Hangingout, Inc. v. Google, Inc.

Filing 30

RESPONSE in Opposition re 12 MOTION for Preliminary Injunction filed by Google, Inc.. (Attachments: # 1 Notice of Lodgment of Non-Electronic Exhibits, # 2 Declaration of Andrew Abrams, # 3 Table of Exhibits, # 4 Exhibit 1, # 5 Declaration of Serge Lachapelle, # 6 Declaration of Margret Caruso, # 7 Table of Exhibits, # 8 Exhibit 1, # 9 Exhibit 2, # 10 Exhibit 3, # 11 Exhibit 4, # 12 Exhibit 5, # 13 Exhibit 6, # 14 Exhibit 7, # 15 Exhibit 8, # 16 Exhibit 9, # 17 Declaration of Matthew Leske, # 18 Table of Exhibits, # 19 Exhibit 1, # 20 Exhibit 2, # 21 Exhibit 3, # 22 Exhibit 4, # 23 Declaration of Ellery Long, # 24 Table of Exhibits, # 25 Exhibit 1, # 26 Exhibit 2, # 27 Exhibit 3, # 28 Exhibit 4, # 29 Exhibit 5, # 30 Proof of Service)(Caruso, Margaret) (cxl).

1 QUINN EMANUEL URQUHART & SULLIVAN, LLP

Margret M. Caruso (Bar No. 243473)
Cheryl A. Galvin (Bar No. 252262)

555 Twin Dolphin Drive, 5th Floor
 Redwood Shores, California 94065-2139
Telephone: [phone]
 Facsimile: [phone]
 Attorneys for Defendant Google Inc.






UNITED STATES DISTRICT COURT



SOUTHERN DISTRICT OF CALIFORNIA


 HANGINOUT, INC.,

Plaintiff,




vs.

 GOOGLE INC.,


Defendant.

CASE NO. 13-CV-2811 AJB NLS
MEMORANDUM OF POINTS AND
AUTHORITIES IN SUPPORT OF
GOOGLE’S OPPOSITION TO
PLAINTIFF HANGINOUT, INC.’S
MOTION FOR PRELIMINARY
INJUNCTION



ORAL ARGUMENT REQUESTED



Date: April 25, 2014
Time: 2:00 p.m.
Courtroom 3B
Judge: Hon. Anthony J. Battaglia











Case No. 13-CV-2811 AJB NLS
MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF GOOGLE’S OPPOSITION TO
PLAINTIFF HANGINOUT, INC.’S MOTION FOR PRELIMINARY INJUNCTION

TABLE OF CONTENTS

1

Page

2
3
4
5
6
7
8
9

INTRODUCTION .......................................................................................................1 
FACTUAL BACKGROUND...................................................................................... 2 
LEGAL STANDARD ................................................................................................. 3 
ARGUMENT ...............................................................................................................4 
I. 

HANGINOUT CANNOT DEMONSTRATE IRREPARABLE HARM ......... 4 

II. 

HANGINOUT CANNOT DEMONSTRATE THAT IT IS LIKELY
TO SUCCEED ON THE MERITS ................................................................... 5 
A. 

10
11

Hanginout Does Not Have A Valid, Protectable Trademark That
It Can Enforce Against Google. .............................................................. 6 
1. 

14

Hanginout Is Not The Senior User Of The Marks. ...................... 7 

3. 

13

Google Used HANGOUTS in commerce in June 2011. .............. 6 

2. 

12

Hanginout Cannot Demonstrate That It Had Sufficient
Market Penetration To Establish Any Common Law
Trademark Rights Before Google Acquired Its Common
Law Trademark Rights. ..............................................................10 

15

B. 

16

Hanginout Cannot Demonstrate A Likelihood Of Confusion. .............12 

17

1. 

Hanginout’s Mark Is Weak......................................................... 13 

18

2. 

The Purposes and Functions of Google’s Products Are
Different Than Those of Hanginout’s Products. ........................ 13 

3. 

The Marks Are Not Similar In Sight, Sound, or Meaning. ........ 16 

4. 

There Is No Actual Confusion. ...................................................17 

5. 

The Marketing Channels Are Neutral. ....................................... 18 

6. 

Consumers Are Likely To Use Care When Selecting A
Product To Communicate With Others. ..................................... 18 

7. 

Google Had No Bad Intent In Adopting The HANGOUTS
Mark. ...........................................................................................19 

8. 

No Expansion Is Likely. ............................................................. 21 

19
20
21
22
23
24
25
26
27
28

C. 
III. 

Hanginout Cannot Demonstrate Passing Off. ....................................... 22 

THE BALANCE OF HARDSHIPS FAVORS GOOGLE ............................. 22 

Case No. 13-CV-2811 AJB NLS
-iMEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF GOOGLE’S OPPOSITION TO
PLAINTIFF HANGINOUT, INC.’S MOTION FOR PRELIMINARY INJUNCTION

1 IV. 

THE PUBLIC INTEREST WEIGHS IN FAVOR OF GOOGLE .................. 25 

2 CONCLUSION ..........................................................................................................25 
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
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28
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PLAINTIFF HANGINOUT, INC.’S MOTION FOR PRELIMINARY INJUNCTION

1

TABLE OF AUTHORITIES
Page(s)

2
3

Cases 

4 Allen v. Ghoulish Gallery, Civ. No. 06cv371, 2007 WL4207923 (S.D. Cal. Nov. 20, 2007) ........ 22
5 Alliance for the Wild Rockies v. Cottrell, 632 F.3d 1127 (9th Cir. 2011) ......................................... 3
6 Am. Trucking Ass’n, Inc. v. City of Los Angeles, 559 F.3d 1046 (9th Cir. 2009) ............................. 3
7 AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979)..................................................... 12, 21
8 Art Attacks Ink, LLC v. MGA Entertainment Inc., 581 F.3d 1138 (9th Cir. 2009) ........................... 9
9 Baker v. Simmons Co., 307 F.2d 458 (1st Cir. 1962) ...................................................................... 16
10 Brahma, Inc. v. Joe Yeargain, Inc., 665 F Supp. 1447 (N.D. Cal. 1987) ......................................... 5
11 Campbell v. Field Entm’t Inc., Case Nos. 12-CV-4233-LHK and 13-CV-233-LHK, 2013
WL4510629 (N.D. Cal. Aug. 22, 2013) ................................................................................ 3
12
Carter-Wallace, Inc. v. Procter & Gamble Co., 434 F.2d 794 (9th Cir. 1970) .............................. 21
13
Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175 (9th Cir. 1988) ...................................... 13
14
CG Roxane LLC v. Fiji Water Co. LLC, 569 F. Supp. 2d 1019 (N.D. Cal. 2008) ............................ 6
15
Chance v. Pac-Tel Teletrac Inc., 242 F. 3d 1151 (9th Cir. 2001) ................................................... 10
16
ConocoPhillips Co. v. Gonzalez, Case No. 5:12-cv-00576-LHK, 2012 WL538266 (N.D. Cal. Feb.
17
17, 2012)................................................................................................................................ 5
18 Credit One Corp. v. Credit One Financial, Inc., 661 F. Supp. 2d 1134 (C.D. Cal. 2009) ....... 11, 12
19 Edge Games, Inc. v. Electronic Arts, Inc., 745 F. Supp. 2d 1101 (N.D. Cal. 2010) ................ passim
20 Fox Television Stations, Inc. v. Barrydriller Content Systems, PLC, 915 F. Supp. 2d 1138 (C.D.
Cal. 2012) .............................................................................................................................. 3
21
Future Domain Corp. v. Trantor Sys. Ltd., Civ. No. C930812, 1993 WL270522 (N.D. Cal. May 3,
22
1993) ............................................................................................................................... 8, 10
.
23 Garden of Life, Inc. v. Letzer, 318 F. Supp. 2d 946 (C.D. Cal. 2004) .............................................. 8
24 Glow Indus., Inc. v. Lopez, 252 F. Supp. 2d 962 (C.D. Cal. 2002) ................................. 8, 10, 11, 12
25 Herb Reed Enters., LLC v. Fla. Entm’t Mgmt., 736 F.3d 1239 (9th Cir. 2013) ........................... 4, 5
26 Innospan Corp. v. Intuit, Inc., Case No. C 10-04422, 2010 WL5157157 (N.D. Cal. Dec. 3, 2010) 5
27 Instant Media, Inc. v. Microsoft Corp., Case. No. C 07-02639, 2007 WL2318948 (N.D. Cal. Aug.
13, 2007)....................................................................................................................... passim
28
Case No. 13-CV-2811 AJB NLS
-iiiMEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF GOOGLE’S OPPOSITION TO
PLAINTIFF HANGINOUT, INC.’S MOTION FOR PRELIMINARY INJUNCTION

1 Lindy Pen Co. v. Bic Pen Corp., 725 F.2d 1240 (9th Cir. 1984) .................................................... 17
2 M2 Software, Inc. v. Madacy Entm’t, 421 F.3d 1073 (9th Cir. 2005)............................................. 16
3 Matrix Motor Co v. Toyota Jidosha Kabushiki Kaisha, 290 F. Supp. 2d 1083 (C.D. Cal. 2003) ... 8,
17, 21
4
Mytee Prods. v. Shop Vac Corp., No. 13cv1610, 2013 WL5945060 (S.D. Cal. Nov. 4, 2013) ... 4, 5
5
Network Automation, Inc. v. Adv. Sys. Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011) ........... passim
6
Optimal Pets v. Nutri-Vet, LLC, 877 F. Supp. 2d 953 (C.D. Cal. 2012) ......................... 6, 10, 11, 12
7
Playboy Enters., Inc. v. Netscape Commc’ns Corp. 354 F.3d 1020 (9th Cir. 2004) ...................... 18
8
Playmakers LLC v. ESPN, Inc., 376 F.3d 894 (9th Cir. 2004) ....................................................... 22
9
Schussler v. Webster, Civ. Case No. 07cv2016 IEG, 2008 WL4350256 (S.D. Cal. Sept. 22, 2008) 8
10
Seltzer v. Green Day, Inc., 725 F.3d 1170 (9th Cir. 2013) ............................................................... 9
11
Smith v. Montoro, 648 F.2d 602 (9th Cir. 1981) ............................................................................. 22
12
Spiraledge, Inc. v. SeaWorld Entm’t, Inc., No. 13cv296-WQH-BLM, 2013 WL3467435 (S.D. Cal.
13
July 9, 2013) ...................................................................................................................... 4, 5
14 Sutter Home Winery, Inc. v. Madrona Vineyards, L.P., No. C 05-0587 MHP, 2005 WL701599
(N.D. Cal. Mar. 23, 2005) ................................................................................................... 13
15
The Active Network, Inc. v. Electronic Arts Inc., Case No. 10-cv-1158 BEN (WVG), 2010
16
WL3463378 (S.D. Cal. Aug. 31, 2010) ........................................................................ 23, 25
17 Wells Fargo & Co. v. Stagecoach Props., Inc., 685 F.2d 302 (9th Cir. 1982) ................................. 7
18 Winter v. Natural Res. Defense Council, Inc., 555 U.S. 7 (2008)........................................... 3, 4, 22
19 Yamaha Corp. v. Ryan, Case No. 89-5574-R, 1989 WL167604 (C.D. Cal. Nov. 6, 1989) ............ 13
20
21
22
23
24
25
26
27
28
Case No. 13-CV-2811 AJB NLS
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PLAINTIFF HANGINOUT, INC.’S MOTION FOR PRELIMINARY INJUNCTION

INTRODUCTION

1
2

Plaintiff Hanginout, Inc. (“Hanginout”) waited more than two and a half years

3 after Google Inc. (“Google”) first began to use the HANGOUTS mark to file its
4 motion for preliminary injunction (“Motion”).

Hanginout’s unreasonable delay

5 combined with its complete lack of evidence of any actual or imminent harm
6 confirms that Hanginout cannot satisfy its burden on irreparable harm, which is
7 required to obtain a preliminary injunction.

This alone defeats the Motion. But it

8 is far from the only reason to deny the Motion.
9

Hanginout also fails to demonstrate that it is likely to succeed on the merits—

10 either on the fundamental question of whether it has a valid, protectable trademark,
11 or on the critical issue of likelihood of confusion. Despite swearing under oath to
12 the PTO that it accurately identified—four separate times—that its first use date of
13 the HANGINOUT marks anywhere and in commerce was June 6, 2012, Hanginout
14 now argues to this Court a first use date of more than a year earlier.

Even if

15 credited, Hanginout’s evidence is legally insufficient to establish priority of use and
16 sufficient market penetration to enforce its asserted mark against Google.
17 Likewise, even if Hanginout’s suit survives Google’s pending motion to dismiss, it
18 is unlikely to survive summary judgment, much less justify a verdict that confusion
19 is likely.
20

Nor can Hanginout establish that the balance of hardships tips in its favor.

21 Google has spent

years and $

million developing and promoting its

22 Hangouts product, which has an installed base of millions of users, has been
23 featured by prominent major U.S. newspapers, news channels, and business and
24 technology magazines and websites, and has built substantial brand recognition and
25 goodwill.

Accordingly, the balance of hardships heavily weighs against an

26 injunction.

An injunction would disrupt service to third-party developers, partners,

27 and millions of users.
28 Motion.

Accordingly, the public interest requires denying the

Each of these reasons independently, and overwhelmingly when

Case No. 13-CV-2811 AJB NLS
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PLAINTIFF HANGINOUT, INC.’S MOTION FOR PRELIMINARY INJUNCTION

1 considered together, shows that Hanginout’s motion for a preliminary injunction
2 should be denied.

FACTUAL BACKGROUND

3

On July 12, 2012, Plaintiff filed its U.S. trademark applications for the

4

5 HANGINOUT word and design marks, swearing under oath that the first use of
6 those asserted marks was the month before then—June 6, 2012.
7 at Attachments A, B.)
8 changed its story.

(Mot. at 4, Dkt. 14

It was not until nearly a year and a half later that Hanginout

In moving to dismiss Plaintiff’s original complaint, Google

9 pointed out that Hanginout’s claimed first use date was almost a year after Google
10 began to use HANGOUTS in commerce in June 2011.

Hanginout responded by

11 filing an amended complaint, alleging that it “commercialized” its products earlier.
12 (Dkt. 9-1 at 2 n.1; Dkt. 14 at ¶¶ 9-10.)

Hanginout now contends that it “adopted”

13 the HANGINOUT logo and word mark in November 2008, but it does not present
14 any evidence of alleged public use of HANGOUTS until May 4, 2011, when it
15 claims to have announced its beta “preview launch.”

(Mot. at 3-4, Dkt. 12-7 at 3.)

16 Hanginout asserts that by the end of May 2011, “over 200” customers registered for
17 the HANGINOUT product, and submits evidence of scattered social media efforts.
18 (Id.)

It offers no evidence of paid advertising or promotion, and it is unclear

19 whether more than a couple dozen people actually saw Hanginout’s “publicity,”
20 much less came to associate HANGINOUT with the product Hanginout allegedly
21 offered before June 28, 2011 when Google launched Hangouts.
22 and exhibits thereto.)

(See Dkt. 12-2,

Hanginout has not amended the first use dates on its

23 trademark applications. (Caruso Decl. ¶ 2; Dkt. 14 at 23.)
24

Meanwhile, by 2009 Google had already developed an internal version of

25 what became its Hangouts product, referring to a prototype as “The Hangout.”
26 (Lachappelle Decl. ¶ 4.)

On June 28, 2011, Google publicly launched Hangouts,

27 as one of several products that made up Google+, a social layer that connects many
28 of Google’s products.

(Dkt. 12-2 ¶ 39, Ex. 22; accord Leske Decl., ¶ 3, Exs. 1-2.)

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PLAINTIFF HANGINOUT, INC.’S MOTION FOR PRELIMINARY INJUNCTION

1 Unlike Plaintiff’s product, which is essentially a platform for sharing pre-recorded
2 video messages, or “video profiles,” Hangouts focuses on live interactions among its
3 users, including, most significantly, instant messaging and real-time video
4 conferencing. ( See, e.g., Caruso Decl. ¶ 3, Ex. 1; Leske Decl. ¶¶ 3, 6.)

Hangouts

5 had 50,000 unique users in the United States the very first day it launched and
6 150,000 by July 8, 2011.

billion Hangout video conferences. In the last 30 days

7 initiated more than
8 alone, more than

(Leske Decl. ¶ 4.) Since Hangouts launched, users have

million unique users in the United States have had a Hangouts

9 video conference. ( Id. at ¶ 5.)
10 installed on more than

And the mobile app version of Hangouts is

million devices. (Id. at ¶ 6.)
LEGAL STANDARD

11

“A preliminary injunction is an extraordinary remedy never awarded as of

12

13 right,” but only “upon a clear showing that the plaintiff is entitled to such relief.”
14 Winter v. Natural Res. Defense Council, Inc., 555 U.S. 7, 22, 24 (2008).

“A

15 plaintiff seeking a preliminary injunction must establish that he is likely to succeed
16 on the merits, that he is likely to suffer irreparable harm in the absence of
17 preliminary relief, that the balance of equities tips in his favor, and that an injunction
18 is in the public interest.”

Id. at 20.1

“The function of a preliminary injunction is

19 to maintain the status quo ante litem pending a determination of the action on the
20
21

1

Hanginout cites to Alliance for the Wild Rockies v. Cottrell, 632 F.3d 1127

22 (9th Cir. 2011) for the proposition that the Ninth Circuit has a sliding-scale approach
23 to determining whether to grant a preliminary injunction (Mot. at 8), but the sliding

scale is not good law under Winter. See, e.g., Campbell v. Field Entm’t Inc., Case

24 Nos. 12-CV-4233-LHK and 13-CV-233-LHK, 2013 WL4510629, at *4 (N.D. Cal.
25 Aug. 22, 2013); see also Fox Television Stations, Inc. v. Barrydriller Content

Systems, PLC, 915 F. Supp. 2d 1138,1141 n.6 (C.D. Cal. 2012) (quoting Am.

26 Trucking Ass’n, Inc. v. City of Los Angeles, 559 F.3d 1046, 1052 (9th Cir. 2009)

27 (“To the extent that our cases have suggested a lesser standard [than that announced
28

in Winter], they are no longer controlling, or even viable.”)).

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PLAINTIFF HANGINOUT, INC.’S MOTION FOR PRELIMINARY INJUNCTION

1 merits.”

Instant Media, Inc. v. Microsoft Corp., Case. No. C 07-02639, 2007

2 WL2318948, at*5 (N.D. Cal. Aug. 13, 2007).

ARGUMENT

3
4 I.

HANGINOUT CANNOT DEMONSTRATE IRREPARABLE HARM

5

To obtain a preliminary injunction, a plaintiff must “demonstrate that

6 irreparable injury is likely in the absence of an injunction” and that there is an
7 “immediate threatened injury.”

Winter, 555 U.S. at 22. A “speculative” injury or

8 “a mere possibility of some remote future injury, or a conjectural or hypothetical
9 injury” is not enough.

Spiraledge, Inc. v. SeaWorld Entm’t, Inc., No. 13cv296-

10 WQH-BLM, 2013 WL3467435, at * 2 (S.D. Cal. July 9, 2013); see also Herb Reed
11 Enters., LLC v. Fla. Entm’t Mgmt., 736 F.3d 1239, 1250-51 (9th Cir. 2013); Mytee
12 Prods. v. Shop Vac Corp., No. 13cv1610, 2013 WL5945060, at *6 (S.D. Cal. Nov.
13 4, 2013).

A long delay before seeking a preliminary injunction evidences such a

14 lack of urgency and irreparable harm is alone sufficient grounds to deny a motion
15 for preliminary injunction.

Edge Games, Inc. v. Electronic Arts, Inc., 745 F. Supp.

16 2d 1101, 1117-1118 (N.D. Cal. 2010) (denying injunction sought 21 months after
17 the defendant released its product).
18

As Hanginout acknowledges, Google announced Hangouts on June 28, 2011.

19 (Mot. at 6; Dkt. 12-2 at ¶ 39, Ex. 22.)

More than 460,000 people viewed this

20 announcement by June 30, 2011, and it received significant media attention.
21 (Leske Decl. ¶ 3; Long Decl. ¶ 3.)

Hangouts had 50,000 unique users the first day

22 it launched—more than six times the number Plaintiff claims have registered for
23 Hanginout currently.

(Leske Decl. ¶ 4; Dkt. 12-2 ¶ 17.) Yet Hanginout did not

24 file its complaint until 29 months after Google’s first public use of the HANGOUTS
25 mark. (Dkt. 1.) It was almost two more months, and only after Google moved to
26 dismiss Hanginout’s original complaint, that Hanginout filed its motion for a
27 preliminary injunction. (Dkt . 12.) Delays of this magnitude routinely result in
28 finding that the plaintiff will not suffer irreparable harm.

See, e.g., Spiraledge,

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PLAINTIFF HANGINOUT, INC.’S MOTION FOR PRELIMINARY INJUNCTION

1 2013 WL3467435, at *5 (13 month delay); ConocoPhillips Co. v. Gonzalez, Case
2 No. 5:12-cv-00576-LHK, 2012 WL538266, at **3-4 (N.D. Cal. Feb. 17, 2012) (8
3 month delay); Edge Games, 745 F. Supp. 2d at 1117-1118 (21 month delay);
4 Brahma, Inc. v. Joe Yeargain, Inc., 665 F Supp. 1447, 1453 (N.D. Cal. 1987)
5 (nearly 2 year delay).

Hanginout’s 31 month delay demonstrates the actual

6 “irreparable harm” it is likely to suffer—none.

In addition, Hanginout fails to offer any evidence that it would suffer

7

8 irreparable harm absent an injunction (Mot. at 22-23), such as evidence that it has
9 experienced a decline in customers or goodwill, that such a decline is likely, that
10 actual confusion has occurred, or that any “immediate threatened injury” exists.
11 Mytee Prods., 2013 WL5945060, at *6; see also Innospan Corp. v. Intuit, Inc., Case
12 No. C 10-04422, 2010 WL5157157, at *2 (N.D. Cal. Dec. 3, 2010) (denying
13 preliminary injunction where plaintiff failed to show “that further losses are
14 imminent—or, indeed, that it has anything left to lose”).
15 “speculative” claims of harm are insufficient.
16 *6.

Hanginout’s

Mytee Prods., 2013 WL5945060, at

Its failure to submit “probative, nonspeculative evidence” that it has “lost, or

17 likely will lose, prospective customers or goodwill” due to Google’s use of the
18 HANGOUTS mark compels denial of the Motion.

Spiraledge, 2013 WL3467435,

19 at *4; see also Edge Games, 745 F. Supp. 2d at 1117-18 (denying injunction where
20 plaintiff failed to show “why issuing a preliminary injunction now would prevent
21 any irreparable harm beyond the damage already done.”).
22 II.
23
24
25
26
27

HANGINOUT CANNOT DEMONSTRATE THAT IT IS LIKELY TO
SUCCEED ON THE MERITS
Hanginout also is not likely to succeed on the merits.

To prevail, it must

prove that it owns a valid, protectable trademark, and that the defendant is using a
mark confusingly similar to the plaintiff’s mark in commerce. See, e.g., Herb Reed
Enters., 736 F. 3d at 1247. Hanginout fails to show it is likely to prove either.

28
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PLAINTIFF HANGINOUT, INC.’S MOTION FOR PRELIMINARY INJUNCTION

A.

1
2
3
4
5
6
7
8
9
10
11
12
13
14

Because HANGINOUT is not a registered trademark, Plaintiff must
demonstrate that as of the date Google used HANGOUTS, HANGINOUT had
acquired common law trademark rights in the geographical area where Google used
its HANGOUTS mark—i.e., nationwide—and that Plaintiff continuously used the
mark there.2

17
18
19
20
21
22

E.g., Optimal Pets v. Nutri-Vet, LLC, 877 F. Supp. 2d 953, 958 (C.D.

Cal. 2012). (“[T]he issue presented is whether, as of the date that Defendants used
the name ‘Optimal Pet’ in commerce (August 2008), OPI had acquired common law
trademark rights with regard to a geographical area in which Defendants used the
name”).

“To establish enforceable common law trademark rights in a geographical

area, a plaintiff must prove that, in that area, (1) it is the senior user of the mark, and
(2) it has established legally sufficient market penetration.”

Id. at 959.

Hanginout will not be able to prove that.
1.

15
16

Hanginout Does Not Have A Valid, Protectable Trademark That It
Can Enforce Against Google.

Google Used HANGOUTS in commerce in June 2011.

Google indisputably used HANGOUTS in commerce on June 28, 2011.
(Dkt. 12-2 ¶ 39, Ex. 22; accord Leske Decl. ¶ 3, Exs. 1-2.) This use was
nationwide.

Google’s official blog post announcing Hangouts was viewed more

than 460,000 times by June 30, 2011. (Leske Decl., ¶ 3.) Press reports about
Hangouts began immediately. Within a day of Google’s announcement of
Hangouts, numerous articles about Hangouts had appeared in major U.S. news,
business, and technology outlets, including The New York Times, NBC News, CNN,

23
24

Google intends to oppose the registration of HANGINOUT and suspend the
25 proceeding pending the disposition of this litigation. But even if it were registered
before the end of this suit, the presumption of the registration would only apply as of
26 the date of registration. E.g., CG Roxane LLC v. Fiji Water Co. LLC, 569 F. Supp.
27 2d 1019, 1032 (N.D. Cal. 2008). Thus, Hanginout cannot avoid the need to prove
market penetration before June 28, 2011.
2

28

Case No. 13-CV-2811 AJB NLS
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PLAINTIFF HANGINOUT, INC.’S MOTION FOR PRELIMINARY INJUNCTION

1 Fox News, Bloomberg Businessweek, Computer World, Rolling Stone, and PC
2 Magazine, as well as on top technology websites such as Search Engine Land, CNet,
3 TechCrunch, Mashable, DVICE, The Next Web, AllThingsD, Gizmodo, The Wire,
4 and Engadget.
5 Hangouts.

(Long Decl., ¶ 3, Exs. 1, 2.) Consumers immediately began using

The day it was announced, Hangouts had 50,000 unique users in the

6 United States.

(Leske Decl., ¶ 4.) By July 8, 2011, it had 150,000 unique users in

7 the United States.

(Id.) Plaintiff’s insistence that Google did not begin using

8 Hangouts until almost two years after June 2011 (Mot. at 7) is undermined by the
9 actual evidence.

2.

10

Hanginout Is Not The Senior User Of The Marks.

On July 12, 2012, more than a year after Google’s successful launch of

11

12 Hangouts, the plaintiff filed trademark applications for the HANGINOUT word
13 mark and design mark with the USPTO.

In those applications, it represented under

14 oath, four times, that its first use date for its HANGINOUT marks was within a
15 month of its filing—June 6, 2012.

(Dkt. 14, ¶ 22, Exs. A, B.) Hanginout not only

16 represented that its first use of HANGINOUT in commerce was June 6, 2012, but
17 also that was its first use anywhere.

(Id.)

After Google raised the priority issue,

18 Hanginout began to claim a first use date of more than a year earlier.
19 20.)

(Dkt. 14, ¶

Because Hanginout submitted sworn statements to the USPTO regarding its

20 date of first use of the marks anywhere and also the first date of the use of the marks
21 in commerce, it must prove any earlier date by clear and convincing evidence.
22 Wells Fargo & Co. v. Stagecoach Props., Inc., 685 F.2d 302, 304 n.1 (9th Cir.
23 1982).

Nowhere in its pleadings does Hanginout offer any explanation for the

24 change in date.
25

Hanginout is unable to prove its use contentions by clear and convincing

26 evidence, yet even if were to do so, such contentions would not be legally sufficient
27 to establish seniority over Google’s nationwide use of HANGOUTS.

Seniority of

28 use can only be established by commercial usage; “it is not enough to have invented
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1 the mark first or even to have registered it first.”

Glow Indus., Inc. v. Lopez, 252 F.

2 Supp. 2d 962, 980-81 (C.D. Cal. 2002). For example, Future Domain Corp. v.
3 Trantor Sys. Ltd., held the actions of a company that advertised its product at the
4 computer industry’s largest U.S. trade show, where up to 143,000 people may have
5 seen the mark, distributed 3,500 information fliers and 1,000 corporate brochures
6 containing the mark, obtained 2,400 completed inquiry forms, and received and
7 fulfilled over 200 requests for preliminary versions of the product “did not create a
8 sufficient association in the public mind between the mark and [the company]” to
9 establish seniority of use.

Civ. No. C 93 0812, 1993 WL270522, at **1- 7 (N.D.

10 Cal. May 3, 1993); see also Garden of Life, Inc. v. Letzer, 318 F. Supp. 2d 946, 95711 960 (C.D. Cal. 2004).
12

Hanginout offers far less proof.

Hanginout claims that it first thought of the HANGINOUT marks in

13 November 2008 and had a “vision” in 2009 about its future product (Mot. at 2.)
14 But “[a]n intent to eventually commercially exploit an idea is not sufficient to confer
15 trademark rights or meet the ‘in commerce’ requirement.”

Schussler v. Webster,

16 Civ. Case No. 07cv2016 IEG, 2008 WL4350256, at * 4 (S.D. Cal. Sept. 22, 2008),
17 amended and vacated in part on other grounds on reconsideration; see also Future
18 Domain Corp., 1993 WL270522, at *6.
19 goals and dreams.”

“Trademark rights are not established by

Matrix Motor Co v. Toyota Jidosha Kabushiki Kaisha, 290 F.

20 Supp. 2d 1083, 1089 (C.D. Cal. 2003).
21

The only evidence that Hanginout provides of its “aggressive marketing

22 campaign” before June 28, 2011 are exhibits showing two promotional videos it
23 created to show on YouTube, a company Facebook page, and an announcement of
24 its preview launch on LinkedIn.

(Mot. at 3.)

As in Future Domain, Hanginout

25 fails to provide evidence that a sufficient number of people actually saw or noticed
26 its promotional efforts.

1993 WL270522, at *7. But the evidence it does provide

27 reveals sparse public engagement.

Its two YouTube videos were ultimately poorly

28 viewed—no more than 300 times and 20 times, respectively, before July 1, 2011.
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1 (Dkt. 12-2, ¶¶ 14, 19; Caruso Decl. ¶¶ 4-5, Exs. 2-5.)

The only third party

2 “publicity” was a brief article on what appears to be a lesser-known tech blog called
3 Tech Cocktail.
4 Dkt. 12-11.)

The article received no likes, tweets, or shares. (Dkt. 12-2, ¶ 16,
What Hanginout describes as an “endorsement on Facebook,” by

5 Tech Cocktail received only two “likes”—one of which was from the then6 COO/CFO of Hanginout.

(Dkt. 12-2, ¶ 15, Dkt. 12-10; Caruso Decl. ¶ 7, Ex. 6.)

7 And an announcement by the company of its “launch” of the “preview” as part of a
8 “Tech Cocktail discussion group,” on LinkedIn received only one “like.”
9 2, ¶ 13, Dkt. 12-8.)

(Dkt. 12-

Hanginout’s Twitter feed shows 48 tweets before June 28,

10 2011—of which 18 were from the company.

(Dkt. 12-2, ¶11, Dkt. 12-7.)

11 Collectively, this evidence is insufficient to show that “an appropriate segment of
12 the public mind” came to identify the alleged mark with Hanginout’s goods or
13 services.

Seltzer v. Green Day, Inc., 725 F.3d 1170, 1180 (9th Cir. 2013). The

14 YouTube links to the two promotional videos Plaintiff created have received barely
15 more than 400 views from their posting to the present.

Of those views, some

16 occurred well after June 2011 when Hangouts launched, and presumably some came
17 from Hanginout’s employees and the attorneys in this action.

(Caruso Decl. ¶¶ 4-

18 5, Exs. 2-5.)
19

The true test of an advertising campaign’s success is, of course, the number of

20 users it converts to the product.

E.g., Art Attacks Ink, LLC v. MGA Entertainment

21 Inc., 581 F.3d 1138, 1146 (9th Cir. 2009).
22 inquiry.

Hanginout fares no better on this

It does not even argue it had more than 200 users of its “preview” version

23 before June 28, 2011, and it offers no proof of the 200 beyond its CEO’s assertion.
24 (Mot. at 9; Dkt. 12-2 at ¶ 17; Dkt. 12-7 at 3; Dkt 12-8 at 2 (“We launched our
25 preview today.”); Dkt. 12-11 at 3 (“Hanginout is still in preview mode”).

He does

26 not represent that records exist reflecting the dates new users joined or their
27 numbers, nor that he accessed those records.

Even if credited, Hanginout’s

28 evidence does not rise to the level that courts have deemed insufficient to establish
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1 senior use.

E.g., Future Domain, 1993 WL270522, at *2 (evidence of 200 users of

2 preliminary version of product was insufficient to establish use in commerce).
3

Hanginout’s selective quotation from Chance v. Pac-Tel Teletrac Inc., 242 F.

4 3d 1151 (9th Cir. 2001) (cited in Mot. at 9) cannot save its cause.

Chance referred

5 to a prior decision that held “a single sale or shipment may be sufficient to support
6 an application to register the mark, providing that this shipment or sale has the
7 color of a bona fide transaction and is accompanied or followed by activities which
8 would tend to indicate a continuing effort or intent to continue such use and place
9 the product on the market on a commercial scale within a time demonstrated to be
10 reasonable in the particular trade.”

Id. at 1157 (emphasis added). Hanginout

11 does not need to prove bona fide use to support a trademark application, but
12 sufficient use to justify senior common law trademark rights.
13 does not satisfy the conditions Chance identifies.

Further, its evidence

And tellingly, Chance itself

14 rejected the sufficiency of two sales, even accompanied by promotional activity, to
15 establish bona fide use in commerce.

3.

16
17
18

Id. at 1160.

Hanginout Cannot Demonstrate That It Had Sufficient Market
Penetration To Establish Any Common Law Trademark Rights
Before Google Acquired Its Common Law Trademark Rights.

Market penetration, which is required to establish common law trademark

19 rights, is determined by examining information such as the trademark user’s
20 “volume of sales and growth trends, the number of persons buying the trademarked
21 product in relation to the number of potential purchasers, and the amount of
22 advertising.”

Glow, 252 F. Supp. 2d at 983. This standard is not easily satisfied.

23 For example, a company that sold a total of $35,000 in pet supplies to pet
24 professionals in 16 states, maintained a website, and spent more than $100,000 in
25 advertising, including national magazine advertising, failed to establish sufficient
26 market penetration nationwide to have common law rights.

Optimal Pets, 877 F.

27 Supp. 2d at 962-964 (granting defendant judgment as a matter of law).

Similarly,

28 “GLOW” beauty products had not achieved sufficient market penetration to
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1 establish common law rights in any specific geographic area even though they were
2 mentioned in InStyle and Los Angeles magazines and had been sold to customers in
3 all fifty states, including at the company’s Los Angeles retail store, at Bergdorf
4 Goodman in New York City, at Nordstrom stores and Ritz Carlton Hotels, at retail
5 stores in eleven states, on a national beauty website, and through the company’s
6 own website.

Glow, 252 F. Supp. 2d at 983-986. And a company that maintained

7 business licenses in two states, one where there were never any offices and another
8 where the office had since closed, with no evidence of recent actual sales in those
9 states, did not establish common law trademark rights in those states.

Credit One

10 Corp. v. Credit One Financial, Inc., 661 F. Supp. 2d 1134, 1138 (C.D. Cal. 2009).
11

As discussed above, Hanginout’s evidence reveals the lack of market

12 penetration that can reasonably be attributed to its pre-June 28, 2011 efforts.

Its de

13 minimus use fails to establish market penetration in any area—much less
14 nationwide.

See, e.g., Optimal Pets, 877 F. Supp. 2d at 962 (finding no market

15 penetration in any geographic area, including where there were sales of $1,099.29
16 and $1,888.69 almost entirely in a single zip code in each of two states); Glow, 252
17 F. Supp. 2d at 983-986.

Further, for the time period before June 2011, Hanginout

18 offers no evidence regarding its volume of sales and growth trends, the number of
19 persons buying or downloading the trademarked product in relation to the number of
20 potential purchasers or downloaders, or the amount of its advertising costs or reach.
21 See Glow, 252 F. Supp. 2d at 984-85 (denying preliminary injunction where plaintiff
22 provided “little information that would assist the court in quantifying market
23 penetration, sales levels, growth trends, or the number of people who purchased the
24 company’s products in relation to the number of potential customers”).
25 Hanginout focuses on its alleged growth trends in 2012 and 2013.

Instead,

(Mot. at 4-6.)

26 But that information is irrelevant, because Google had begun using HANGOUTS
27 long before that.

(See Section II.A.1, supra.)

28
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1

Given the weakness of its evidence, Hanginout devotes the vast majority of its

2 discussion of market penetration arguing that it had a nationwide “natural zone of
3 expansion,” based primarily on Hanginout’s use of the Internet.

(Mot. at 10-15.)

4 But when the evidence is considered during the relevant time frame, before June
5 2011, Hanginout’s “natural zone of expansion” argument fails.
6 877 F. Supp. 2d at 958.

See Optimal Pets,

The natural zone of expansion is defined “narrowly.”

7 Credit One Corp. v. Credit One Fin., Inc., 661 F. Supp. 2d 1134, 1138 (C.D. Cal.
8 2009).

And where, as here, Plaintiff has not adequately demonstrated the extent of

9 its market penetration before Google began its nationwide use, “a zone of expansion
10 that encompasses the entire nation is about as large a ‘leap’ as it is possible to
11 imagine.”

Glow, 252 F. Supp. 2d at 986. That Hanginout had a “vision” that its

12 platform “was meant to transcend and reach into every home, every business, in the
13 United States” (Mot. at 14) does not make nationwide use a reality.
14 Hanginout’s use of the Internet.

Nor does

None of the cases it cites (Mot. at 11-12) find

15 adequate market penetration due to a mere presence on the Internet.

In any event,

16 Hanginout does not have “penetration of cyberspace” and certainly does not have
17 “penetration of the entire United States,” as it claims (Mot. at 12).
18

B.

Hanginout Cannot Demonstrate A Likelihood Of Confusion.

19

To prevail on its claim of trademark infringement, Hanginout must also show

20 it is likely to prove that Google’s use of the HANGOUTS mark is likely to cause
21 consumer confusion as to the “origin, sponsorship, or approval” of the goods or
22 services.

15 U.S.C. § 1125(a)(1). To determine whether confusion is likely, the

23 Ninth Circuit has developed an eight-factor test.
24 F.2d 341, 348-49 (9th Cir. 1979).

AMF Inc. v. Sleekcraft Boats, 599

“The Sleekcraft factors are intended as an

25 adaptable proxy for consumer confusion, not a rote checklist.”

Network

26 Automation, Inc. v. Adv. Sys. Concepts, Inc., 638 F.3d 1137, 1145 (9th Cir. 2011).
27 They should be applied in a “flexible manner,” with an emphasis on those most
28 relevant to the facts.

Id.

Examination of these factors confirms what history has

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1 already shown—no confusion is likely here.

1.

2

Hanginout’s Mark Is Weak.

The “strength of the mark” factor includes not just conceptual strength, such

3

4 as whether the trademark is arbitrary, suggestive or descriptive, but also its
5 “commercial strength,” which is based on “actual marketplace recognition.”
6 Network Automation, 638 F.3d at 1149.

“Marks may be strengthened by extensive

7 advertising, length of time in business, public recognition, and uniqueness.”
8 Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1179 (9th Cir. 1988); see
9 also Sutter Home Winery, Inc. v. Madrona Vineyards, L.P., No. C 05-0587 MHP,
10 2005 WL701599, at *9 (N.D. Cal. Mar. 23, 2005) (finding mark commercially
11 strong where plaintiff had sold over 120,000 cases of wine under the mark and had
12 undertaken “substantial” promotional efforts).

As discussed in Section II.A., supra, Google’s HANGOUTS mark is

13

14 commercially strong; the HANGINOUT mark is not.

Hanginout does not even

15 argue otherwise.3 (Mot. at 19.) Therefore, this factor favors Google.

2.

16
17

The Purposes and Functions of Google’s Products Are Different
Than Those of Hanginout’s Products.

“The proximity of goods is measured by whether the products are:

18
19
20
21
22
23
24
25
26
27
28

Hanginout asserts that Google has conceded HANGINOUT is “inherently
distinctive” because Google identifies its HANGOUTS mark with a TM indication.
Id. This argument rests on a false equivalence of the parties’ marks and an
erroneous understanding of the meaning of a TM symbol, which reflects that the
trademark owner has common law rights in a trademark. Yamaha Corp. v. Ryan
does not hold otherwise. Case No. 89-5574-R, 1989 WL167604, at **1-2 (C.D.
Cal. Nov. 6, 1989) (cited in Mot. at 20). The Yamaha court did not find that the
defendant’s use of an identical mark was an admission of inherent distinctiveness,
but rather distinctiveness in general, which can include a mark that had acquired
secondary meaning. Id. at *3. Secondary meaning, like market penetration,
discussed in Section II.A., is obtained through actual use and market penetration.
Google has acquired it in HANGOUTS; Plaintiff has not.
3

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1 (1) complementary; (2) sold to the same class of purchasers; and (3) similar in use
2 and function.”

Network Automation, 638 F.3d at 1150. This is not a binary

3 determination.

That two products are offered to an overlapping broad class of

4 consumers and that their use and function could be described in a sufficiently broad
5 category to encompass both does not favor Plaintiff where there are “significant and
6 fundamental differences in functionality.”

Instant Media, 2007 WL2318948, at

7 **11-12 (denying injunction even though both parties used an “I’M” mark in freely
8 downloadable software that was offered over the Internet and had some video
9 capability).

That is the case here. Although both parties’ products contain some

10 functionality related to the broad category of video communications, the purposes
11 and functions of the products are neither identical nor interchangeable.

Google’s Hangouts enables real-time, live video conferencing, instant

12

13 messaging and other communications features among multiple parties.
14 Decl. ¶¶ 3, 6.)

(Leske

In contrast, Plaintiff’s Hanginout is essentially a platform for

15 posting and viewing pre-recorded video messages, or “video profiles.”
16 Decl. ¶ 3, Ex. 1.)

(Caruso

Whatever “interaction” Plaintiff’s product provides (Mot. at 16),

17 Hanginout offers no evidence that it is capable of live, real-time video, instant
18 messaging or texting, or any other real-time, quick response communications.
19 Rather, it allows users to respond to pre-recorded and videotaped questions “by
20 recording and publishing video responses, then sharing them from anywhere at any
21 time.”

(Dkt. 12-2 at ¶ 4.) Admittedly, Google also has a product for posting and

22 viewing pre-recorded videos, but it is called YouTube.

(Leske Decl. ¶ 9.)

Hanginout’s argument about proximity of the goods appears to be based

23

24 entirely on its inaccurate characterization of the “Q&A App” as the “Hangouts Q&A
25 platform.” (Mot. at 17; cf. Dkt. 14 (FAC) ¶ 37 (describing functionality of
26 Hangouts).)

There is no such thing as the “Hangouts Q&A platform.”

Google’s

27 “Q&A app” is a feature of Hangouts On Air (“HOA”), which the host can turn on or
28 off.

(Leske Decl. ¶ 11, Ex. 4.) Unlike Plaintiff’s product, the Q&A app is not a

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1 stand alone app, “which can be downloaded as a smartphone app on iTunes and
2 GooglePlay.” (Mot. at 16.) Further, HOA is not, as Plaintiff presents it, a
3 renamed version of Hangouts.
4 platform ‘Hangouts On Air.’”).)

(Mot. at 7 (“At this point, Google was calling its
Rather, it is a separate product from Hangouts

5 with different functionality, a different trademarked brand name, and a different
6 support team at Google.

(Leske Decl. ¶ 8, Ex. 3; Dkt. 12-2, ¶ 46, Ex. 29.)

7 Accordingly, both HOA and its features, including the “Q&A App,” should be
8 irrelevant to the likelihood of confusion analysis, given that HANGOUTS is the
9 only trademark Plaintiff discusses when comparing the similarity of the marks and
10 actual confusion (Mot. at 18, 20), and Plaintiff does not even mention Hangouts On
11 Air in its complaint except for once, in the phrase “Live Q&A for Hangouts On Air”
12 (Dkt. 14 at ¶ 35).

When performing the likelihood of confusion analysis, a plaintiff

13 cannot mix and match names, functionalities, and other factors to suit its fancy; it
14 must consistently compare the challenged mark and the goods or services offered in
15 commerce under that mark.
16

Even if Plaintiff were allowed to mix and match products in its analysis, its

17 assertions that the “Q&A app” “mirror[s]” and is “virtually identical” to Hanginout,
18 and that they are “directly competitive and identical” are empirically false. (Mot.
19 at 7, 17.)

HOA allows multiple users to participate in a live video conference, but

20 instead of being private among its participants like Hangouts is, HOA is live21 streamed, essentially broadcast, publicly by the host.

(Leske Decl. ¶ 9.) Since

22 Google announced HOA on September 20, 2011, it has been used by the Dalai
23 Lama and Bishop Desmond Tutu, as well as many other users, who have initiated
24 more than

million HOA sessions. (Leske Decl. ¶ 10; Long Decl. ¶4, Exs. 4, 5.)

25 Hanginout’s product offers no comparable live, real-time conversation component
26 and no live broadcasting.
27

(Caruso Decl. ¶ 3; Ex. 1.)

Likewise, the functionality of the Q&A app for HOA, when enabled, is

28 fundamentally different from Hanginout’s product.

Instant Media, 2007

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1 WL2318948, at *12.

The user interface of the Q&A App allows viewers of a live-

2 stream HOA session to submit written questions to ask the host of the HOA.
3 (Leske Decl. ¶ 11.)

The text of those written questions is publicly viewable, and

4 other users can vote on them to suggest which questions the host should answer.
5 (Id.)

The Q&A App also allows the host of the HOA session to view the list of

6 questions and vote tallies, which he or she can use to decide which questions to
7 answer. ( Id.)

If the host uses the functionality of marking when a particular

8 question was answered during the live broadcast, the list of questions can be visible
9 later to viewers of the YouTube recording of the HOA session, who can use it as an
10 index to find the time point of a particular answer.

(Id.) Plaintiff’s product does

11 not offer real-time uses; it has no simultaneous viewing or voting feature; it doesn’t
12 permit the “owner” of the video communication to select live questions (or typed
13 questions) to answer or to obtain immediate feedback on the popularity of questions.
14 (Caruso Dec. ¶ 3, Ex. 1.)

Because every Google product Plaintiff attacks has

15 “significant and fundamental differences in functionality” from Google’s Hangouts
16 product, this factor favors Google.

3.

17
18

Instant Media, 2007 WL2318948, at *12.

The Marks Are Not Similar In Sight, Sound, or Meaning.

The similarity of the marks is determined by assessing their “sight, sound, and

19 meaning” and “viewing the trademark as a whole, as it appears in the marketplace.”
20 M2 Software, Inc. v. Madacy Entm’t, 421 F.3d 1073, 1082 (9th Cir. 2005).
21 parties’ marks are significantly different.

The

Unlike the two decisions cited by

22 Plaintiff, which involved marks that were phonetically identical (see Mot. at 18), the
23 parties’ marks here are not ones which “to the ear of the average person … would
24 pass as one.”
25 1962).)

(Id. (quoting Baker v. Simmons Co., 307 F.2d 458, 465 (1st Cir.

HANGINOUT has three syllables and is singular, while HANGOUTS has

26 two syllables and is plural.

HANGINOUT describes an activity, while

27 HANGOUTS is a plural noun.

In addition, Google’s HANGOUTS product

28 appears in the marketplace in close proximity to the GOOGLE mark.

(Abrams

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1 Decl. ¶¶ 4-8.)

For example, in an app store “Google Inc.” appears below

2 “Hangouts.” (Id. at ¶8.)

Search engine results for “hangouts” likewise display the

3 GOOGLE mark near “Hangouts” for links to Google products.

(Abrams Decl. ¶¶

4 4-6, Ex. 1.)
5

Given the actual market appearance of HANGOUTS, no reasonable consumer
Indeed, in Lindy

6 would believe that it is associated with anyone other than Google.

7 Pen Co. v. Bic Pen Corp., the Court found that an examination of identical marks in
8 the marketplace demonstrated that “the marks are readily distinguishable in the
9 context in which they are encountered,” in part because the company’s name was
10 displayed on the pens along with the AUDITOR trademark at issue.
11 1240, 1245 (9th Cir. 1984).

725 F.2d

In contrast, HANGINOUT appears to be regularly

12 used with its design mark, which includes the silhouette of a person sitting down in
13 a relaxed posture.

(See Dkt. 12-5 at 2, Dkt. 12-6 at 2; 12-7 at 2-4; Dkt. 12-11; Dkt.

14 12-14 at 2, Dkt. 12-15 at 3; Dkt. 12-17 at 3; Dkt. 12-19 at 2 at 2.)
15 remotely similar design mark.
16 quotation marks in it.

Google uses no

Instead, it uses a green “speech bubble” with white

(Abrams Decl. ¶¶ 3, 8.) Because of these numerous

17 differences in the appearance of the marks in their marketplace contexts, this factor
18 favors Google.

If Plaintiff were to argue it is not challenging HANGOUTS, but

19 HANGOUTS ON AIR or the Q&A App for Hangouts On Air, this factor would
20 favor Google even more strongly.
21
22

4.

There Is No Actual Confusion.

“Lack of evidence about actual confusion after an ample opportunity for

23 confusion can be a powerful indication that the junior trademark does not cause a
24 meaningful likelihood of confusion.”

Matrix Motor Co., 290 F. Supp. 2d at 1093;

25 1084 (granting defendant’s motion for summary judgment when marks had
26 coexisted for a year without meaningful, admissible actual confusion).

Hanginout

27 has not identified any proof of actual actionable confusion, despite the fact that
28 Google has been using the HANGOUTS mark for almost three years.

The only

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1 “evidence” that Hanginout refers to in its brief is that “consumers have used the
2 phrase ‘Hanging Out’ and ‘Hangout’ when referring to the HANGINOUT
3 platform.”

(Mot. at 20; Dkt. 12-2, ¶¶ 22, 47, Exs. 11, 30.) The fact that

4 Hanginout’s own spokespeople have used the plain English words “hang out” in
5 reference to their use of the HANGINOUT product has no bearing on whether any
6 consumers have been confused by Google’s use of HANGOUTS.
7 Dkt. 12-34.)
8
9

(Dkt. 12-15,

Therefore, this factor favors Google.
5.

The Marketing Channels Are Neutral.

Plaintiff argues that the parties’ “overlap of marketing channels supports

10 confusion,” relying on decisions from 1987 and 1993. (Mot. at 18-19.) The very
11 overlapping channels Plaintiff points to—the commercial Internet and iTunes (and
12 the App Store, which offers apps)—were either in their very early development or
13 did not even exist then.

(Caruso Decl. ¶ 8, Exs. 7-8.) And the Ninth Circuit has

14 since held that “[t]oday, it would be the rare commercial retailer that did not
15 advertise online, and the shared use of a ubiquitous marketing channel does not shed
16 much light on the likelihood of consumer confusion.”
17 F.3d at 1151.

Network Automation, 638

Although each party may advertise on the Internet, “the same could

18 be said for countless companies.

Thus, this factor merits little weight.” Playboy

19 Enters., Inc. v. Netscape Commc’ns Corp. 354 F.3d 1020, 1028 (9th Cir. 2004).
20 Likewise, Apple’s App Store currently offers more than 1,000,000 apps, which
21 hardly makes it a unique marketing channel.

(Caruso Decl. ¶ 9, Ex. 9.) In

22 addition, unlike Hanginout, Google also advertises on television and through paid
23 digital advertising—not merely social network sites and YouTube.

(Compare

24 Long Decl. ¶¶ 8-11 with Dkt. 12-2 ¶¶ 11, 13-14, 19.)
25
26
27
28

6.

Consumers Are Likely To Use Care When Selecting A Product
To Communicate With Others.

Hanginout presents no evidence of the degree of sophistication of its
customers, but asserts without support that consumers “are likely to use the parties’
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1 platform without doing significant investigation.” (Mot. at 21.) That both
2 parties’ products are available as free downloads from the Internet does not dictate
3 that consumers will use a low degree of care when choosing to download them.
4 First, the “degree of consumer care is becoming more heightened as the novelty of
5 the Internet evaporates and online commerce becomes commonplace.”
6 Automation, 638 F.3d at 1152.

Network

Second, “given common concerns regarding

7 viruses and spyware potentially contained in free software,” it cannot be assumed
8 that “the average consumer exercises minimal care in deciding which free,
9 downloadable programs it chooses to install on his or her increasingly all-important
10 lifeline to the Internet.”

Instant Media, 2007 WL2318948, at *16. In addition,

11 consumers who want to communicate with others through a live video conference
12 will presumably take care to use the same service that those other individuals are
13 using; consumers who do not intend to participate in a live video chat are extremely
14 unlikely to somehow end up participating in one unintentionally.

As such, the

15 level of consumer care favors Google.

7.

16
17

Google Had No Bad Intent In Adopting The HANGOUTS Mark.

As the cases Plaintiff cites confirm, the defendant’s relevant intent is assessed

18 at the time it adopted the challenged mark. (Mot. at 21.) At that time, Google
19 had no reason to know of Hanginout and its intent in adopting HANGOUTS was in
20 good faith.

By 2009, Google had developed an internal videoconferencing

21 prototype and it referred to the virtual connection between the teams developing the
22 product as “The Hangout.”

(LaChapelle Decl. ¶¶ 3-4.) The teams felt this name

23 was appropriate given the odd hours and relaxed environment that characterized
24 their videoconferences. ( Id. ¶ 4.)

The developers switched to working on a

25 commercial product in 2010, and adapted the name of their personal virtual
26 connection, “The Hangout,” to fit the new commercial platform allowing many
27 virtual connections, which became “Hangouts.”

(Id. ¶ 5.)

28
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PLAINTIFF HANGINOUT, INC.’S MOTION FOR PRELIMINARY INJUNCTION

1

Before publicly launching Hangouts, Google commissioned a trademark

2 search in April 2011 that returned no evidence of the HANGINOUT mark.
3 (Abrams Decl. ¶ 9.)

This is not surprising since Hanginout had not even launched

4 the “preview” version of its product at that time.
5 (reflecting launch of “preview” on May 4, 2011).)

(E.g., Dkt. 12-2 at ¶ 13, Ex. 4
Hanginout did not file its

6 application to register HANGINOUT until July 2012 or begin offering an app for
7 iPhone until September 2012.

(Mot. at 1.) Therefore, Hanginout is incorrect that

8 “a simple iTunes search would have revealed the HANGINOUT Q&A app” (Mot. at
9 27) before Google actually adopted HANGOUTS and began using it in commerce in
10 June 2011 (Dkt. 12-2 ¶ 39, Ex. 22; accord Leske Decl. ¶ 3, Exs. 1-2.)

This is not

11 an instance in which an “infringer knowingly adopt[ed] a mark similar to another’s”
12 (Mot. at 27; see also LaChappelle Decl. ¶ 7; Leske Decl. ¶ 7; Abrams Decl. ¶ 10;
13 Long Decl. ¶ 13 (all reflecting no awareness of HANGINOUT as of May 2013).)
14

Hanginout tries to gloss over this inconvenient sequence of events by

15 focusing on the September 12, 2013 date Google announced the “Live Q&A” app
16 for Hangouts On Air—more than two years after Google actually adopted
17 HANGOUTS.

(Mot. at 27; Dkt. 12-31 at 2; Section II.A.1, supra.) Even if

18 somehow that were the correct date by which to evaluate intent, “the defendant’s
19 intent may be relevant . . . only insofar as it bolsters a finding that the use of the
20 trademark serves to mislead consumers rather than truthfully inform them of their
21 choice of products.”

Network Automation, 638 F.3d at 1153. Google had no

22 reason to believe users would be misled by it offering a feature to be used in
23 connection with the Hangouts On Air product that it had introduced two years
24 earlier. (Leske Decl. ¶ 8.) Further, even after Google was alerted to Hanginout’s
25 existence through the PTO’s office action on its trademark application (Dkt. 12-2 at
26 ¶ 43, Ex. 26), it had no reason to believe it was infringing the HANGINOUT mark
27 given, at a minimum, that the HANGINOUT application reflected a first use date
28 almost a year after Google’s first use.

(Dkt. 14, Exs. A, B.)

Case No. 13-CV-2811 AJB NLS
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PLAINTIFF HANGINOUT, INC.’S MOTION FOR PRELIMINARY INJUNCTION

The PTO has made no determination of likelihood of confusion, nor has it

1

2 taken into consideration common law priority, which is one ground on which
3 Google plans to oppose HANGINOUT’s application.

Even if the PTO did make a

4 determination, contrary to Hanginout’s assertion that the PTO’s “determinations are
5 entitled to deference,” (Mot. at 18) a determination by the PTO relating to the
6 likelihood of confusion between two marks “must be regarded as inconclusive since
7 made at its lowest administrative level” and the PTO does not have before it “the
8 great mass of evidence” available in a federal action.

Carter-Wallace, Inc. v.

9 Procter & Gamble Co., 434 F.2d 794, 801-02 (9th Cir. 1970); Matrix Motor Co.,
10 290 F. Supp. 2d at 1092 n.10 (“a determination of likelihood of confusion in a
11 registration proceeding is different from such a determination in an infringement
12 action, and the outcomes of the two types of proceedings need not be the same”).
13 Indeed, even “the failure to stop using a mark after receiving a cease and desist letter
14 does not show willful infringement . . . particularly where the trademark at issue is
15 not federally registered and the junior user has a reasonable basis to believe that it
16 has a legal right to use the mark at issue.”
17 1096.
18
19

Matrix Motor Co., 290 F. Supp. 2d at

Accordingly, this factor, too, favors Google.
8.

No Expansion Is Likely.

Hanginout has provided no evidence of any alleged expansion plans, either

20 for itself or for Google.

Without any “concrete evidence” that either Google or

21 Hanginout intends to expand into a different product area that would cause any
22 direct competition, this factor slightly favors Google.

E.g., Instant Media, 2007

23 WL2318948, at *17.
24
25

***
On balance, the Sleekcraft factors overwhelmingly favor Google, which will

26 prevent Hanginout from prevailing on the merits of its claims.
27
28
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PLAINTIFF HANGINOUT, INC.’S MOTION FOR PRELIMINARY INJUNCTION

1

C.

Hanginout Cannot Demonstrate Passing Off.

2

Hanginout also will not be able to demonstrate that Google has “passed off”

3 its own goods as those of Hanginout.

(Dkt. 14 at ¶¶ 32, 56.) “‘Palming off’ or

4 ‘passing off’ is the selling of a good or service of one’s own creation under the name
5 or mark of another” or “selling products confusingly similar to a competitor’s
6 products so as to exploit the competitor’s reputation in the market.”

Smith v.

7 Montoro, 648 F.2d 602, 604 (9th Cir. 1981); Allen v. Ghoulish Gallery, Civ. No.
8 06cv371, 2007 WL4207923, at *11 (S.D. Cal. Nov. 20, 2007).

The notion that

9 Google adopted the HANGOUTS mark in June 2011 to trade off of the goodwill
10 HANGINOUT claims it had acquired through an alleged couple hundred registered
11 users at that time is illogical, as is the suggestion that somehow in 2013 Google
12 offered a product to exploit HANGINOUT’s goodwill—as opposed to building off
13 of the goodwill it had amassed in HANGOUTS beginning in 2011.

Nor has

14 Hanginout offered evidence that Google offered its products under the name
15 HANGINOUT.

Hanginout, therefore, cannot succeed on its unfair competition

16 claims.
17 III.

THE BALANCE OF HARDSHIPS FAVORS GOOGLE

18

To obtain a preliminary injunction, Hanginout must demonstrate that the

19 balance of hardships tips in its favor.

Winter, 555 U.S. at 20. It cannot because

20 the balance of hardships decisively weighs in Google’s favor.

Hanginout’s

21 argument that “there will be little to no harm to Google” from a preliminary
22 injunction, because it would “only require a name change of one of Google’s
23 services” (Mot. at 24) is factually false and based on a legally erroneous
24 understanding of how hardship is assessed.

When weighing the balance of

25 hardships, courts look to factors such as the amount of financial investment in
26 developing and advertising a product and the number of customers acquired.

E.g.,

27 Playmakers LLC v. ESPN, Inc., 376 F.3d 894, 898 (9th Cir. 2004); Edge Games,
28 745 F. Supp. 2d at 1104, 1118.
Case No. 13-CV-2811 AJB NLS
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PLAINTIFF HANGINOUT, INC.’S MOTION FOR PRELIMINARY INJUNCTION

1

The decision in Edge Games demonstrates that the hardship assessment must

2 take into account the amount of the defendant’s investment and efforts that would be
3 put at risk by an injunction.

The defendant there, Electronic Arts (“EA”),

4 developed a video game called “Mirror’s Edge.”

745 F. Supp. 2d at 1104. EA

5 invested tens of millions of dollars into the game’s development, which took over 60
6 individuals two years to create.

Id.

EA also invested over $9 million to market

7 the game in North America and sold over 750,000 units in that region.

Id. at 1005.

8 EA also developed additional products for the “Mirror’s Edge franchise.”

Id.

9 Because EA had invested “millions of dollars into building and promoting the
10 ‘Mirror’s Edge’ franchise” and “now has millions of customers,” the Court found
11 that the balance of equities tipped in EA’s favor and a preliminary injunction would
12 have been inequitable.
13

Id. at 1018.

Similarly, here, Google’s Hangouts product, when introduced, was the
million in development

14 culmination of Google’s investment of approximately

15 and the efforts of more than two years of work by more than
16 Decl. ¶ 12.)

Google has also invested more than

engineers. (Leske

million in media costs for

17 advertising featuring Hangouts, including “Jess Time,” which featured a father and
18 his daughter, a college freshman, using Hangouts to stay close while she is away at
19 school.

(Long Decl., ¶¶ 8, 10, Ex. 5.) The “Jess Time” ad ran more than 400

20 times on all major broadcast and cable networks.

(Id.) Since Hangouts’

21 introduction in June 2011, users have initiated more than
22 conferences, and it is installed on more than
23 Decl.¶¶ 5-6.)

billion Hangout video

million mobile phones. (Leske

If forced to rebrand Hangouts, Google would lose the significant

24 amount of money invested in developing goodwill.

See, e.g., The Active Network,

25 Inc. v. Electronic Arts Inc., Case No. 10-cv-1158 BEN (WVG), 2010 WL3463378,
26 at *6 (S.D. Cal. Aug. 31, 2010) (See also Leske Decl. ¶¶ 13-15; Long Decl. ¶ 12.)
27 Granting Hanginout’s Motion after it allowed Google to “invest in and develop” its
28 Hangouts product over such a long period of time “would be plainly inequitable and
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PLAINTIFF HANGINOUT, INC.’S MOTION FOR PRELIMINARY INJUNCTION

1 highly prejudicial to defendant.”

Edge Games, 745 F. Supp. 2d at 1118.

In addition to jeopardizing the many millions of dollars and extensive effort

2

3 Google has invested in Hangouts, an injunction would require Google to invest
4 substantial efforts to identify a new product name, devote significant technical
5 resources to attempting to push out a new version of its product to its existing users
6 and revising the extensive references to Hangouts across Google’s many
7 interconnected products, instructional and promotional materials, and spend millions
8 of dollars promoting a rebranded product and trying to re-establish the goodwill it
9 has accrued over almost three years of continuous use and through third-party press,
10 third-party promotional efforts of partners, high-profile uses, and newly announced
11 partnerships. (Leske Decl. ¶¶ 13-15, Long Decl. ¶¶ 3-12.)

See, e.g., Instant

12 Media, 2007 WL2318948, at *17 (finding that defendant would have to rebrand its
13 own websites and incur costs added weight to balance of hardships tipping against
14 injunction).

Further, an injunction is likely to irreparably harm Google’s existing

15

16 relationships with its many partners who have incorporated Hangouts into their
17 products and promotions, such as Coursera.

(Long Decl. ¶ 12.) It is also likely to

18 chill Google’s ability to develop new partners, who would be concerned about
19 investing money to develop and promote products that incorporate or are powered
20 by a Google product that could be swept away by a nascent app developer.
21 In contrast, Hanginout presented absolutely no evidence of any hardship.

(Id.)
(Mot. at

22 25.) Therefore, the balance of hardships decisively favors Google.4
23
24

Hanginout is incorrect that if a preliminary injunction were to issue the bond
25 requirement should be waived based on “the willfulness of the infringement” or else
“set at a minimal amount given the ease of complying with the injunction and
26 minimal effect on Google in the interim.” (Dkt. 12-1 at 25). There is no willful
27 infringement (see Section II.B.7), and, as discussed, an injunction would cause
significant economic and reputational harm to Google.
4

28

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PLAINTIFF HANGINOUT, INC.’S MOTION FOR PRELIMINARY INJUNCTION

1 IV.

THE PUBLIC INTEREST WEIGHS IN FAVOR OF GOOGLE

2

To obtain a preliminary injunction, Hanginout “must establish that the grant

3 of such an extraordinary remedy is in the public interest.”
4 WL5945060, at *7.

Mytee, 2013

Unable to show that consumers are likely to be confused by

5 Google’s Hangout product, Hanginout cannot demonstrate that “the public interest
6 … would favor a preliminary injunction.”

Edge Games, 745 F. Supp. 2d at 1118.

7 “If anything, an injunction would violate the public’s interest in fair and healthy
8 competition.”

Active Network, 2010 WL3463378, at *6. Further, an injunction

9 would likely disrupt the effective use of the rebranded Hangouts product by its
10 many millions of users.

(Leske Decl. ¶¶ 5, 15.) They could be confused by the

11 renamed product, have difficulty communicating with their intended Hangouts
12 participants because of confusion about the new name, or need to overhaul their own
13 products and/or promotional material.

(Leske Decl. ¶¶ 13-15.) In addition, third-

14 party app developers for Hangouts are likely to be harmed if Google is forced to
15 rebrand. ( Id. at ¶ 14.)

Accordingly, this is not a case in which the “reach of an

16 injunction is narrow, limited only to the parties, and has no impact on non-parties.”
17 (Mot. at 23.)
18

On the other side of the scale are Hanginout’s insubstantial, unsupported, and

19 implausible accusations that Google’s use of HANGOUTS, announced before
20 Hanginout released its first app, “exploits Hanginout’s revolutionary platform” and
21 is “fraudulent.”
22
23

(Mot. at 24.) The public interest sharply favors Google.
CONCLUSION

For the foregoing reasons and those set forth in the declarations submitted

24 herewith, Hanginout’s motion for a preliminary injunction should be denied.
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Case No. 13-CV-2811 AJB NLS
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PLAINTIFF HANGINOUT, INC.’S MOTION FOR PRELIMINARY INJUNCTION

1
2

DATED: March 21, 2014

Respectfully submitted,

6

/s/ Margret M. Caruso
Margret M. Caruso
Cheryl A. Galvin
QUINN EMANUEL URQUHART
& SULLIVAN, LLP

7

Attorneys for Defendant Google Inc.

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