Hangingout, Inc. v. Google, Inc.

Filing 12

MOTION for Preliminary Injunction by Hanginout, Inc. (Attachments: # 1 Memo of Points and Authorities, # 2 Declaration of Justin Malone, # 3 Notice of Lodgment of Non-Electronic Exhibits Submitted, # 4 Table of Exhibits to Declaration of Justin Malone, # 5 Exhibit 1 , # 6 Exhibit 2, # 7 Exhibit 3, # 8 Exhibit 4 , # 9 Exhibit 5 , # 10 Exhibit 6 , # 11 Exhibit 7, # 12 Exhibit 8, # 13 Exhibit 9, # 14 Exhibit 10, # 15 Exhibit 11, # 16 Exhibit 12, # 17 Exhibit 13, # 18 Exhibit 14, # 19 Exhibit 15, # 20 Exhibit 16, # 21 Exhibit 17 , # 22 Exhibit 18 , # 23 Exhibit 19 , # 24 Exhibit 20, # 25 Exhibit 21, # 26 Exhibit 22, # 27 Exhibit 23, # 28 Exhibit 24 , # 29 Exhibit 25, # 30 Exhibit 26, # 31 Exhibit 27, # 32 Exhibit 28, # 33 Exhibit 29, # 34 Exhibit 30, # 35 Exhibit 31, # 36 Proof of Service)(Skale, Andrew) (Modified to remove excess text on 1/24/2014) (cge).

1 Andrew D. Skale (SBN 211096)

[e-mail]

2 Justin S. Nahama (SBN 281087)

[e-mail]

3 MINTZ LEVIN COHN FERRIS GLOVSKY AND POPEO P.C.

3580 Carmel Mountain Road, Suite 300

4 San Diego, CA 92130

Telephone: [phone]

5 Facsimile: [phone]
6 Attorneys for Plaintiff

HANGINOUT, INC.

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8

UNITED STATES DISTRICT COURT

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SOUTHERN DISTRICT OF CALIFORNIA

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11 HANGINOUT, INC., a Delaware

Case No. 3:13-cv-02811-AJB-NLS

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MEMORANDUM OF POINTS AND
AUTHORITIES IN SUPPORT OF
PLAINTIFF HANGINOUT, INC.’S
MOTION FOR PRELIMINARY
INJUNCTION

corporation,

Plaintiff,

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vs.
GOOGLE, INC., a Delaware

15 corporation,
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Defendant.

Date:
March 13, 2014
Time:
2:00pm
Dept:
3B
The Honorable Anthony J. Battaglia

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Case No. 3:13-cv-02811-AJB-NLS

TABLE OF CONTENTS

1
2 I.

FACTUAL BACKGROUND .........................................................................2

3

A.

The HANGINOUT Platform and Federal Trademark Applications ....2

4

B.

Google Launches Hangouts ..................................................................6

5

1.

Google’s Hangouts Platforms.....................................................6

6 II.

LEGAL STANDARD .....................................................................................7

7 III.

ARGUMENT...................................................................................................8

8

A.

9
10

Hanginout is Likely to Succeed on its Trademark Infringement
and Unfair Competition Claims ............................................................8
1.

Google Has Infringed Hanginout’s Valuable HANGINOUT
Trademark ...................................................................................8

11

a.

The HANGINOUT Mark is Valid and Protectable..........8

12

b.

Hanginout has Superior Ownership in the
HANGINOUT Mark ........................................................9

13

i.

15

Prior Use.................................................................9

ii.

14

Market Penetration Is Either Nationwide, or at
least Southern California with a Nationwide
Zone of Expansion ...............................................10

16

(A)

The geographical distance between the
HANGINOUT senior user’s San Diego
location to the perimeter of the zone of
expansion captures the entire United
States ..........................................................13

(B)

The HANGINOUT platform already has
a large zone market penetration.................13

(C)

The HANGINOUT platform is a natural
platform and has expanded into new
domestic and international territories ........14

(D)

17

A nationwide zone of expansion is
consistent with the HANGINOUT
platform’s previous growth........................14

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19
20
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22
23
24
25

iii.

26
27
28

c.

Hanginout’s Pending Federal Trademark
Applications Mean that First Use in Commerce
is Most Important in Assessing Ownership for
this Preliminary Injunction Motion......................14

Google’s HANGOUTS is Likely to Cause Confusion...15
i
Case No. 3:13-cv-02811-AJB-NLS

iv.

4

Marketing channels used......................................18

vii.

3

Similarity of the marks.........................................17

vi.

2

Proximity of the goods .........................................16

v.

1

The strength of the HANGINOUT Mark.............19

viii. Evidence of actual confusion ...............................20

5

ix.

Type of goods and the degree of care likely to
be exercised by the purchaser ..............................20

7

x.

Google’s intent in selecting the mark ..................21

8

xi.

Likelihood of expansion of the product lines ......22

6

9

B.

10

Irreparable Injury, a Balancing of the Equities and the Public
Interest, Also Favor a Granting of a Preliminary Injunction ..............22
1.

12

Likelihood of Irreparable Injury ...............................................22

2.

11

Balancing the Equities and the Public Interest .........................23

C.

In the Alternative, the Balance of Hardships Strongly Tips in
Hanginout’s Favor...............................................................................25

14

D.

Scope of the Injunction .......................................................................25

15 IV.

CONCLUSION .............................................................................................25

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ii
Case No. 3:13-cv-02811-AJB-NLS

TABLE OF AUTHORITIES

1
2

Page(s)

3 CASES
4 Alliance for the Wild Rockies v. Cottrell,
5

632 F.3d 1127 (9th Cir. 2011) ........................................................................8, 25

6 AMF Inc. v. Sleekcraft Boats,

599 F.2d 341 (9th Cir. 1979) .......................................................................passim

7
8

Apple Computer, Inc. v. Formula Int’l Inc.,
725 F.2d 521 (9th Cir. 1984) ..............................................................................23

9
10

Archer Daniels Midland Co. v. Narula,
2001 U.S. Dist. LEXIS 9715 (N.D. Ill. July 10, 2001) ................................11, 12

11

Baker v. Simmons Co.,
12
307 F.2d 458 (1st Cir. 1962)...............................................................................18
13 Banff, Ltd. v. Federated Dep’t Stores, Inc.,
14

841 F.2d 486 (2d Cir. 1988) ...............................................................................18

15 Boston Telecommunications Group, Inc. v. Wood,
16

588 F.3d 1201 (9th Cir. 2009) ............................................................................24

17 Brookfield Communications, Inc. v. West Coast Entertainment Corp.,
18
19

174 F.3d 1036 (9th Cir. 1999) .....................................................................passim
Conversive, Inc. v. Conversagent, Inc.,
433 F. Supp. 2d 1079 (C.D. Cal. 2006)................................................................9

20
21
22
23

CytoSport, Inc. v. Vital Pharmaceuticals, Inc.,
617 F. Supp. 2d 1051, 1081 (E.D. Cal. 2009) ....................................................23
Dish Network LLC v. Miles Dillion,
2012 U.S. Dist. LEXIS 13277 (S.D. Cal. Feb. 3, 2012).....................................23

24 DSPT v. Nahum,
624 F.3d 1213 (9th Cir. 2010) ............................................................................10
25
26 Entrepreneur Media, Inc. v. Smith,
27
28

279 F.3d 1135 (9th Cir. 2002) ............................................................................17
iii
Case No. 3:13-cv-02811-AJB-NLS

1

Fortune Dynamic v. Victoria’s Secret Stores Brand,
618 F. 3d 1025 (9th Cir. 2010) .............................................................................8

2
3
4
5

Glow Indus. v. Lopez,
252 F. Supp. 2d 962 (C.D. Cal. 2002)................................................................13
Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery,
150 F.3d 1042 (9th Cir. 1998) ............................................................................19

6

Lucent Info. Mgmt. v. Lucent Techs., Inc.,
186 F.3d 311 (3d Cir. Del. 1999) .......................................................................11
7
8 Marlyn Nutraceuticals, Inc. v. Mucos Pharma,
9

571 F.3d 873 (9th Cir. 2009) ..........................................................................8, 22

10 Mortgage Elec. Registration Sys. v. Brosnan,
11

2009 U.S. Dist. LEXIS 87596 (N.D. Cal. 2009) ................................................19

12 Network Automation, Inc. v. Advanced Sys.,

638 F.3d 1137 (9th Cir. 2011) ............................................................................19

13
14
15
16

Official Airline Guides, Inc., v. Goss,
6 F.3d 1385 (9th Cir. 1993) ................................................................................18
Perfumebay.com Inc. v. eBay Inc.,
506 F.3d 1165 (9th Cir. 2007) ............................................................................16

17

Pets, Inc. v. Nutri-Vet, LLC,
877 F. Supp. 2d 953 (C.D. Cal. 2012)................................................................10
18
19 Playboy Enterprises, Inc. v. Netscape Com-muns. Corp.,
20

354 F.3d 1020 (9th Cir. 2004) ............................................................................21

21 Pure Imagination, Inc. v. Pure Imagination Studios, Inc.,
22

2004 U.S. Dist. LEXIS 23064 (N.D. Ill. Nov. 12, 2004) ...................................11

23 Rearden LLC v. Rearden Commerce,

683 F.3d 1190 (9th Cir. 2012) ..............................................................................9

24
25

Rearden LLC v. Rearden Commerce, Inc.,
597 F. Supp. 2d 1006 (N.D. Cal. 2009)..............................................................20

26
27
28

Stormans, Inc. v. Selecky,
586 F.3d 1109 (9th Cir. 2009) ............................................................................24
iv
Case No. 3:13-cv-02811-AJB-NLS

1

Stuhlbarg Int’l Sales Co., Inc. v. John D. Brush & Co., Inc.,
240 F.3d 832 (9th Cir. 2001) ........................................................................22, 23

2
3
4
5

Sunearth, Inc. v. SunEarth Solarpower Co., Ltd.,
2012 U.S. Dist. Lexis 13506 (N.D. Cal. Feb. 3, 2012) ................................20, 23
Surfvivor Media, Inc. v. Survivor Prods.,
406 F.3d 625 (9th Cir. 2005) ..............................................................................17

6

Taylor v. Thomas,
2013 U.S. Dist. LEXIS 8222 (W.D. Tenn. Jan. 22, 2013) .................................10
7
8 Winter v. Natural Res. Def. Council, Inc.,
9

555 U.S. 7 (2008)................................................................................................22

10 Yamaha Corp. v. Ryan,
11

1989 U.S. Dist. LEXIS 16565 (C.D. Cal. Nov. 6, 1989) ...................................20

12 STATUTES
13 15 U.S.C. § 1125(a)(1).............................................................................................15
14 Prop. L. 329, 349 (2011)..........................................................................................11
15
16

OTHER AUTHORITIES
J. McCarthy, Trademarks and Unfair Competition § 26:8, at 302 (2d Ed. 1984) ..12

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18
19
20
21
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23
24
25
26
27
28

v
Case No. 3:13-cv-02811-AJB-NLS

1

Plaintiff Hanginout, Inc. (“Hanginout” or “Plaintiff”) moves to preliminarily

2 enjoin Google, Inc. (“Google” or “Defendant”), requiring Defendant to cease use of
3 the term “Hangouts” from its messaging platforms and social media, cease use of its
4 Question and Answer (“Q&A”) platform, and cease advertising and solicitation
5 utilizing the term “Hangouts” in connection with its messaging platform.
6

Hanginout is a San Diego based technology company that has developed

7 revolutionary mobile-video based communication products. San Diego native Justin
8 Malone began utilizing the HANGINOUT Mark in 2008 in association with
9 Hanginout’s novel Q&A social-media application that gives users the ability to easily
10 build and publish personal video profiles complimented with a video publishing tool
11 to create mobile video content. Hanginout filed federal trademark applications for the
12 HANGINOUT word and design marks in July 2012 and launched the app for its
13 services on iTunes in September 2012. The USPTO recently issued a Notice of
14 Publication for each of Hanginouts’ trademark applications.
15

Google launched its HANGOUTS “live” chat platform after Hanginout had

16 launched and marketed its Q&A platform. Its HANGOUTS platform received
17 significant media criticism for its lack of a Q&A platform. So in September 2013,
18 Google added a “Q&A app” to allow users of its HANGOUTS platform to ask
19 questions, and receive answers. Others can then click on the question to receive an
20 answer as well. Thus, Google began offering the same services as Hanginout under
21 the HANGOUTS mark as Hanginout offers under its HANGINOUT mark.
22

Obviously both Hanginout and Google’s highly-related services cannot exist

23 under virtually identical marks. Confusion is just too likely. The USPTO already
24 rejected Google’s recent trademark application for this very reason. Hanginout thus
25 seeks a preliminary injunction at the outset of this case because, if Google is allowed
26 to continue its uses of the mark through trial, Google will have already stolen away
27 the goodwill of Hanginout’s HANGINOUT mark.
28

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Case No. 3:13-cv-02811-AJB-NLS

1

Google could have easily avoided selecting an infringing mark for its

2 competing services. But it did not. It is unfair for Google to steal a mark that was
3 first carefully and organically developed for at least 3 years by Hanginout. An
4 injunction should issue to protect Hanginout’s trademark, pending resolution of this
5 lawsuit.
6 I.

FACTUAL BACKGROUND

7

A.

8

Hanginout developed the HANGINOUT interactive video-response application

The HANGINOUT Platform and Federal Trademark Applications

9 to gives users the ability to easily build and publish engaging video profiles.
10 [Declaration of Justin Malone in Support of Hanginout, Inc.’s Motion for Preliminary
11 Injunction (“Malone Decl.”), ¶ 3.] One of the application’s distinguishing features is
12 a question and answer capability giving users the unique ability to field questions
13 from other users, by recording and publishing responses, then sharing them from
14 anywhere at any time. [Malone Decl., ¶ 4.] The Hanginout Pro application also
15 provides real-time analytic solutions that analyze website demographics, usage, and
16 audience interests. [Malone Decl., ¶ 5.]
17

Hanginout adopted the HANGINOUT logo and word mark in November 2008.

18 [Malone Decl., ¶ 6, Ex. 1.] For the first year or so, Hanginout developed business
19 plans, and the technological know-how to accomplish its vision for a social media
20 platform that allowed celebrities, politicians, businesses, and everyday people looking
21 to organize their social media connections, the way to connect with others through a
22 highly-interactive video Q&A format. [Malone Decl., ¶ 7.] Hanginout’s vision in
23 early 2009 was to enable every consumer and business to interact via mobile video.
24 [Malone Decl., ¶ 8.] To accomplish their vision, Hanginout created a free mobile
25 platform allowing consumers to engage each other through interactive video and
26 empower brands to engage their consumers in a compelling, interest-driven way. [Id.]
27
28

By March 2010, to promote its product, Hanginout began partnering with
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Case No. 3:13-cv-02811-AJB-NLS

1 celebrities and professional athletes to create HANGINOUT profiles for its
2 interactive social-media platform. [Malone Decl., ¶ 9, Ex. 2.] Since March 2010,
3 celebrities, professional athletes and public figures have created Hanginout accounts
4 and published content on the HANGINOUT platform. [Malone Decl., ¶ 10.]
5

The HANGINOUT mark was first used on Facebook on March 22, 2010

6 [Malone Decl., ¶ 9, Ex. 2.] In March and April 2011, consumers began registering
7 HANGINOUT profiles and endorsing the product on social-media platforms such as
8 Twitter and Facebook. [Malone Decl., ¶ 11, Ex. 3.] Hanginout also announced on
9 Twitter the release of its beta and demo platforms. [Id.] Additionally, from April 1,
10 2011 to April 20, 2011, Hanginout invited hundreds of contacts to register profiles for
11 the HANGINOUT platform. [Malone Decl., ¶ 12.]
12

On May 4, 2011, Hanginout began an aggressive marketing campaign for its

13 video Q&A platform. Hanginout launched several social-media advertising
14 initiatives to promote the application. For example, Hanginout posted a preview of
15 the HANGINOUT platform on LinkedIn. [Malone Decl., ¶ 13, Ex. 4.] Hanginout
16 also created and posted a YouTube video (created in March 2010) explaining the
17 HANGINOUT platform and an overview of its general capabilities, hosted by NFL
18 athlete and celebrity Shawne Merriman. [Malone Decl., ¶ 14, Ex. 5.]
19

On May 23, 2011, Tech Cocktail―a media company and events organization

20 for startups, entrepreneurs, and technology enthusiasts―endorsed Hanginout’s
21 “Interactive Video Q&A Platform” on Facebook. [Malone Decl., ¶ 15, Ex. 6.]
22

On the same day, Tech Cocktail released an online article endorsing the

23 Hanginout platform, noting: “If you publish content online, whether it’s a blog,
24 eBooks, videos, or something in between, Hanginout’s interactive video Q&A
25 platform gives you an engaging and informative way to connect with your audience.”
26 [Malone Decl., ¶ 16, Ex. 7.] Accurately describing the HANGINOUT platform, the
27 Tech Cocktail article emphasized, “What really makes Hanginout stand apart from
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1 other online video sites is the interactive ability of the video. Instead of simply
2 broadcasting content, you’re directly engaging with the audience.” [Id.]
3

By the end of May 2011, over 200 customers had actually registered for and

4 used Version 1.0 of the HANGINOUT Q&A platform. [Malone Decl., ¶ 17.]
5

On June 1, 2011, Hanginout, Inc. was officially formed as a corporation. The

6 founder assigned over its rights in the HANGINOUT brand to the company. [Malone
7 Decl., ¶ 18.] On June 9, 2011, Hanginout released another YouTube video detailing
8 some key elements of the HANGINOUT platform. [Malone Decl., ¶ 19, Ex. 8.]
9

On October 24, 2011, San Diego Mayoral candidate Carl DeMaio utilized

10 HANGINOUT to create a “virtual town hall” for his campaign. [Id., ¶ 20, Ex. 9.]
11

On April 10, 2012, Hanginout offered the Hanginout Pro application to provide

12 additional capabilities to its existing customers. [Id., ¶ 21, Ex. 10.] The Hanginout
13 Pro application permitted users to build an interactive profile to receive questions and
14 publish video responses instantly. [Id.]
15

On, July 6, 2012, fiercely popular professional skateboarder Mitchie Brusco

16 launched an application utilizing the HANGINOUT platform to stay in touch with his
17 friends and fans. [Malone Decl., ¶ 22, Ex. 11.] Mr. Brusco described his
18 application―aptly summarizing the Q&A platform―by noting (in part):
19

 “As I’m on the road most of the time I don’t get as much time as I would like to

20

hang out with friends, family and fans - so we created the next best thing.”

21

 “The Hanginout App gives all of you an opportunity to hang with me, ask me

22

questions and get my video answers. I might even have a few tips or tricks up

23

my sleeve for those who hang the most.”

24 [Id.] ESPN ran an article about the Brusco application and HANGINOUT platform
25 on July 19, 2012, in conjunction with the popular upcoming X-Games. [Malone
26 Decl., ¶ 23, Ex. 12.]
27
28

On July 12, 2012, to protect the HANGINOUT mark, Hanginout filed for U.S.
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1 trademark applications. See Complaint, Exs. A, B.
2

On September 16, 2012, Hanginout officially launched a HANGINOUT iOS

3 app in the iTunes Application Store. [Malone Decl., ¶ 24.] Apple chose to feature the
4 HANGINOUT App in its social-media based applications. [Id.]
5

On September 18, 2012, iSnoops―a website that reviews iTunes

6 applications―endorsed the HANGINOUT platform. [Malone Decl., ¶ 25, Ex. 13.]
7

On September 28, 2012, AppAnnie ranked the HANGINOUT Application

8 fourth in the United States and first in Sweden for social-media based applications
9 Apple chose to feature. [Malone Decl., ¶ 26, Ex. 14.]
10

On November 1, 2012, celebrity and recording artist Sean “Puff Daddy”

11 Combs wished Hanginout CEO Justin Malone happy birthday on Twitter while
12 referencing the Hanginout Application. [Malone Decl., ¶ 27, Ex. 15.]
13

As part of Hanginout’s efforts to police its Mark, Hanginout learned that the

14 Mark HANGOUT existed (Reg. No. 3857338). [Malone Decl., ¶ 28.] As a result, on
15 December 3, 2013, Hanginout filed a petition to cancel the HANGOUT registration.
16 [Id.]. The petition was granted and the HANGOUT registration was canceled on
17 May 6, 2013. [Malone Decl., ¶ 28, Ex. 16.]
18

Google Analytics reports (“Google Reports”) from October 2012 through

19 December 23, 2013, monitored traffic through the HANGINOUT iOS Application.
20 [Malone Decl., ¶ 29.] The Google Reports confirm that the Hanginout Application
21 was viewed over 1,000,000 times since October 2012; viewed by consumers in 112
22 countries throughout the world; and viewed by consumers throughout the United
23 States with the largest quantity of consumers in California, specifically Los Angeles
24 and San Diego counties. [Malone Decl., ¶¶ 30-33, Exs. 17-20.]
25

Since the HANGINOUT platform had its iTunes launch on September 12,

26 2012 through December 23, 2013, the HANGINOUT Application was viewed
27 1,047,549 times. [Malone Decl., ¶ 30, Ex. 17.] Additionally, 87.5 percent of visitors
28

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1 have returned. [Id.] As of December 23, 2013, the HANGINOUT Application was
2 viewed by at least one consumer in each of 112 countries. [Id., ¶ 31, Ex. 18.] The
3 U.S. ranks highest among all these countries. [Id.] As of December 23, 2013, the top
4 five states with the most visits are California (29,985 visits), New York (7,056 visits),
5 Florida (3,506 visits), Michigan (2,701 visits) and Texas (2,629 visits). [Id.] No state
6 has less than 6 viewers to have visited the Application. [Malone Decl., ¶ 32, Ex. 19.]
7

Of the 29,985 visits from California consumers, the three cities with the most

8 visits were Los Angeles (4,456 visits), Carlsbad (4,191 visits) and San Diego (3,726
9 visits). [Malone Decl., ¶ 33, Ex. 20.] In total, there were 347 California cities with at
10 least one Application view. [Id.]
11

On December 17, 2013, the USPTO Publication & Issue Review was

12 completed, with a publication date of January 21, 2014. [Malone Decl., ¶ 38, Ex. 21.]
13 As a result, the HANGINOUT design and word mark registrations are imminent.
14
15
16

B.

Google Launches Hangouts
1.

Google’s Hangouts Platforms

On June 28, 2011, Google’s official blog contained an announcement for the

17 Google+ project, noting that its new messaging platform “+Hangouts” was beginning
18 a field trial. [Malone Decl., ¶ 39, Ex. 22.] At that point, Hangouts was only an
19 advertised feature of Google+ and a live video-chat program. [Id.] Google initially
20 referred to its platform as “+Hangouts”.
21

Notably, Google has used several variation of term “Hangouts” including, but

22 not limited to, “+hangouts”, “Google+ : Hangouts”, and “Google+ Hangouts.”
23 For example, as of January 16, 2014, the first search result utilizing Google’s search
24 engine for “What is Google Hangouts” provides, “Google+ Hangouts is an instant
25 messaging and video chat platform developed by Google, which launched on May 15,
26 2013 during the keynote of its I/O development conference…” [Id., ¶ 41, Ex. 24.]
27
28

Despite using inconsistent variations of “Hangouts,” on April 26, 2013, Google
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Case No. 3:13-cv-02811-AJB-NLS

1 filed a federal trademark application to register the mark “Hangouts,” Application
2 Serial No. 85916316. [Malone Decl., ¶ 42 Ex. 25.] In early May, 2013, Google
3 released its “Hangouts” iTunes application. [Malone Decl., ¶ 40 Ex. 23.] On or
4 about May 15, 2013, Google announced the initial release of Hangouts, its social5 media based video-chat service that enables both one-on-one and group chats.
6 [Malone Decl., ¶ 41, Ex. 24.]
7

On July 30, 2013, however, the U.S. Patent and Trademark Office suspended

8 Google’s Hangouts application because of Hanginout’s HANGINOUT mark.
9 [Malone Decl., ¶ 43, Ex. 26.] The suspension notice concluded that if the
10 HANGINOUT mark registers, Google may be prevented from receiving a trademark
11 registration for “Hangouts” based on likelihood of confusion with the HANGINOUT
12 mark. Disregarding the assessment of US government, Google continued to
13 aggressively market its Hangouts platforms.
14

On September 12, 2013, Google introduced its “Live Q&A for Hangouts On

15 Air,” mirroring the HANGINOUT platform’s capabilities. [Malone Decl., ¶ 44, Ex.
16 27.] At this point, Google was calling its platform “Hangouts On Air.” [Id.]
17

Virtually identical to the HANGINOUT application, Google’s website

18 described its Hangouts Q&A platform as:
19
20
21
22
23

The first of many features to help you engage with your viewers. If you’re
hosting the broadcast, you’ll now be able to:
- Solicit questions from up to a million concurrent viewers
- Select and answer questions live
- Timestamp the YouTube recording by marking questions as you answer
them

24

Google’s website included comments with 20+ references to “Hangouts.” [Id.]

25 II.

LEGAL STANDARD

26

“A plaintiff seeking a preliminary injunction must establish that he is likely to

27 succeed on the merits, that he is likely to suffer irreparable harm in the absence of
28

7
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1 preliminary relief, that the balance of equities tips in his favor, and that an injunction
2 is in the public interest.” Marlyn Nutraceuticals, Inc. v. Mucos Pharma, 571 F.3d
3 873, 877 (9th Cir. 2009) (quoting Winter v. Natural Res. Def. Council, Inc., 555 U.S.
4 7, 20 (2008)). Under the Ninth Circuit’s sliding-scale approach, “the elements of the
5 preliminary injunction test are balanced, so that a stronger showing of one element
6 may offset a weaker showing of another.” Alliance for the Wild Rockies v. Cottrell,
7 632 F.3d 1127, 1131 (9th Cir. 2011).
8 III.
9

ARGUMENT
A.
Hanginout is Likely to Succeed on its Trademark Infringement and
Unfair Competition Claims

10
11

On this motion for preliminary injunction, Hanginout relies on both its Lanham

12 Act claims for trademark infringement and unfair competition claims. For the
13 foregoing reasons, Hanginout is likely to prevail on both of these claims.
14
15
16

1.

Google Has Infringed Hanginout’s Valuable HANGINOUT
Trademark

A claim of trademark infringement requires: (1) a valid, protectable mark, (2)

17 superior ownership (priority), and (3) a likelihood of confusion. See Brookfield
18 Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1046 (9th
19 Cir. 1999); Ninth Circuit Model Jury Instruction 15.5.
20
21

a.

The HANGINOUT Mark is Valid and Protectable

The first prong under the test for trademark infringement is whether the mark is

22 valid. Trademark law protects inherently distinctive marks, as well as marks which
23 have become inherently distinctive by virtue of sufficient use. Fortune Dynamic v.
24 Victoria’s Secret Stores Brand, 618 F. 3d 1025, 1032-33 (9th Cir. 2010). Plaintiff
25 has two pending federal applications for the HANGINOUT word and design marks.
26 The USPTO approved both for publication under Section 2(b), meaning the USPTO
27 found them to be inherently distinctive of Hanginout’s services (a descriptive mark
28

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1 with secondary meaning must be registered under Section 2(f)). Thus, as the USPTO
2 found, the mark is likely to be valid and protectable.
3
4
5

b.

Hanginout has Superior Ownership in the HANGINOUT
Mark

Hanginout has superior ownership in the HANGINOUT mark because of: (1)

6 its prior use; (2) its market penetration at the relevant time was either nationwide or
7 in Southern California with a nationwide natural zone of expansion, and (3) the
8 presumption of nationwide ownership based on first use that Hanginout is likely to
9 obtain for its two pending federal trademark applications.
10
11

i.

Prior Use

“It is axiomatic in trademark law that the standard test of ownership is priority

12 of use.” Conversive, Inc. v. Conversagent, Inc., 433 F. Supp. 2d 1079, 1089 (C.D.
13 Cal. 2006) (quoting Brookfield Communications, 174 F.3d at 1046 (internal quotation
14 marks and citation omitted)). To establish ownership of a trademark, the party
15 claiming ownership must have been first to actually use the mark. Rearden LLC v.
16 Rearden Commerce, 683 F.3d 1190, 1204-1206 (9th Cir. 2012). Use is shown by a
17 totality of the circumstances. Id. at 1205. Here the totality of the circumstances
18 establishes that Hanginout substantially used its HANGINOUT mark in commerce
19 before Google used the HANGOUTS mark.
20

In March 2010, Shawne Merriman shot a HANGINOUT promotional video

21 and Hanginout’s Facebook profile was uploaded. [Malone Decl., Ex. 2.] By April
22 2011, as a result of Hanginout’s promotional efforts, over 200 customers registered
23 for and used Version 1.0 of the HANGINOUT Q&A platform. [Malone Decl., ¶ 17.];
24 Chance, 242 F.3d at 1157 (even a single bona fide sale is sufficient to show “use”).
25

The marketing campaign for the HANGINOUT services – all of which used

26 the HANGINOUT mark – was aggressively and very publicly pursued starting in
27 May 2011, including via LinkedIn and Twitter posts, and a celebrity YouTube video.
28

9
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1 DSPT v. Nahum, 624 F.3d 1213, 1222 (9th Cir. 2010) (exhibit at fashion show
2 established “use”).
3

The reach of the services was avidly expanded, launching an iTunes app by

4 September 2012 that was featured by Apple and attained the #4 iTunes ranking (a
5 testament to the notoriety that already existed for the HANGINOUT platform before
6 the smart phone app was released). [Malone Decl., ¶¶ 24-25, Ex. 13.]
7

This activity (explained in more detail in Section I(A) above), establishes by

8 the totality of the circumstances that Hanginout’s first use in commerce was prior to
9 Google’s first use in commerce. Vasanova, 2012 U.S. Dist. LEXIS 176276 **17-18.
10 Conversely, Google launched its Q&A platform in only September 2013, after
11 receiving its suspension notice from the USPTO. Hanginout therefor has priority of
12 use in the HANGINOUT Mark.
13
14

Market Penetration Is Either Nationwide, or at
least Southern California with a Nationwide Zone
of Expansion

15

A senior user’s common law ownership rights extend not only to its geography

ii.

16 of market penetration, but also its natural zone of expansion. Brookfield, 174 F.3d at
17 1047. Optimal Pets, Inc. v. Nutri-Vet, LLC, 877 F. Supp. 2d 953, 959 (C.D. Cal.
18 2012). “Legally sufficient market penetration is determined by examining the
19 trademark user’s volume of sales and growth trends, the number of persons buying
20 the trademarked product in relation to the number of potential purchasers, and the
21 amount of advertising.” Id. (internal citations omitted).
22

Hanginout’s users are nationwide. It had a Facebook profile by March 2011,

23 and over 200 registered users of its web-based platform in the U.S. by May 2011.
24 Taylor v. Thomas, 2013 U.S. Dist. LEXIS 8222 (W.D. Tenn. Jan. 22, 2013) (use of
25 mark on real estate agent’s personal page was sufficient; for market penetration, “use
26 of a service mark, however, need not be extensive or ‘result in deep market
27 penetration or widespread recognition.’”) (quoting Allard Enters. v. Advanced
28

10
Case No. 3:13-cv-02811-AJB-NLS

1 Programming Res., Inc., 146 F.3d 350, 358 (6th Cir. Ohio 1998)). Its smart phone
2 app has 30,000 visits from California consumers, 7000 from New York, 3500 from
3 Florida, 2700 from Michigan, 2600 from Texas, and indeed consumers from every
4 state have viewed its app. [Malone Decl., ¶ 32, Ex. 19.] Of these, its registered users
5 number nearly 8000. [Id., ¶ 17.] Celebrity use has ensured a broad audience,
6 including Shawne Merriman, notable mayoral candidate (and now candidate for
7 Congress) Carl DeMaio, and various other celebrities. [Id., ¶¶ 10, 20; Ex. 9.]
8

While geographic boundaries for common law trademarks are sometimes

9 drawn around cities or states, there is no real disputing that both Hanginout and
10 Google’s inherently internet-based services create a naturally national marketplace.
11 Similar to physical stores not requiring a buyer on every street of a city to penetrate
12 that city, or in every zip code to penetrate a state, myopic “physical geographic line13 drawing are ineffective at corralling purely virtual companies.” Location, Location,
14 Location, a New Solution to Concurrent Virtual Trademark Use, 11 Wake Forest J.
15 Bus. & Intell. Prop. L. 329, 349 (2011). A nationwide marketplace based on internet
16 use is natural, because the internet permits small trademark users to sell their goods
17 and services to broad geographic areas. Lucent Info. Mgmt. v. Lucent Techs., Inc.,
18 186 F.3d 311, 325 (3d Cir. Del. 1999) (Diss.) (an approach that ignores this,
19 “penalizes small companies which take advantage of the national market”); Pure
20 Imagination, Inc. v. Pure Imagination Studios, Inc., 2004 U.S. Dist. LEXIS 23064
21 (N.D. Ill. Nov. 12, 2004) (“operation of an active website on the Internet could
22 constitute nationwide trademark use”).
23

As aptly explained in Archer Daniels Midland Co. v. Narula, 2001 U.S. Dist.

24 LEXIS 9715, 33-38 (N.D. Ill. July 10, 2001), attempting to draw lines of geographic
25 limit around what are clearly internet users of a mark, in order to determine priority
26 on something other than first use, is simply inappropriate and unwarranted. Archer
27 Daniels Midland Co. v. Narula, 2001 U.S. Dist. LEXIS 9715, 33-38 (N.D. Ill. July
28

11
Case No. 3:13-cv-02811-AJB-NLS

1 10, 2001). Such geographic boundaries were meant as equitable protections against
2 junior users where the parties are in arguably remote geographical markets, not as a
3 mechanism to supplant ownership of a first-comer. Id. **36-38. Thus, Hanginout’s
4 penetration through cyberspace is treated as penetration of the entire United States.
5

But even supposing the market were more narrowly drawn, taking California or

6 Southern California as an example market shows that Hanginout at least penetrated
7 this market, with a nationwide zone of expansion giving it priority nationwide.
8 Brookfield, 174 F.3d at 1047.
9

Here, Hanginout’s HANGINOUT mark has market penetration in California

10 given its growth trends and advertising efforts. For example, of the 29,985 visits from
11 California consumers to the HANGINOUT Application, the three cities with the most
12 visits were Los Angeles (4,456 visits), Carlsbad (4,191 visits) and San Diego (3,726
13 visits). [Malone Decl., ¶ 33, Ex. 20.] Additionally, the Hanginout App has been
14 downloaded over 10,000 times from the iTunes store. [Malone Decl., ¶ 45, Ex. 28.]
15

Concerning expansion, the zone of natural expansion doctrine provides a senior

16 user with the ability to expand beyond its current actual use to protect its ownership
17 rights. J. McCarthy, Trademarks and Unfair Competition § 26:8, at 302 (2d Ed.
18 1984). Factors to consider when determining the natural zone of expansion include:
19
20
21
22
23
24
25
26

(1) How great is the geographical distance from the senior user’s actual
location to a point on the perimeter of the zone of expansion?
(2) What is the nature of the business? Does it already have a large or
small zone of actual market penetration or reputation?
(3) What is the history of the senior user’s past expansion? Has it
remained static for years, or has it continually expanded into new
territories? Extrapolating prior expansion, how long would it take the
senior user to reach the periphery of the expansion zone he claims?
(4) Would it require an unusual ‘great leap forward’ for the senior user
to enter the zone, or is the zone so close to existing locations that
expansion would be (or is) a logical, gradual, step of the same length as
those previously made?

27 Glow Indus. v. Lopez, 252 F. Supp. 2d 962, 985-986 (C.D. Cal. 2002).
28

12
Case No. 3:13-cv-02811-AJB-NLS

1

Here, were Hanginout’s territory defined more narrowly as California, its

2 natural zone of expansion is still, at a minimum, nationwide.
3

(A)

4
5
6

The geographical distance between the
HANGINOUT senior user’s San Diego
location to the perimeter of the zone of
expansion captures the entire United States

The geographical distance from the HANGINOUT senior user’s actual San

7 Diego location to a point on the perimeter of the zone of expansion spans, at a
8 minimum, the entire United States. The Google Analytics Reports confirm that as of
9 December 2013, two out of the top three states with the most visits to the
10 HANGINOUT Application were on the east coast. [Malone Decl., ¶ 32, Ex. 19.]
11 Specifically, New York had 7,056 visits (second in the top three) and Florida has
12 3,506 visits. [Id.] This broad user base is completely natural, given social media
13 exists completely in the cyber world, and Hanginout’s services provide people a way
14 to connect in that cyber world. Accordingly, this factor strongly confirms
15 HANGINOUT’s zone of expansion captures the entire U.S.
16
17
18

(B)

The HANGINOUT platform already has a
large zone market penetration

Here, even apart from its market penetration nationwide, Hanginout’s internet-

19 based platform also strongly confirms that its natural zone of expansion is
20 nationwide. The nature of the business is an online social media platform, that is
21 easily accessible nationwide. There are no inherent geographical limits to the
22 business that would hold it back from expanding, and the nature of social media
23 (especially a “.com”) is to pervade the national market.
24

Hanginout’s reputation and penetration for its HANGINOUT business has

25 indeed been nationwide, with thousands of users from each of California, New York,
26 Florida, Michigan and Texas, on par with the number of visitors from its Southern
27 California birthplace of Los Angeles, Carlsbad and San Diego. [Malone Decl., ¶¶ 3128

13
Case No. 3:13-cv-02811-AJB-NLS

1 33, Exs. 18-20.] Thus, the current zone of penetration confirms that the nature of the
2 services offered is far flung enough to warrant a national zone of expansion.
3

(C)

4
5

The HANGINOUT platform is a natural
platform and has expanded into new
domestic and international territories

Additionally, Hanginout has continuously and consistently expanded its

6 business well before Google adopted the infringing mark. Hanginout’s expansion
7 history reveals that its growth has been dynamic and continually expanded into new
8 domestic and international territories including 112 different countries spanning the
9 globe. [Malone Decl., ¶ 31, Ex. 18.]
10

This zone of expansion has been the plan from the very beginning.

11 Hanginout’s vision reveals that the platform, like every other major social media
12 platform in the United States, was meant to transcend and reach into every home,
13 every business, in the United States.
14

(D)

15
16

A nationwide zone of expansion is consistent
with the HANGINOUT platform’s previous
growth

Since its aggressive marketing campaign in May 2011, Hanginout’s platform

17 has continued to grow into states and countries regardless of physical distance, given
18 its virtual platform. In 2012 this included 8,691 downloads of the Hanginout App,
19 288 for the Hanginout Pro and 522 for Hanginout with Mitchie Brusco. [Malone Dec.
20 ¶ 45, Ex. 28.] In 2013, downloads continued with the Hanginout App receiving 1419
21 downloads, Hanginout Pro 75, and Hanginout with Mitch Brusco 1174. [Id.]
22

Accordingly, even if Hanginout’s HANGINOUT mark were not treated as

23 having penetrated the entire national market, its natural zone of expansion still
24 expands its ownership nationwide.
25
26
27
28

iii.

Hanginout’s Pending Federal Trademark
Applications Mean that First Use in Commerce is
Most Important in Assessing Ownership for this
Preliminary Injunction Motion

As a result of Hanginout’s soon-to-be-issued registrations, Hanginout will have
14
Case No. 3:13-cv-02811-AJB-NLS

1 a natural presumption of ownership for HANGINOUT based on first-use date
2 regardless of market penetration and any specific geography. [Malone Decl., ¶ 38,
th

3 Ex. 21.]; 15 U.S.C. §§ 1057(b), 1115(a); 9 Cir. Jury Instr. 15.7. Preliminary
4 injunctions measure likelihoods of success at trial. By trial, so long as Hanginout has
5 the first use date, the registration of its mark is inevitable, and that first use date will
6 extend priority nationwide as of that date. Thus, for purposes of a preliminary
7 injunction, unless Google can show it had an earlier first use date, any arguments of
8 “market penetration” are not likely to prevail at trial. Thus, on this motion, the
9 strongest likelihood of success folds into the first use date, not the likely mooted
10 market penetration inquiry.
11
12

c.

Google’s HANGOUTS is Likely to Cause Confusion

Hanginout is also likely to prevail because Google’s use of HANGOUTS and

13 “Hanging Out” is likely to cause confusion with HANGINOUT. See AMF Inc. v.
14 Sleekcraft Boats, 599 F.2d 341, 349 (9th Cir. 1979). The types of likely confusion
15 protected against are broad, and include wherever use of a mark “is likely to cause
16 confusion, or to cause mistake, or to deceive as to the affiliation, connection, or
17 association of such person with another person, or as to the origin, sponsorship, or
18 approval of his or her goods, services, or commercial activities by another person.”
19 15 U.S.C. § 1125(a)(1).
20

In assessing likelihood of confusion, courts assess the following factors: (1)

21 the strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4)
22 evidence of actual confusion; (5) marketing channels used; (6) type of goods and the
23 degree of care likely to be exercised by the purchaser; (7) the defendant’s intent in
24 selecting the mark; and (8) likelihood of expansion of the product lines. Sleekcraft,
25 599 F.2d at 349. The analysis, however, is not to be considered in a mechanical
26 fashion, and instead the importance of each Sleekcraft factor will vary in each
27 particular case. Brookfield, 174 F.3d at 1055 n.16. “The test is a fluid one and the
28

15
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1 plaintiff need not satisfy every factor, provided that strong showings are made with
2 respect to some of them.” Perfumebay.com Inc. v. eBay Inc., 506 F.3d 1165, 1173
3 (9th Cir. 2007). Here, these factors establish a strong likelihood of confusion.
4
5

iv.

Proximity of the goods

“For related goods, the danger presented is that the public will mistakenly

6 assume there is an association between the producers of the related goods, though no
7 such association exists.” Sleekcraft, 599 F.2d 341. Proximity considers whether the
8 goods/services are: (1) complementary; (2) sold to the same class of purchasers; and
9 (3) similar in use and function. Id. at 350.
10

Hanginout offers its social-media based platform through the iTunes

11 application store [Malone Decl., ¶ 24.] On September 12, 2013, Google launched its
12 “Live Q&A for Hangouts On Air” platform, which can be downloaded as a
13 smartphone app on iTunes and GooglePlay. [Malone Decl., ¶ 24, Exs. 27 and 31.]
14 Indeed, Google’s Hangouts platform fits squarely within Hanginout’s pending
15 registration with Serial Nos. 85674801 and 85674799 for:
16

 “Computer application software for mobile devices for sharing

17

information, photos, audio and video content in the field of

18

telecommunications and social networking services;”

19



“Telecommunications services, namely, providing online and

20

telecommunication facilities for real-time and on-demand interaction

21

between and among users of computers, mobile and handheld

22

computers, and wired and wireless communication devices;”

23

 “ audio, text and video broadcasting services over the Internet or other

24

communications networks, namely, electronically transmitting audio

25

clips, text and video clips;”

26
27
28

16
Case No. 3:13-cv-02811-AJB-NLS

1



“electronic messaging services enabling individuals to send and receive

2

messages via email, instant messaging or a website on the Internet in the

3

field of general interest;” and

4



“providing online forums for communication on topics of general

5

interest; providing an online forum for users to share information,

6

photos, audio and video content to engage in social networking.”

7

Echoing HANGINOUT’s capabilities, Google’s website described the

8 Hangouts Q&A platform as:
9
10
11
12
13

The first of many features to help you engage with your viewers. If you’re hosting
the broadcast, you’ll now be able to:
- Solicit questions from up to a million concurrent viewers
- Select and answer questions live
- Timestamp the YouTube recording by marking questions as you answer
them

14 [Malone Decl., ¶ 24, Ex. 27.] The HANGINOUT and Google products therefore are
15 not just complimentary, they directly overlap. Accordingly, this factor strongly
16 favors a likelihood of confusion because the goods and services offered are not only
17 complimentary but directly competitive and identical.
18
19

v.

Similarity of HANGINOUT and HANGOUTS

The greater the similarity between the two marks at issue, the greater the

20 likelihood of confusion. Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1144 (9th
21 Cir. 2002). “[L]ess similarity between the marks will suffice when the goods are
22 complementary, . . . the products are sold to the same class of purchasers, . . . or the
23 goods are similar in use and function.” Sleekcraft, 599 F.2d at 341. Courts will
24 determine whether the marks are similar in sight, sound, and meaning. Surfvivor
25 Media, Inc. v. Survivor Prods., 406 F.3d 625, 633 (9th Cir. 2005); see also
26 Brookfield, 174 F.3d at 1046 n.6 (noting same standard applies to both registered and
27 unregistered trademarks).
28

17
Case No. 3:13-cv-02811-AJB-NLS

1

A modified spelling or slight alternation in the phonetic pronunciation of a

2 mark does not mitigate against a likelihood of confusion. See Banff, Ltd. v.
3 Federated Dep’t Stores, Inc., 841 F.2d 486, 491 (2d Cir. 1988) (finding a likelihood
4 of confusion between B WEAR and BEE WEAR for women’s clothing).
5 Additionally, courts must also assume that consumers will not use heightened care in
6 pronouncing trademarks. Baker v. Simmons Co., 307 F.2d 458, 465 (1st Cir. 1962)
7 (finding SIMMONDS and SIMMONS essentially identical in sound).
8

Here, HANGINOUT and HANGOUTS are nearly identical in sight, sound and

9 meaning, Google used a form of the word “hang” that lacks the “in” and refers to its
10 mark by the plural instead of singular. The words are in the same order, and both
11 remove the space between the words. As the Baker court warned:
12
13
14

Perhaps on the tongues of linguists or precisionists, variations of
articulation could be perceived. However, to the ear of the average
person the two names would pass as one. Ordinary consumers are
assumed to have neither perfect pronunciation nor perfect hearing when
it comes to trademarks.

15 Id.
16

Additionally, in suspending Google’s trademark application , the USPTO

17 warned Google if the HANGINOUT Mark registers, Google’s “mark may be refused
18 under Section 2(d) because of a likelihood of confusion with that registered mark(s).”
19 [Malone Decl., ¶ 43, Ex. 26.] The USPTO’s determinations are entitled to deference.
20 Given the effort used by Google to inundate consumers with the term “Hangout,”
21 there can be no doubt that consumers are likely to see the HANGINOUT and
22 HANGOUTS marks as inseparable and associated. Accordingly, this factor strongly
23 favors a likelihood of confusion.
24
25

vi.

Marketing channels used

“Convergent marketing channels increase the likelihood of confusion.” Official

26 Airline Guides, Inc., v. Goss, 6 F.3d 1385, 1394 (9th Cir. 1993) quoting Nutri/System,
27 Inc. v. Con-Stan Indus., Inc., 809 F.2d 601, 606 (9th Cir. 1987). Both companies rely
28

18
Case No. 3:13-cv-02811-AJB-NLS

1 heavily on the internet as a primary marketing channel. [Malone Decl., ¶¶ 9-19, Exs.
2 2-8.] (describing advertising efforts on YouTube, internet blogs and internet
3 articles)]. Both also use smart phone apps (available through iTunes) to provide their
4 services. [Id. & Ex. 31] Thus, the overlap of marketing channels supports confusion.
5
6

vii.

The strength of the HANGINOUT Mark

“The strength of the trademark is evaluated in terms of its conceptual strength

7 and commercial strength.” Mortgage Elec. Registration Sys. v. Brosnan, 2009 U.S.
8 Dist. LEXIS 87596, at *13 (N.D. Cal.) (citing Brookfield, 174 F.3d at 1058). In
9 terms of conceptual strength, “[m]arks are often classified in one of five categories of
10 increasing distinctiveness: (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, or
11 (5) fanciful.” Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042,
12 1047 (9th Cir. 1998). “The latter three characterizations are inherently more
13 distinctive and, hence, are associated with stronger marks.” Mortgage Elec.
14 Registration Sys., 2009 U.S. Dist. LEXIS 87596, at *13 (citing Kendall-Jackson
15 Winery, 150 F.3d at 1047).
16

Here, at a minimum, the Hanginout Mark is suggestive if not stronger. A

17 suggestive mark is one that “requires a mental leap from the mark to the product.”
18 Network Automation, Inc. v. Advanced Sys., 638 F.3d 1137, 1144 (9th Cir. 2011)
19 quoting Brookfield, 174 F.3d at 1058. “If the mental leap between the word and the
20 product’s attribute is not almost instantaneous, this strongly indicates suggestiveness,
21 not direct descriptiveness.” Network Automation, 638 F.3d at 1144 (quoting Self22 Realization Fellowship Church v. Ananda Church of Self-Realization, 59 F.3d 902,
23 911 (9th Cir. 1995)) (other internal quotation marks and citation omitted). A mental
24 leap is required from the term “HANGINOUT” to the product’s features. See
25 Complaint, Exs. A, B. The USPTO agreed in allowing Hanginout’s trademark
26 applications. [Id.] Hence, the mark is strong.
27
28

Additionally, Google has admitted HANGINOUT is inherently distinctive.
19
Case No. 3:13-cv-02811-AJB-NLS

1 Google’s Trademark list, located at www.google.com/permissions/trademark/our2 trademarks.html, includes, “Hangouts™ messaging service.” [Malone Decl., ¶ 46, Ex.
3 29.] Designating a word with “TM” is an admission that the Mark is distinctive. See
4 Yamaha Corp. v. Ryan, 1989 U.S. Dist. LEXIS 16565, 11 (C.D. Cal. Nov. 6, 1989)
5 (“Defendants’ own usage of the letters TM with MUSICSOFT on their midi disks is
6 an admission that MUSICSOFT has distinctiveness as a trademark.”) Accordingly,
7 the HANGINOUT Mark therefore has inherent distinctiveness that entitles the mark
8 to trademark protection. This factor further favors a likelihood of confusion.
9
10

viii.

Evidence of actual confusion

“Evidence that use of a mark or name has already caused actual confusion as to

11 the source of a product or service is ‘persuasive proof that future confusion is
12 likely.’” Rearden LLC v. Rearden Commerce, Inc., 597 F. Supp. 2d 1006, 1023 (N.D.
13 Cal. 2009) (quoting Sleek-craft, 599 F.2d at 352). Thus, at an early stage of the
14 proceedings, while a lack of such evidence does not weigh against a finding of likely
15 confusion, even minimal evidence of confusion strongly favors a likelihood of
16 confusion. Sunearth, Inc. v. SunEarth Solarpower Co., Ltd., 2012 U.S. Dist. Lexis
17 13506 (N.D. Cal. Feb. 3, 2012).
18

Here, at this early stage, a number of instances of actual confusion have been

19 demonstrated, including misuse of the HANGINOUT Mark. For example,
20 consumers have used the phrase “Hanging Out” and “Hangout” when referring to the
21 HANGINOUT platform. [Malone Decl., ¶¶ 22, 47; Exs. 11, 30.] Thus, this factor,
22 while normally simply neutral at the preliminary injunction stage, favors a likelihood
23 of confusion.
24
25

ix.

Type of goods and the degree of care likely to be
exercised by the purchaser

“Low consumer care . . . increases the likelihood of confusion.” Playboy

26 Enterprises, Inc. v. Netscape Com-muns. Corp., 354 F.3d 1020, 1028 (9th Cir. 2004).
27 The products and services at issue here are not expensive jewelry or automobiles.
28

20
Case No. 3:13-cv-02811-AJB-NLS

1 Thus, it is likely that consumer’s eager to efficiently engage a broad audience through
2 the use of social media will immediately believe that HANGOUTS is synonymous
3 with the trademark HANGINOUT (as will their audience of viewers). Also, many of
4 these consumers are likely to use the parties’ platform without doing significant
5 investigation. Thus, likely consumer care weighs in favor of likely confusion.
6
7

x.

Google’s intent in selecting the mark

“This factor favors the plaintiff where the alleged infringer adopted his mark

8 with knowledge, actual or constructive, that it was another’s trademark.” Brookfield
9 Communs., 174 F.3d at 1059 (citing Official Airline Guides, 6 F.3d at 1394 (“When
10 an alleged infringer knowingly adopts a mark similar to another’s, courts will
11 presume an intent to deceive the public.”)) In other words, “When the alleged
12 infringer knowingly adopts a mark similar to another’s, reviewing courts presume
13 that the defendant can accomplish his purpose: that is, that the public will be
14 deceived.” Sleekcraft, 599 F.2d at 348, 354.
15

A company as large as Google, with its teams of employees and attorneys,

16 presumptively performed a search on its own Google search page to discover existing
17 trademark owners. Likewise, a simple iTunes search would have revealed the
18 HANGINOUT Q&A app. Further, Google received the USPTO suspension notice on
19 July 30, 2013, providing unequivocal notice of the HANGINOUT Mark. [Malone
20 Decl., ¶ 43, Ex. 26.] Yet, not wanting to abandon its imminent launch, Google
21 decided to move ahead with its September 12, 2013 launch anyway. Google simply
22 placed its need to expand its social media platform above the superior trademark
23 rights of Hanginout. Such calculated decision is the definition of willfulness.
24

Accordingly, this factor strongly favors a finding of likelihood of confusion,

25 and also points the equities strongly in Hanginout’s favor as a knowing adopter
26 cannot complain about later being enjoined for its willful infringement.
27
28

21
Case No. 3:13-cv-02811-AJB-NLS

1
2

xi.

Likelihood of expansion of the product lines

“Inasmuch as a trademark owner is afforded greater protection against

3 competing goods, a ‘strong possibility’ that either party may expand his business to
4 compete with the other will weigh in favor of finding that the present use is
5 infringing.” Sleekcraft, 599 F.2d at 354. “When goods are closely related, any
6 expansion is likely to result in direct competition.” Id. Here, Google intends to
7 directly compete with Hanginout in the social-media arena. It is not just a likelihood
8 of expansion, but an established fact. This factor favors likely confusion.
9
10
11

B.

Irreparable Injury, a Balancing of the Equities and the Public
Interest, Also Favor a Granting of a Preliminary Injunction

Once likelihood of prevailing on its claims has been established, Hanginout

12 need only establish it is “likely to suffer irreparable harm in the absence of
13 preliminary relief, that the balance of equities tips in [its] favor, and that an injunction
14 is in the public interest.” Marlyn Nutraceuticals, Inc. v. Mucos Pharma, 571 F.3d
15 873, 877 (9th Cir. 2009) (quoting Winter v. Natural Res. Def. Council, Inc., 555 U.S.
16 7, 20 (2008)).
17
18

1.

Likelihood of Irreparable Injury

To obtain an injunction, Hanginout is to demonstrate the likelihood of

19 irreparable harm is real and significant, not speculative or remote. See Winters, 555
20 U.S. at 22. The threatened loss of prospective customers, goodwill, or revenue
21 supports a finding of irreparable harm. See Stuhlbarg Int’l Sales Co., Inc. v. John D.
22 Brush & Co., Inc., 240 F.3d 832, 841 (9th Cir. 2001). Additionally, “the Ninth
23 Circuit has recognized that the potential loss of goodwill or the loss of the ability to
24 control one’s reputation may constitute irreparable harm for purposes of preliminary
25 injunctive relief.” SunEarth, Inc. v. Sun Earth Solar Power Co., 2012 U.S. Dist.
26 LEXIS 13506 **43-44 (N.D. Cal. Feb. 3, 2012).
27
28

Here, Google’s continued use of “Hangouts” will irreparably injure Plaintiff in
22
Case No. 3:13-cv-02811-AJB-NLS

1 at least three ways: (1) exploiting HANGINOUT’s goodwill; (2) Plaintiff has lost the
2 ability to police and control its brand and pending trademark; and (3) actual
3 confusion–not just a likelihood of confusion –is already occurring.
4

As previously discussed, HANGINOUT revolutionized a social-media based

5 communication platform, primarily through its pre-recorded Q&A feature. Because
6 Google has a broader customer base, the potential misidentification poses a serious
7 threat to Hanginout’s goodwill and reputation. It is well established in the Ninth
8 Circuit that irreparable injury is likely where “continuing infringement would result
9 in loss of control over [plaintiff’s] reputation and loss of goodwill.” Apple Computer,
10 Inc. v. Formula Int’l Inc., 725 F.2d 521, 526 (9th Cir. 1984); see also Stuhlbarg
11 Intern. Sales Co., Inc. v. John D. Brush and Co., Inc., 240 F.3d 832, 841 (9th Cir.
12 2001) (“Evidence of threatened loss of prospective customers or goodwill certainly
13 supports a finding of the possibility of irreparable harm”). Google’s Hangouts
14 platform has and will continue to result in actual confusion with the HANGINOUT
15 brand. Likely―and all the more so actual―confusion constitutes irreparable harm.
16 See e.g., CytoSport, Inc. v. Vital Pharmaceuticals, Inc., 617 F. Supp. 2d 1051, 1081
17 (E.D. Cal. 2009). These harms are inherently difficult to quantify. See Dish Network
18 LLC v. Miles Dillion, 2012 U.S. Dist. LEXIS 13277 *11 (S.D. Cal. Feb. 3, 2012).
19 Accordingly, Hanginout has demonstrated its irreparable harm is real and significant.
20
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2.

Balancing the Equities and the Public Interest

“In the trademark context, courts often define the public interest at stake as the

22 right of the public not to be deceived or confused.” CytoSport, 617 F. Supp. 2d at
23 1081. Moreover, “When the reach of an injunction is narrow, limited only to the
24 parties, and has no impact on non-parties, the public interest will be at most a neutral
25 factor in the analysis rather than one that favors granting or denying the preliminary
26 injunction.” Stormans, Inc. v. Selecky, 586 F.3d 1109, 1138-39 (9th Cir. 2009)
27 (citation and internal quotation marks omitted). On the other hand, if “the impact of
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1 an injunction reaches beyond the parties, carrying with it a potential for public
2 consequences, the public interest will be relevant to whether the district court grants
3 the preliminary injunction.” Id.
4

Here, the impact of the injunction will directly impact the public. Specifically,

5 Google seeks to exploit Hanginout’s revolutionary platform by adopting a virtually
6 identical mark. Consumers should be provided with truthful information about the
7 social-media platforms they use. In other words, the public has an interest in
8 preventing fraud and public confusion surrounding the use of unauthorized products
9 and services, which are held out as authentic. See Boston Telecommunications
10 Group, Inc. v. Wood, 588 F.3d 1201, 1207 (9th Cir. 2009). Accordingly, the public
11 interest favors an injunction, as does the irreparable harm already established.
12

Finally, there will be little to no harm to Google if the preliminary injunction is

13 granted. This will only require a name change of one of Google’s services. For
14 example, removing the HANGOUTS Q&A platform will not limit Google’s ability to
15 continue its search engine, email, and advertising efforts or even its Q&A under a
16 different brand.
17

Additionally, when balancing harms and considering the public interest, it is

18 important to note that Hanginout really has no other solution to this predicament than
19 an injunction. Google is flooding the market, Hanginout has no realistic way to
20 protect against the likely confusion of such a giant company using such a similar
21 mark. Google went into this with eyes wide open, and is effectively commandeering
22 a mark that Hanginout has poured itself into since 2008. Trademarks are property
23 rights that the law protects. The law prevents someone from trespassing on another’s
24 land and simply taking over the land, regardless of how large of a company the
25 trespasser may be. The same holds true with balancing the harms between a senior
26 trademark owner and the massive company that has invaded the senior trademark
27 holder’s rights. The same also holds true with the public interest in protecting the
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1 goodwill of the smaller senior user.
2

C.

3

In the Alternative, the Balance of Hardships Strongly Tips in
Hanginout’s Favor

4

“A preliminary injunction could issue where the likelihood of success is such

5 that serious questions going to the merits were raised and the balance of hardships
6 tips sharply in plaintiff’s favor,” so long as the plaintiff demonstrates irreparable
7 harm and shows that the injunction is in the public interest. Alliance for the Wild
8 Rockies v. Cottrell, 632 F.3d at 1131 (citation and internal quotation and editing
9 marks omitted). Here, because the balance of hardships so strongly tips in
10 Hanginout’s favor, the Court need go no further than recognize that Hanginout has
11 established serious questions going to the merits to justify the granting of a
12 preliminary injunction. Thus, no matter what point of the “sliding scale” the Court
13 uses, the preliminary injunction is plainly warranted.
14

D.

15

The injunction should be nationwide, covering Google’s use of “HANGOUTS”

Scope of the Injunction

16 on the internet in connection with social media. In the alternative, the Court can
17 order Google to merely cease any new uses of the term “HANGOUTS” or order an
18 injunction only covering California.
19 IV.

CONCLUSION

20

For the foregoing reasons, Hanginout respectfully requests its motion for a

21 preliminary injunction be granted. Google uses of the “Hangouts” mark should be
22 enjoined, especially in Google’s messaging platforms, social media, Question and
23 Answer (“Q&A”) platform, and advertising and solicitations relating to the same.
24 Any bond requirement should be waived based on the willfulness of the infringement,
25 or set at a minimal amount given the ease of complying with the injunction and
26 minimal effect on Google in the interim.
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Dated: January 22, 2014

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By /s/Andrew D. Skale
Andrew D. Skale

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Attorneys for Plaintiff
HANGINOUT, INC.

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MINTZ LEVIN COHN FERRIS GLOVSKY
AND POPEO PC

25581913v.9

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