images3-150x112Google, Inc. filed a UDRP seeking transfer of the domain www.android-sale.com earlier this week. The domain resolves to a site that sells android phones and phone plans. There are no links for other “android” related sites – so it’s not simply a portal site  trying to make money via click-through fees from users looking for android related sites/information.

A quick check of the USPTO website reveals that Google applied for a federal trademark registration for ANDROID back in 2007 but has yet to receive a registration for the mark because of a series of refusals from the USPTO Examining Attorney, and a trademark litigation over Google’s use of the mark that was dismissed by the District Court but appealed to the Seventh Circuit.

In response to a suspension inquiry from the USPTO Google’s counsel framed the status of the trademark litigation accordingly:

“As Applicant noted in its last submission in this case dated January 14, 2011, Applicant is involved in litigation with The Android’s Dungeon Incorporated (“ADI”), the record owner of U.S. Reg. No. 2,639,556 for the mark ANDROID DATA (previously cited by the Examining Attorney in support of his refusal to register Applicant’s ANDROID mark under 15 U.S.C. § 1052(d)), the outcome of which is relevant to the registrability of Applicant’s ANDROID mark. […] [O]n December 17, 2010, the United States District Court for the Northern District of Illinois granted summary judgment to Applicant in the District Court […] ordering that Reg. No. 2,639,556 be cancelled due to the abandonment of ADI’s ANDROID DATA mark. After entry of final judgment by the District Court, ADI filed a notice of appeal to the United States Court of Appeals for the Seventh Circuit. That appeal (Seventh Circuit Case No. 11-3317) has been fully briefed and argued by the parties, and the parties are currently awaiting a ruling from the Seventh Circuit in that case.”

In previous UDRP complaints/decisions regarding the ANDROID mark Google has touted its foreign rights/registrations as the basis for its trademark rights – which was a smart thing considering that its rights to the ANDROID mark in the U.S. are still not clear.

It will be interesting to see how Google frames its rights in the mark in this case and, if the registrant responds, if it might argue that its use of the mark is appropriate as a third party vendor of Android products/services. The registrants use of the actual design mark for Android will not help its cause, nor will the fact that there is no disclaimer on the site which tells users that its not an “official” Android/Google site...