Social Search Services Duel Over “Post Post” Mark — Boathouse Group v. TigerLogic
[Post by Venkat Balasubramani]
Boathouse Group v. TigerLogic Corp., 10-12125-NMG (D. Mass.; March 7, 2011)
Background: Boathouse developed a “social media search and curation application” called POSTPOST which it launched at postpo.st in August 2010. Its application allows users to conduct keyword searches of twitter, Flicker and RSS feeds and post relevant search results to the user’s profile. Although its search didn’t cover Facebook, Boathouse asserted that it planned on launching a search for Facebook from day one. TigerLogic also launched an application called POSTPOST which it launched at postpost.com in December 2010. TigerLogic described its application as a “real-time personal social newspaper” which aggregates “links, pictures, and videos [from Facebook] and presents them . . . in newspaper format.” Boathouse sued, alleging trademark infringement.
Was TigerLogic the Senior User?: The first issue was which of the companies was the senior user. TigerLogic tried to get crafty, and obtained an assignment from DK New Media, which used POSTPOST (since 2007) in connection with “computer software and computer and social networking services.” As part of the assignment, TigerLogic licensed back rights to use the mark to DKNM. The court was quite skeptical of the use of the assignment to obtain priority, and among other things, points out a timing discrepancy in the assignment documents (the license back was dated after the assignment) and points out that the timing of the assignment indicates that it was used as an attempt to obtain seniority for the purposes of the lawsuit. The court also notes that as a practical matter, TigerLogic probably did not exert the requisite control over DKNM’s services which were distributed under the mark. The assignment also probably suffers from the defect that there’s no goodwill or equipment transferred to TigerLogic as part of the assignment. (Is TigerLogic producing the same quality and type of goods as DKNM?) However, what the court ends up focusing on is the fact that the services covered by DKNM’s registration were distinct from those provided by TigerLogic. Thus the assignment failed to confer priority.
Was Boathouse’s Pre-Sale Use Sufficient to Establish Trademark Rights?: A follow up question was whether Boathouse’s release of its beta service was sufficient to establish trademark rights. TigerLogic argued that Boathouse failed to achieve significant traction in the market and that Boathouse used its search product internally (for its existing clients), but the court rejects these arguments. The court notes that Boathouse’s launched its service in the “trial phase” via postpo.st on August, 2010, publicized its use via Twitter and other sites, and achieved over 800 registered users. Based on this, the court finds that Boathouse’s “use” of the mark was sufficient to establish its rights. [As a side note, the court rejects TigerLogic’s arguments that Boathouse’s launch of the service through the .st TLD, rather than the .com undermined Boathouse’s claim of priority. Apparently, the .com was for sale and although the registrant asked $35,000 for it, TigerLogic ended up acquired it for $3,000.]
Likelihood of Confusion Analysis: After concluding that Boathouse is the senior user, the court runs through the likelihood of confusion analysis. The court finds that the marks are similar (nearly identical) and this factor favors Boathouse. The court also finds – despite “profound discord regarding the specific characterization of each product” – that the services were sufficiently similar. The products both “work on widely-used social networks.” The court was not swayed by the fact that one of the products requires active input from the user – at the end of the day, they both performed “search and curation functions.” The channels of advertising and trade factor also weighed in favor of Boathouse. The products were both marketed via Twitter and both aggregated content from social media platforms. The fact that there was evidence of actual confusion was also a factor which weighed in Boathouse’s favor. When all is said and done, the court finds that the factors weighed in Boathouse’s favor and the court grants the injunction. (The injunction will require TigerLogic to change the name of its service, although it can continue to use the domain name provided it includes a disclaimer and a link to Boathouse’s site. Interestingly, the injunction restricted each party’s use of their service to the platforms on which they then offered the service – Boathouse was restricted from expanding to Facebook, and TigerLogic was restricted from expanding to Twitter.)
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One initial observation is that companies continue to spend a fair amount of money litigating trademark disputes prior to having firmly established their brand. Both companies used big law firms, and probably incurred a fair amount of expense. Although Boathouse achieved a successful result, it expended a fair amount of resources on this, and even though it prevailed, both parties may have been better off seeking a business solution, and focusing on their products and customers. TigerLogic certainly should have considered this option, when it realized that it was not the senior user.
Second, companies continue to be willing to chose alternates to .com domain names. In the old days, a non-.com was viewed as the kiss of death, but over the years, there has been a proliferation of successful sites (including URL shorteners) which have adopted non-.com names. Here, Boathouse didn’t obtain the .com version of the name, but that did not stop it from adopting the POST POST name (and it looks like it may come out on top – as far as the name game goes). Also, Boathouse may have had a cybersquatting claim against TigerLogic, but wisely chose the trademark infringement route over the ACPA route.
The court engages in a relatively nuanced look at the services in question. TigerLogic purportedly acquired the rights to POSTPOST from DKNM, and DKNM used the mark in connection with “computer software and computer and social networking services,” but the court notes that this wasn’t similar enough to TigerLogic’s social search service:
although DKNM’s plugin and TigerLogic’s application share some general and broadly-construed similarities (e.g., both are used on the internet), they seem otherwise unrelated with different purposes, thus making the assignment ineffective for the purpose of transferring priority. DKNM’s plugin is an optional feature designed to work with specific software. It has limited functionality, requires the user to input content and lacks a search feature. Furthermore, it does not rely on or require access to a user’s social network to function, unlike the applications of TigerLogic and Boathouse.
This can cut both ways, and for purposes of arguing confusion, just arguing that products or services are offered via the internet or on social networks is not necessarily going to be enough.
There was also the question of how these services would play with Facebook, Twitter and their users. It’s one thing to use the tools provided by those services to share content, but the services can be prickly about who they let play with their platform. (Many companies have learned the hard way that building a service on top of a platform that has the ability to shut you out offers little certainty.)
Finally, the case highlights how using an assignment to obtain priority can be tricky. Apple and other companies have been doing this, but it seems like if your intent is to get rid of a senior user, this is fine, but you may not have as much luck when it comes to establishing priority.
UPDATE: Pamela Chestek’s comments.