As reported by The New York Times, Google recently announced "Alphabet" as the name of its new holding company that will own the Google search business and several smaller holdings. Apparently unbeknownst to Google, however, German automaker BMW uses the "ALPHABET" trademark, as well as the alphabet.com domain name, in relation to services that it provides to corporations with vehicle fleets.There are, of course, numerous companies worldwide that use "ALPHABET" as either a business name or a trademark. This is entirely permissible so long as the goods or services offered under the trademark by the various companies are sufficiently different so that consumer confusion would be unlikely. A problem occurs when two companies seek to use the same trademark for similar goods or services, such that consumers would likely be confused as to the source of the goods or services.At first blush, it would appear that there would be no possibility of consumer confusion in this case. BMW, after all, manufactures automobiles, and Google's main business relates to the Internet. As it turns out, however, Google is also involved in the auto industry. It offers a version of the Android operating system for use in cars, and has worked on the development of self-driving vehicles. In the event that Google commences use of "ALPHABET" in connection these products, consumer confusion may potentially occur. If, on the other hand, Google uses "Alphabet" solely as the name of its holding company, and not on any products or services, BMW would be hard pressed to allege any consumer confusion.A search of U.S. Patent and Trademark Office records reveals that BMW previously obtained two registrations for "ALPHABET", both of which were cancelled in 2009 for failure to file an acceptable Affidavit of Use. Notwithstanding this fact, BMW may still have trademark rights in "ALPHABET" in the U.S. based on its use of the mark in commerce, although the claims and remedies available to BMW in any dispute with Google would be reduced given that BMW does not own a live trademark registration.The foregoing demonstrates the importance of conducting thorough trademark clearance searches, including Internet searches regarding use, prior to adopting a new product name. While the goods and services of two companies may seem unrelated, the extent to which a trademark is being used is not always readily apparent. Moreover, the last thing one wants to do when launching a new business or product line is to begin by defending a lawsuit. In this case, a trademark clearance search would have revealed BMW's cancelled U.S. trademark registrations for "ALPHABET", as well as its current use of "ALPHABET" in connection with services offered on the website located at alphabet.com.According to an article published on CNBC.com, BMW is examining whether any trademark infringement has taken place. We will monitor this case and report regarding further developments as events warrant.
