a “website home
page” and submitted a specimen of use. “In trying to
visualize what other forms the mark might appear in, we are
aided by the specimens submitted with [applicant’s]
application as illustrating ‘the mark as actually used.’”
Phillips Petroleum Co. v. C.J. Webb, Inc., 442 F.2d 1376,

4 Retrieved April 13, 2007, from Dictionary.com website:
http://dictionary.reference.com/browse/blog and
http://dictionary.reference.com/browse/weblog.

Opposition No. 91171124
9
1378, 170 USPQ 35, 36 (CCPA 1971)(applicant applied to
register mark in typed format). We may look to how competing
marks are displayed when considering whether they project
confusingly similar commercial impressions. See Uncle Ben’s
Inc. v. Stubenberg International Inc., 47 USPQ2d 1310, 1312
(TTAB 1998)(fact that applicant had “chosen to display its
mark in the color blue” although it applied for registration
in typed format served to enhance confusion); cf. Kenner
Parker Toys, 963 F.2d at 355 (“The trade dress of the marks
enhances their inherently similar commercial impression”).
Applicant’s mark as it appears in the specimen submitted
in support of applicant’s application shows the first four
letters of its mark (“BLOG”) in orange and the last two
letters (“LE”) in blue. Opposer’s mark as it appears in the
specimen of use submitted for opposer’s application serial no.
78433507 shows the mark in the colors red, blue, green and
yellow.
The marks are reproduced below.

Opposer’s registration no. 3140793 has been lined for
these same colors and includes a description of the mark as
consisting of “the first letter “G” is blue; the second
letter “O” is red; the third letter “O” is yellow; the
fourth letter “G” is blue; the fifth letter “L” is green;
Opposition No. 91171124
10
and the sixth letter “E” is red. The mark is reproduced
below.

The use of colored letters in the parties’ marks as
well as the similarities in their stylizations enhances the
inherently-similar commercial impressions made by the marks.
Thus, due to their similar sight, sound and connotations, as
well as overall commercial impressions, we find no genuine
issues of material fact that the marks are confusingly
similar.
In sum, given the fame of opposer’s mark, the
similarity of the marks, the legally-identical nature of the
goods involved and the close relationship between opposer’s
services and applicant’s goods, we find that opposer has
borne its burden to show the absence of genuine issues of
material fact as to whether there is a likelihood of
confusion as a matter of law.
Accordingly, opposer’s motion for summary judgment is
hereby granted, the opposition is sustained and registration
to applicant is refused.5

5 In view thereof, applicant’s motion to amend its application is
denied as moot. Further, we need not reach opposer’s alternate
claim of dilution pleaded in the notice of opposition.