Isys Technologies v. Google et al

Filing 10

MEMORANDUM in Support re 9 MOTION for Preliminary Injunction MOTION for Temporary Restraining Order filed by Plaintiff Isys Technologies. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8A, # 9 Exhibit 8B, # 10 Exhibit 9, # 11 Exhibit 10, # 12 Exhibit 11, # 13 Exhibit 12, # 14 Exhibit 13, # 15 Exhibit 14, # 16 Exhibit 15)(Zenger, Todd)

Todd E. Zenger (5238)
Dax D. Anderson (10168)
Joshua S. Rupp (12647)
KIRTON & McCONKIE
1800 Eagle Gate Tower
60 East South Temple
Salt Lake City, Utah 84111
Phone: [phone]
Fax: [phone]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Attorneys for Plaintiff

IN THE UNITED STATES DISTRICT COURT
DISTRICT OF UTAH
ISYS TECHNOLOGIES, INC., a Nevada
Corporation,

Civil Action No. 2:11-CV-507 CW

Plaintiff,

Judge Clark Waddoups

vs.
GOOGLE, INC., a Delaware Corporation;
SAMSUNG ELECTRONICS USA, INC., a Delaware
Corporation; ACER AMERICA CORP., a
California Corporation; AMAZON.COM, INC., a
Delaware Corporation; and BEST BUY CO.,
INC., a Minnesota Corporation;

PLAINTIFF’S MEMORANDUM
IN SUPPORT OF ITS
MOTION FOR
TEMPORARY RESTRAINGING ORDER
AND
PRELIMINARY INJUNCTION

Defendant.

Plaintiff Isys Technologies, Inc. (“Isys”) submits this memorandum in support of its
motion for temporary restraining order and preliminary injunction.

TABLE OF CONTENTS
INTRODUCTION .............................................................................................................v 

I.

II.  FACTUAL BACKGROUND.............................................................................................. vi 
III. 

ARGUMENT ..................................................................................................................... 1 

A.  Legal Standard for Preliminary Injunction ...................................................................... 1 
B.  Isys is Likely to Succeed on the Merits ........................................................................... 2 
1. 

Isys Is The Senior User Of CHROMIUMPC For Hardware ................................... 2 

2. 

Isys Is The Only User Of Or Filer For A CHROMIUMPC Mark For Hardware .. 2 

3. 

Google Abandoned The CHROMIUM Mark For Software ..................................... 2 

4. 

,Google Has Acted In Bad Faith ................................................................................ 3 

5. 

Reverse Confusion ...................................................................................................... 4 

6. 

Status Quo .................................................................................................................... 7 

7. 

Likelihood Of Isys Trademark Registration For CHROMIUMPC ......................... 8 

C.  ISYS is Certain to Suffer Irreparable Harm .................................................................... 8 
D.  The Balance of Equities Favors ISYS ............................................................................. 9 
E.  A Preliminary Injunction Will Serve the Public Interest.............................................. 10 
IV. 

CONCLUSION ............................................................................................................... 11 

ii

TABLE OF AUTHORITIES

Cases 
Barcamerica Int’l v. Tyfield Importers,
289 F.3d 589 (9th Cir. 2002) ....................................................................................................... 3
Beltronics USA, Inc. v. Midwest Inventory Dist., LLC.,
562 F.3d 1067 (10th Cir. 2009) ................................................................................................... 8
Big O Tire Dealers, Inc. v. The Goodyear Tire & Rubber Co.,
561 F.2d 1365 (10th Cir. 1977) .................................................................................................. 4
Brookfield Comm'ns v. W. Coast Entm't Corp.,
174 F.3d 1036 (9th Cir. 1999) .................................................................................................... 7
Dreamwerks Prod., Inc. v. SKG Studio,
142 F.3d 1127 (9th Cir. 1998) ................................................................................................ 5, 6
Gorenstein Enter. V. Quality Care-USA,
874 F.2d 431 (7th Cir. 1989) ....................................................................................................... 2
Haymaker Sports, Inc. v. Turian,
581 F.2d 257 (CCPA 1978) ........................................................................................................ 3
J.M. Originals Inc.,
6 USPQ2d 1393 (TTAB 1987) ................................................................................................... 6
Kentucky Fried Chicken Corp. v. Diversified Packaging Corp.,
549 F.2d 368 (5th Cir. 1977) ....................................................................................................... 3
King of the Mountain Sports, Inc. v. Chrysler Corp.,
185 F.3d 1084 (10th Cir. 1999) .................................................................................................. 4
Manhattan Indus., Inc. v. Sweater Bee by Banff, Ltd.,
627 F.2d 628 (2d Cir. 1980) ....................................................................................................... 3
National Data Corp.,
753 F.2d 1056; 224 USPQ 749 (Fed. Cir. 1985) ........................................................................ 6
O Centro Espirita Beneficiente Uniao Do Vegetal v. Ashcroft,
342 F.3d 1170 (10th Cir. 2003) .................................................................................................. 1
RoDa Drilling Co. v. Siegal
552 F.3d 1203 (10th Cir. 2009) .................................................................................................. 1

iii

Sands, Taylor & Wood Co. v. Quaker Oats Co.,
978 F.2d 947 (7th Cir. 1992) .................................................................................................. 5, 6
Stanfield v. Osborne Indus.,
52 F.3d 867 (10th Cir. 1995) ....................................................................................................... 3
Sutton Cosmetics v. Lander Co.,
455 F.2d 285 (2d Cir. 1972); ...................................................................................................... 3
Tektronix, Inc. v. Daktronics, Inc.,
534 F.2d 915; 189 USPQ 693 (C.C.P.A. 1976) .......................................................................... 6
Universal Money Ctrs., Inc. v. American Tel. & Tel. Co.,
22 F.3d 1527 (10th Cir. 1994) ................................................................................................ 4, 5
Winter v. Natural Res. Def. Council, Inc.
129 S. Ct. 365 (2008) ................................................................................................................. 1
Statutes 
15 U.S.C. § 1057(c) ........................................................................................................................ 2
Amoco Oil Co. v. Rainbow Snow Inc.,
809 F.2d 656 (10th Cir. 1987) ................................................................................................... 10
Zirco Corp. v. AT&T,
21 U.S.P.Q.2d 1542 (TTAB 1991). ............................................................................................ 9
Other Authorities 
McCarthy on Trademarks and Unfair Competition........................................................................ 6
McCarthy on Trademarks and Unfair Competition Section 17:2. ................................................. 3

iv

I.

INTRODUCTION
The computer industry operates in two primary but different market segments, namely,

software and hardware.
Isys Technologies, Inc. is an intellectual property management and holding company.
Since its early product development and its subsequent market development over approximately
the last ten years, Isys has been continuously building its technology portfolio, marketing efforts
including brand names, customer relations, and market presence and reputation. Isys’ efforts are
gaining significant attention and recognition. Through its subsidiary Xi3 Corporation, Isys has
established itself as a hardware innovator that recently received the coveted and prestigious 2011
International Consumer Electronics Show Innovations Design and Engineering Award for Isys’
Xi3 Modular Computer known also the CHROMIUMPC computer. Isys has been promoting its
CHROMIUMPC computer since November 2009.
On December 20, 2011, Google began interfering with Isys’ business by improperly
opposing and delaying the registration of Isys’ pending trademark application for
CHROMIUMPC. On May 11, 2011 software giant Google announced its new entry into the
hardware market seeking to usurp Isys’ CHROMIUMPC hardware presence by overwhelming it
with a launch of Google’s CHROMEBOOK for PC hardware products. Google has teamed up
with hardware giants Samsung and Acer and distribution giants Best Buy and Amazon.com. Isys
has worked diligently since 2009 to prepare for, market, and build a tie between the
CHROMIUMPC computer hardware and Isys. Google and its associated companies are able to
and are now preparing to undo that tie and cause the consuming public to instead recognize a
CHROMEBOOK PC hardware product with Google through Samsung and Acer. This reverse
confusion will cause damage and irreparable harm to Isys and its CHROMIUMPC mark unless
enjoined by this Court.

v

II.

FACTUAL BACKGROUND
1.

In or about late 1999, Jason Sullivan, President of Isys, invented a new computing

system and methods for manufacturing the computer systems which have been named Xi3
Technology (“Xi3 Technology”). Exhibit 13, ¶ 1.
2.

Some of the features of the Xi3 Technology include closely-integrated circuitry in

a smaller dimensional space, a computing design that can be used in many computing
applications, fewer raw materials and manufacturing processes, cost savings due to the
uniformity and its modular functionality permitting components to be readily added or changed
as desired. Exhibit 1.
3.

Due to its modular design, the Xi3 computers can be readily configured to run a

number of operating systems, including Microsoft- or Linux-based operating systems. Exhibit
13; Exhibit 14; Exhibit 15.
4.

While including the functionality of standard computers and being able to be used

for all types of computing environments, some of the uniqueness of the Xi3 Technology is its
compact size of an approximately 3½-inch cube, its durability, its light weight, its vertical
applications and its ability to cluster and scale for larger processing applications. Exhibit 2.
5.

In the Fall of 2009, ISYS began promoting its Modular Computer as an Xi3

product including the brand name CHROMIUMPC. Exhibit 2.
6.

Since 2009, Isys has continuously promoted its new computers under the

CHROMIUMPC brand at trade shows. Exhibit 13, ¶ 6; Exhibit 14, ¶ 6.
7.

Since 2009, Isys has continuously promoted its new computers under the

CHROMIUMPC brand in discussions with customers in different parts of the United States.
Exhibit 13, ¶ 7; Exhibit 14, ¶ 7.
8.

Since 2009, Isys has continuously promoted its new computers under the

CHROMIUMPC brand in electronic communications about its business including marketing and
sales emails to potential customers, Internet blogs, Twitter, Facebook, and its own

vi

www.chromiumpc.com website, beginning in November 2009. Exhibit 2, Exhibit 13, ¶ 8;
Exhibit 14, ¶ 8.
9.

Isys is the senior user and owner of the mark CHROMIUMPC for use in

connection with computer hardware. Exhibit 13, ¶9; Exhibit 14, ¶ 9.
10.

On June 21, 2010, ISYS filed United States Trademark Application Serial

No. 85/067977 for CHROMIUMPC for use in connection with computer hardware including
computer carrying cases, computer chassis, computer expansion boards, computer interface
boards, computer peripherals and computers (“CHROMIUMPC Application”).

Exhibit 3;

Exhibit 13, ¶9; Exhibit 14, ¶ 10.
11.

Google has known of Isys’ pending application for CHROMIUMPC for hardware

since the summer of 2010.
12.

Prior to publication of the CHROMIUMPC Application for opposition, the United

States Trademark Office concluded there were no pending applications or registrations that
would bar registration of CHROMIUMPC mark in connection with computer hardware.
Exhibit 3, pg. 27.
13.

In November 2010, the Consumer Electronics Association, owner of the

International Consumer Electronics Show, announced that ISYS’ Xi3 Modular Computer was to
be recognized as a 2011 International CES Innovations Design and Engineering Award winner in
the computer hardware category. Exhibit 4, Exhibit 13, ¶10; Exhibit 14, ¶11; Exhibit 5; Exhibit
15, 1.
14.

Images of the approximately 4 x 3½” Xi3 Modular Computer include:

vii

Exhibit 4, pg. 1; Exhibit 13, ¶11; Exhibit 14, ¶12; Exhibit 15, ¶ 2.
15.

The Xi3 Modular Computer and other Xi3 Technology products received rave

reviews at the January 6-9, 2011 International Consumer Electronics Show in Las Vegas,
Nevada (“CES 2011”). Exhibit 13, ¶ 12; Exhibit 14, ¶13; Exhibit 15, ¶ 3.
16.

A Business Wire covering the CES 2011 show characterized the impact of the

Xi3 Technology as “Xi3 Corporation Rocks CES 2011.” Exhibit 6; Exhibit 13, ¶ 13; Exhibit 14,
¶14; Exhibit 15, ¶ 4.
17.

A version of the Xi3 Modular computer is being branded and promoted as the

CHROMIUMPC computer. Exhibit 1; Exhibit 2; Exhibit 13, ¶ 14; Exhibit 14, ¶ 15; Exhibit 15,
¶ 5.
18.

One example of the Xi3 CHROMIUMPC computer is depicted as follows:

viii

Exhibit 1, Exhibit 13, ¶ 14; Exhibit 15, ¶ 16; Exhibit 15, ¶ 6.
19.

In December 2010, Isys’ CHROMIUMPC application was published for

opposition. Exhibit 3, pg. 16.

Google lacks trademark rights in the CHROMIUM mark

20.

In late 2008, Google initiated an open-source software development project

named Chromium. Google invited independent third parties to participate. Exhibit 7; Exhibit
13, ¶ 17; Exhibit 14, ¶ 18.
21.

This Chromium software initiative was for software development by third parties

for networks such as the Internet for accessing, navigating, searching, browsing, running web
applications and/or communicating. Exhibit 7.
22.

Google abandoned any trademark rights in Chromium software by failing to

control the nature and quality of the open source software developed by others but at the same
time permitting others to distribute the third party software under the Chromium mark. Exhibit
7.
23.

Google has expressly disclaimed any attempt to know the content or quality of

software developed by others and distributed under the brand Chromium thereby allowing third
parties to “do pretty much anything [they] want” with software distributed under the Chromium
brand. Exhibit 7.
24.

Google has expressly disclaimed any intent to verify any of the content,

functionality, reliability or stability of software developed by others and distributed under the
brand Chromium. Exhibit 7.
25.

Google has failed to prevent uses or misuses by others of the Chromium mark in

connection with software. Exhibit 7.
26.

The acts of Google have caused the Chromium mark to lose its significance as a

mark for software. Exhibit 7.

ix

27.

These acts of Google result in a loss of trademark rights in a Chromium mark for

software. Exhibit 7.
Google’s bad faith filing of its CHROMIUM trademark application
28.

Google filed a trademark application for CHROMIUM in connection with

network software and related education and services. Exhibits 8A and 8B.
29.

Google knew when it filed its CHROMIUM trademark application that use of the

term CHROMIUM would be in an uncontrolled, open-source initiative.
30.

Nevertheless, Google filed a federal trademark application for CHROMIUM for

software including a misleading and deceptive statement under oath of its intent to exclusively
use the mark CHROMIUM in connection with software. Exhibit 8A, pg. 12, Exhibit 8B, pg. 14.
31.

In so doing, Google has withheld material information from the United States

Trademark Office which would contradict the factual basis for its CHROMIUM application.
Exhibits 8A and 8B.
Google’s bad faith continued in prosecution of its CHROMIUM trademark
application after forfeiting trademark rights in CHROMIUM
32.

After filing its application, Google instructed independent, open-source

developers to freely use the term CHROMIUM in connection with software which was written
by the independent, open-source developers but uncontrolled, unmonitored, unsupervised and
unsupported by Google. Exhibit 7, pgs. 3-4, 7-10.
33.

Google has expressly stated that it does not control or guarantee the quality of

software produced by third party developers and distributed under the CHROMIUM brand.
Exhibit 7, pgs. 3-4, 9-10.
34.

Marks are treated by purchasers as an indication that the trademark owner is

associated with the product.
35.

Without controlling the quality of software distributed by others under the brand

CHROMIUM, Google causes a deception which eliminates the ability of the CHROMIUM mark

x

to function as a trademark designation of origin for software upon which the public can rely for
consistency of source and quality or as being sourced from Google. Exhibit 7.
36.

This kind of uncontrolled permission or licensing without quality control is

inherently deceptive. Exhibit 7.
37.

This kind of uncontrolled permission or licensing without quality control

constitutes abandonment of all rights in the mark. Exhibit 7.
38.

This kind of uncontrolled permission or licensing without quality control

invalidates the ability of Google to register or maintain a registration for exclusive rights in the
CHROMIUM mark. Exhibit 7.
39.

Nevertheless, Google has continued to prosecute its CHROMIUM application

while withholding relevant and material information from the United States Trademark Office,
namely, the freedom of all open source developers granted by Google to change the content and
quality of software and distribute it to the public under the CHROMIUM brand without control
from Google. Exhibit 8A and 8B.

Google’s bad faith opposition to Isys’ pending U.S. Trademark Application
for CHROMIUMPC for hardware
40.

Google has opposed Isys’ attempts to register its CHROMIUMPC mark for

hardware by filing an opposition with the U.S. Trademark Trial and Appeal Board (TTAB).
Exhibit 9.
41.

The only basis cited by Google in its opposition to Isys’ CHROMIUMPC mark

for hardware is Google’s pending application for the CHROMIUM mark for software freely used
by others without control. Exhibit 9, pgs. 8-14
42.

Google has, however, withheld from and not disclosed to the TTAB that Google

has abandoned the CHROMIUM mark by giving all open source software developers unfettered
permission to brand software subject to no quality control of Google with the CHROMIUM
mark. Exhibit 9.

xi

43.

Furthermore, in its opposition Google asserts that there is no distinction between

its CHROMIUM application for software and Isys’ CHROMIUMPC application for hardware.
Exhibit 9, pgs. 8-14.
44.

This software-hardware nondistinction argued by Google to now oppose Isys’

CHROMIUMPC mark contradicts Google’s publicly asserted and recently relied upon softwarehardware distinction used by Google as Google seeks to register a trademark for hardware when
the same or similar trademark already exists for software. Exhibit 9, 8-14; Exhibit 10, pgs. 1213.
45.

For example, for its own benefit Google has, under penalty of perjury, maintained

that its proposed mark SPEEDBOOK for hardware is distinct from and not likely to cause
confusion with a similar, previously registered mark SPEEDBOOK of another for software.
Exhibit 10 pgs. 12-13.
46.

This factual and legal position relied upon by Google resulted in a benefit in

Google’s favor in the U.S. Trademark Office’s interim approval of Google’s trademark
application for the mark SPEEDBOOK for hardware.
47.

Google has withheld from and not disclosed to the TTAB that it previously relied

to its benefit on the distinction between hardware and software such that there is no likelihood
of confusion between similar marks in hardware and software uses. Exhibits 9 and 10.
Google unfairly used extensions of time granted by the Trademark Office to
delay registration of Isys’ trademark for CHROMIUMPC and to further
Google’s trademark infringement and unfair competition
48.

In November 2009, Isys began using CHROMIUMPC in connection with its

modular computers. Exhibit 2.
49.

In or before February 2010, Google selected the brand name SPEEDBOOK for

computer hardware and filed a trademark application in Tonga. Tonga trademark application
filings are not available to the public for searching online. Exhibit 10.

xii

50.

Google has known of Isys’ trademark application for and of Isys’ intent to use the

CHROMIUMPC mark in connection with computer hardware since no later than July 2010.
51.

In August 2010, Google filed a U.S. trademark application for SPEEDBOOK for

hardware in the United States relying upon its priority date of February 2010 from its Tongan
application. Exhibit 7.
52.

Isys’ trademark application for the CHROMIUMPC mark for hardware was given

provisional approval by the U.S. Trademark Office (“Trademark Office”) October 1, 2010.
Google knew this because Google was monitoring Isys’ application. Exhibit 3, pg. 27.
53.

On October 19, 2010, Google received communication for the Trademark Office

that its SPEEDBOOK application was provisionally approved and that additional information
was needed to be filed within six months. Exhibit 10, pgs. 18-20.
54.

Pursuant to Trademark Office procedure, Isys’ trademark application for

CHROMIUMPC was published for opposition November 23, 2010. The opposition period is
thirty days, unless an extension is granted by the Trademark Office. Exhibit 10, pgs. 18-20.
55.

Google knew that Isys’ trademark application for CHROMIUMPC was published

for opposition in November 2010.
56.

On December 20, 2010, Google did not oppose but filed a request for extension of

time in which to oppose Isys’ CHROMIUMPC application. The Trademark Office granted that
extension. Exhibit 9, pg. 4.
57.

Representative of Google and Isys began communicating in the hopes of

resolving the matters.
58.

Unknown to Isys at the time, in or about December 2010 or January 2011, Google

abandoned its intent to name new computer hardware SPEEDBOOK and adopted the name
CHROMEBOOK.
59.

Without resolution with Isys and without informing Isys of the change to the

name CHROMEBOOK, in March 2011 Google filed a second request for extension seeking an
extension of time up to May 22, 2011. Exhibit 9, pg. 5. The Trademark Office granted Google’s
Request. Exhibit 9, pg. 6.
xiii

60.

Google knew that these extensions would materially delay the registration of Isys’

registration of the CHROMIUMPC mark.
61.

During the second extension period, on May 11, 2011 Google announced a new

hardware product bearing the brand CHROMEBOOK. Exhibit 11.
62.

Google took advantage of delays from extensions of time in which Google could

consider opposing Isys’ CHROMIUMPC application to delay registration of Isys’ application for
CHROMIUMPC and to permit Google to accomplish its public announcement of the launch of
its infringing CHROMEBOOK PC products. Exhibits 9 and 11.
63.

Google strategically timed delays relying upon extensions of time granted to

permit Google to switch its brand name from SPEEDBOOK to CHROMEBOOK in order to
launch its CHROMEBOOK PC products while delaying the registration of Isys’ trademark
application for CHROMIUMPC. Exhibit 9.
64.

This manipulation rapidly puts the CHROMEBOOK PC products in the public

eye through Google’s vast promotion and distribution channels and thereby improperly
confusing the public into believing that Google is the first to use a CHROME mark in connection
with computer hardware PC products.
65.

This is known as reverse confusion.

66.

This manipulation misleadingly ties trademark rights in a CHROME-mark for

hardware with Google in the public’s eye.
67.

This manipulated reverse confusion harms Isys by impeding and interfering with

market entry of its CHROMIUMPC hardware products. Exhibit 13, ¶23; Exhibit 14, ¶ 30.
68.

This manipulation damages the goodwill of Isys’ CHROMIUMPC mark for

hardware as a unique source of origin of hardware products. Exhibit 13, ¶23; Exhibit 14, ¶ 30.

xiv

Google’s bad faith adoption of CHROMEBOOK
and CHROMEBOX for hardware
69.

A term “PC” is a commonly used term for hardware products. Exhibit 13, ¶ 19;

Exhibit 14, ¶24.
70.

The term “book” is a commonly used term for hardware products. Exhibit 13, ¶

20; Exhibit 14, ¶25.
71.

The term “box” is a commonly used term for hardware products. Exhibit 13, ¶

21; Exhibit 14, ¶26.
72.

The terms “pc,” “book” and “box” equally connote hardware products for

personal computer in the computer industry. Exhibit 13, ¶ 22; Exhibit 14, ¶27.
73.

After abandoning CHROMIUM and knowing of Isys’ pending trademark

application for CHROMIUMPC for hardware, Google adopted the mark CHROMEBOOK, and
potentially CHROMEBOX, for its PC hardware products. Exhibit 9.
74.

After knowing that Isys’ pending trademark application for CHROMIUMPC for

hardware had been approved and published for opposition, Google adopted the mark
CHROMEBOOK and/or CHROMEBOX for its hardware PC products. Exhibit 9.
75.

On information and belief, after requesting and receiving an extension of time to

prolong the time for filing an opposition to Isys’ CHROMIUMPC mark, Google adopted the
mark CHROMEBOOK for its PC hardware products.
76.

Google did not adopt the mark CHROMEBOOK for its PC product until about

late 2010 or early 2011.
77.

Google prolonged the opposition proceeding for the benefit of its announcement

of its CHROMEBOOK PC product.
78.

On May 11, 2011, Google announced the public launch of upcoming sales of its

CHROMEBOOK PC product and hinted at also using CHROMEBOX for a desktop PC. Exhibit
11.

xv

79.

Under the direction and inducement of Google in the U.S., Google’s

CHROMEBOOK PC product is being manufactured, promoted and advertised by Samsung and
Acer for sale in the United States and other countries. Exhibit 11.
80.

Under the direction and inducement of Google in the U.S., it appears that

Google’s CHROMEBOX PC product is being prepared for manufacturing, promotion and
advertising by Samsung for sale in the United States and other countries. Exhibit 11.
81.

Under the direction, license and/or other inducement of Google in the U.S.,

Samsung and Acer, Best Buy and Amazon.com are promoting and advertising the sale of
CHROMEBOOK PC products in the United States and other countries. Exhibit 11.
82.

Beginning June 15, 2011, under the direction and inducement of Google,

Samsung and Ace, CHROMEBOOK PC products will be sold in the United States and other
countries by Best Buy and Amazon.com. Exhibit 11.
83.

All uses of CHROMEBOOK and/or CHROMBOX by Defendants have occurred

subsequent to Isys’ filing of its application June 21, 2010.

Google’s bad faith cease and desist demand to Isys dated May 27, 2011
84.

Google responded to Isys’ May 20, 2011 CHROMIUMPC press release by

sending Isys a cease and desist letter dated May 27, 2011 (“Google Demand Letter”) threatening
legal action if Isys did not abandon its use and registration of Isys’ CHROMIUMPC mark for
hardware products. Exhibit 12.
85.

Knowing that Google lacks exclusive control and rights to the mark

CHROMIUM, the Google Demand Letter nevertheless asserts ownership of “exclusive”
trademark rights in the CHROMIUM mark for software and hardware uses. Exhibit 12.
86.

This demand is made in bad faith.

xvi

87.

Google’s conduct has caused and is causing immediate and irreparable harm to

Plaintiff and unless enjoined will continue to cause Plaintiff immediate and irreparable harm.
Exhibit 13, ¶ 23; Exhibit 14, ¶ 30.
88.

Samsung’s conduct has caused and is causing immediate and irreparable harm to

Plaintiff and unless enjoined will continue to cause Plaintiff immediate and irreparable harm.
Exhibit 13, ¶ 23; Exhibit 14, ¶ 30.
89.

Acer’s conduct has caused and is causing immediate and irreparable harm to

Plaintiff and unless enjoined will continue to cause Plaintiff immediate and irreparable harm.
Exhibit 13, ¶ 23; Exhibit 14, ¶ 30.
90.

Best Buy’s conduct has caused and is causing immediate and irreparable harm to

Plaintiff and unless enjoined will continue to cause Plaintiff immediate and irreparable harm.
Exhibit 13, ¶ 23; Exhibit 14, ¶ 30.
91.

Amazon.com’s conduct has caused and is causing immediate and irreparable

harm to Plaintiff and unless enjoined will continue to cause Plaintiff immediate and irreparable
harm. Exhibit 13, ¶ 23; Exhibit 14, ¶ 30.

xvii

III.

ARGUMENT
This action is the case of reverse confusion in trademark law – where a small senior

user’s trademark rights and good will established over years of continuous and extensive use
risk being obliterated by a giant junior user.
Isys is the senior or first user of the mark CHROMIUMPC for PC hardware. Google
is the junior or second user of a confusingly similar mark CHROMEBOOK for PC hardware.
In this reverse confusion matter, junior user Google is poised to entirely overwhelm Isys using
competing marks. This will destroy Isys’ value and goodwill in its CHROMIUMPC mark. In
similar reverse confusion cases, Courts within the Tenth Circuit and elsewhere have not hesitated
to enjoin the junior user from overwhelming the mark of vastly smaller senior users.
A.

Legal Standard for Preliminary Injunction

In the Tenth Circuit, a party moving for a preliminary injunction:
. . . must demonstrate four factors: (1) a likelihood of success on the
merits; (2) a likelihood that the movant will suffer irreparable harm in the
absence of preliminary relief; (3) that the balance of equities tips in the
movant's favor; and (4) that the injunction is in the public interest.
RoDa Drilling Co. v. Siegal, 552 F.3d 1203, 1210 (10th Cir. 2009) (internal quotation marks
omitted) (citing Winter v. Natural Res. Def. Council, Inc., 129 S. Ct. 365, 374 (2008)), see also
O Centro Espirita Beneficiente Uniao Do Vegetal v. Ashcroft, 342 F.3d 1170, 1176- 77 (10th
Cir. 2003), affirmed en banc, 389 F.3d 973 (10th Cir. 2004) (per curiam), affirmed, 546 U.S. 418
(2006) (when the moving party demonstrates that the "exigencies of the case require
extraordinary interim relief," the district court may grant the motion upon satisfaction of the
heightened burden.)
Isys meets the requirements for entitlement to a preliminary injunction.

1

B.

Isys is Likely to Succeed on the Merits
1.

Isys Is The Senior User Of CHROMIUMPC For Hardware

Isys was the first to use the CHROMIUMPC mark for hardware. In at least as early as
November 2009, Isys began using the mark CHROMIUMPC for its new computer hardware.
Isys has used the CHROMIUMPC mark continuously since November 2009. Isys’ position of
senior user stems from its use of the CHROMIUMPC mark in connection with computer
hardware first, prior to anyone else including Google.
Isys has made extensive use of its CHROMIUM mark. Since November 2009, Isys has
utilized www.chromiumpc.com to promote and sell its CHROMIUMPC hardware products. In
addition, Isys has continually and pervasively marketed its hardware in connection with the
CHROMIUM mark at tradeshows and during sales calls. Despite Isys’ extensive use of the
CHROMIUM mark for the past years, Google has never complained about Isys’
www.chromiumpc.com website or about any of Isys’ many other uses CHROMIUMPC.
2.

Isys Is The Only User Of Or Filer For A CHROMIUMPC Mark For
Hardware

In June 2010, Isys filed its trademark application for CHROMIUMPC for hardware. Isys
was the first to file for protection for a CHROMIUM mark for hardware. Such filing can serve as
nationwide, constructive notice to all and priority of use. 15 U.S.C. § 1057(c).1 Isys timely
sought the benefits of registration under 15 U.S.C. § 1051 et. seq. Google has not filed any
trademark application for CHROMIUM in connection with computer hardware.
3.

Google Abandoned The CHROMIUM Mark For Software

The owner of a trademark has a duty to ensure the consistency of the trademarked goods
or service. If he does not fulfill this duty, he forfeits the trademark. E.g., Gorenstein Enter. V.
Quality Care-USA, 874 F.2d 431, 435 (7th Cir. 1989). Uncontrolled licensing works a deception
on the public; it is “inherently deceptive and constitutes abandonment” of all rights in the

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The benefit of constructive use is contingent upon registration. 15 U.S.C. § 1057 (c).

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trademark and results in invalidity of a trademark registration. Barcamerica Int’l v. Tyfield
Importers, 289 F.3d 589, (9th Cir. 2002); Kentucky Fried Chicken Corp. v. Diversified Packaging
Corp., 549 F.2d 368, 387 (5th Cir. 1977); Haymaker Sports, Inc. v. Turian, 581 F.2d 257 (CCPA
1978). The Tenth Circuit agrees: the lack of control over the products distributed under a mark
results in abandonment of the mark. Stanfield v. Osborne Indus., 52 F.3d 867, 871 (10th Cir.
1995).
In this case, Google began an open-source software initiative in late 2008. Google
invited independent third party software developers to participate. Many did so. Google failed
to exercise quality control over the software developed by the third parties. Exhibit 7. Google
permitted the third parties to do whatever they wanted in software development. Id. Google
chose not to control, inspect, verify or guarantee any of the software prepared by the third
parties. Id. Nevertheless, Google permitted and encouraged the third parties to brand their
varying independent software products with the mark CHROMIUM. Id. his is classic trademark
abandonment. By abandoning control of uses of the mark CHROMIUM, Google has forfeited
all rights to a CHROMIUM mark software.
Once abandoned, a mark may be seized immediately and the person so doing may
instantly build up rights against the whole world. E.g., Manhattan Indus., Inc. v. Sweater Bee by
Banff, Ltd., 627 F.2d 628, 630 (2d Cir. 1980). Sutton Cosmetics v. Lander Co., 455 F.2d 285 (2d
Cir. 1972); McCarthy on Trademarks and Unfair Competition Section 17:2.
4.

,Google Has Acted In Bad Faith
a)

Filing For And Prosecuting CHROMIUM For
Software

Knowing that Google’s CHROMIUM open-source initiative would lack the quality
control required to establish exclusive right in the mark CHROMIUM, Google nevertheless filed
a trademark application swearing under oath as to exclusive use of the mark. This was false.
Google has not informed the U.S. Trademark Office of the facts and circumstances of
uncontrolled use by others.

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Even after apparent abandonment, Google has continued to prosecute its CHROMIUM
mark, even filing documents within the last few weeks. This is working a deception on the U.S.
Trademark Office and upon the public.
b)

Opposing CHROMIUMPC Based Upon Abandoned
Rights

The U.S. Trademark Office gave interim approval to registration of Isys’
CHROMIUMPC mark pending opposition by others. When Isys’ CHROMIUMPC mark was
published for opposition, Google did not file its opposition within the allowed thirty days but
sought and obtained five months of extensions in which to file. It was during the second
extension Google announced a CHROMEBOOK PC product.
When Google did file its opposition, the opposition was based solely on its pending
CHROMIUM application. However, as established, Google has abandoned CHROMIUM. As a
result, the basis relied upon by Google to oppose and thereby delay Isys’ trademark registration
for CHROMIUMPC is not well-grounded in fact and appears to be in bad faith.
c)

Demand Based Upon “Exclusive” Rights In
CHROMIUM

Google’s latest heavy-handed act has been to demand that Isys’ cease and desist using the
CHROMIUMPC mark and abandon its application. Again, the basis for the demand is its
purported “exclusive” right in CHROMIUM. This demand is a baseless, bullying tactic.
5.

Reverse Confusion

Google’s conduct is classic reverse confusion. Reverse confusion is well established in
the Tenth Circuit. Big O Tire Dealers, Inc. v. The Goodyear Tire & Rubber Co., 561 F.2d 1365,
1371 (10th Cir. 1977) (affirming damage award for reverse infringement); King of the Mountain
Sports, Inc. v. Chrysler Corp., 185 F.3d 1084, 1089 (10th Cir. 1999) (considering forward and
reverse confusion); Universal Money Ctrs., Inc. v. American Tel. & Tel. Co., 22 F.3d 1527,
1529-30 (10th Cir. 1994) (reverse confusion). Reverse confusion occurs when a large junior user
supersaturates the market with a trademark similar or identical to that of a smaller, senior user to

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obliterate the identity of the senior user. The actual senior user is injured because the public
comes to assume that the senior user's products are really the junior user's or improperly derived
from the junior user. The result is that the actual senior user loses the value of the trademark,
namely its product identity, corporate identity, control over its good will and reputation, and
ability to move into new markets. Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947
(7th Cir. 1992) (cited favorably as a reverse confusion case in Universal Money Ctrs., 22 F.3d
1527 (10th Cir. 1994)).
The 10th Circuit’s Big O Tire Dealers, Inc. v. The Goodyear Tire & Rubber Co. case is
recognized as a seminal precedent on reverse confusion.

In Big O, the smaller, senior user Big

O was a tire franchise system with dealers operating in the western U.S. In late 1973, Big O
planned for launch of a bias belted tire under the trademark BIGFOOT. First sales were made in
the spring of 1974.
Unknown to Big O, the much larger Goodyear Tire & Rubber Co. decided in the summer
of 1974 to adopt and use the mark BIGFOOT new radial tire. The expected launch was the fall
of 1974. Goodyear designated over five million dollars for a large scale, nationwide television
advertising promotion.

However, in August 1974 Goodyear learned Big O's prior use of

BIGFOOT on tires.
Without successful negotiations with Big O, Goodyear moved ahead with its product
launch and advertising. Big O's BIGFOOT mark recognition was overwhelmed. Consumers were
confused seeking Goodyear tires from Big O.

Consumers were skeptical about Big O’s

BIGFOOT tires when they learned they were not made by Goodyear. The jury and judge agreed
that it was reasonable for customers to assume that Big O had stolen the BIGFOOT mark from
Goodyear. To most customers, BIGFOOT was tied to Goodyear and anyone else using the mark
must be an imitator. This caused Big O damage and irreparable harm.
Another seminal case, this one from the Ninth Circuit and directly on point with the
issues presented here, is Dreamwerks Prod., Inc. v. SKG Studio, 142 F.3d 1127 (9th Cir. 1998).
In the case, senior user Dreamwerks, a tiny Sci-fi convention provider, sued entertainment giant

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DreamWorks SKG claiming trademark infringement. The district court ruled for the junior user
SKG Studios. The Ninth Circuit reversed based upon reverse confusion:
[W]e note that if this were an ordinary trademark case rather than a
reverse infringement case - in other words if DreamWorks had been there
first and Dreamwerks later opened up a business running entertainmentrelated conventions - there would be little doubt that DreamWorks would
have stated a case for infringement sufficient to survive summary
judgment. The reason for this, of course, is that a famous mark like
DreamWorks SKG casts a long shadow. Does the result change in a
reverse infringement case because the long shadow is cast by the junior
mark? We think not.
Id. at 1130.
A district court must focus on the strength and ability of the junior user's mark to
overwhelm the senior user’s mark. "[T]he greater the power of DreamWorks' mark in the
marketplace, the more likely it is to capture the minds of Dreamwerks' customers." Id. at 1130, n.
5. "In a reverse confusion case, it makes more sense to evaluate whether persons familiar with
the junior user's stronger mark, and who encounter the senior user's weaker and less well-known
mark, associate it with the junior user's mark." 4 J.T. McCarthy, McCarthy on Trademarks and
Unfair Competition, § 23:10, (citing Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d
947 (7th Cir. 1992), reversed on other grounds).
As with forward confusion, reverse confusion is based on the likelihood of confusion
analysis.2 In this case the similarity of the marks is likely to cause consumer confusion. For
example, the competing marks share a similar commercial connotation. Both marks start with
the term CHROM and it is well established that the beginning of a mark is given greater weight.
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985) (Greater weight is
given to that dominant feature in determining whether there is a likelihood of confusion) see
also Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976); In re
J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987). The terms PC, book and box are commonly
2

The likelihood of confusion factors: (1) the degree of similarity between the marks; (2) the intent of the alleged
infringer in adopting its mark; (3) evidence of actual confusion; (4) the relation in use and manner of marketing
between the goods or services marketed by the competing parties; (5) the degree of care likely to be exercised by
purchasers; and (6) the strength or weakness of the marks. King of the Mountain, 185 F.3d at 1089-90.

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used terms in the computer industry to refer to personal hardware computer products. When
combined, the competing marks have a similar commercial connotation.
Furthermore, the marks are both used on PC hardware products. "Related goods are
generally more likely than unrelated goods to confuse the public as to the producers of the
goods." Brookfield Comm'ns v. W. Coast Entm't Corp., 174 F.3d 1036 (9th Cir. 1999);
Sleekcraft, 599 F.2d at 350 (where the goods at issue are highly related, "a diminished standard
of similarity must be applied when comparing the two marks.").
Google is one of the largest Internet companies in the world with hundreds of millions of
users daily. Google’s ability to immediately supersaturate the market is one of the selling points
Google uses to promote its business. Like almost no other entity, Google has the ability to
immediately reach hundreds of millions of people. Others like Isys seeking to introduce a new
computer hardware item must buy advertising from a media source such as Google. Google’s
willingness to use its strength to create reverse confusion as to PC hardware shows that Google
has the clear upper hand in rapidly and extensively establishing mark identification in the mind
of consumers. This is a breeding ground for reverse confusion and without Court intervention,
Google could absorb literally almost any trademark it chose, even as the junior user.
In this case, Google’s announcement of CHROMEBOOK has in just weeks generated
over five million Internet search results, while Isys’ eighteen month effort can only boast less
than a tenth of Google’s two-to-three week effort. Introduction of CHROMEBOOK for PC
products will further inundate the market with and accelerate mark recognition in favor of
Google to obliterate the mark recognition Isys has worked for years to garner its
CHROMIUMPC mark for hardware.
6.

Status Quo

The status quo to be protected in this case is the ability of Isys to complete registration of
its CHROMIUMPC mark and thereby maximize its trademark rights, including constructive use
rights under 15 U.S.C. § 1057(c) back to June 2010, without the improper and/or baseless
interference of Google and without having Isys’ mark recognition in the market destroyed by

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Google’s immediate, massive market penetration and saturation with a competing, confusingly
similar mark. Until Isys’ registration rights in CHROMIUMPC are determined, further product
promotion and sales of Google’s CHROMEBOOK PC products should be held at bay. Allowing
Google and the other Defendants to proceed with the intended June 15, 2011 launch will destroy
and irreparably harm Isys’ common law and pending trademark registration rights.

A

preliminary injunction that favors the status quo is preferred. See Beltronics USA, Inc. v.
Midwest Inventory Dist., LLC., 562 F.3d 1067, 1070 (10th Cir. 2009) (affirming order of
preliminary injunction where unauthorized sale of trademarked goods would irreparably harm
trademark owner).
7.

Likelihood Of Isys Trademark Registration For CHROMIUMPC

The United States Trademark registry has concluded that Isys’ CHROMIUMPC mark is
worthy of registration as demonstrated by its publication of the mark for opposition.
Accordingly, the mark is sufficiently distinctive to meet registration requirements and would
have registered but for Google’s improper and baseless Opposition Petition.

Indeed, from

November 2009 to the present, Isys has not been subject to any demands of any other industry
participant vis-à-vis Isys’ use or attempted registration of CHROMIUMPC. This establishes the
industry and Trademark Office recognition of the strength and inherent distinctiveness of Isys’
CHROMIUMPC mark in the market. The mark should quickly register once Google’s bogus
Opposition is cleared.
C.

ISYS is Certain to Suffer Irreparable Harm

Google is attempting to eviscerate Isys’ ability to maintain its brand recognition in the
market by delaying Isys’ registration while flooding the market with its CHROMEBOOK PC
product. To the extent Isys needs to conduct a survey to support its trademark registration and
accompanying entitlement to exclusive rights in CHROMIUMPC, such surveys depend upon a
market which fairly reflects Isys’ market position. Permitting the June 15, 2011 sales to go
forward will irreparably and irretrievably extinguish Isys ability to survey the market status quo
before CHROMEBOOK PC products flood the market. If Google floods the market, survey

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participants may well deem Isys’ CHROMIUMPC products to be knock-offs of Google’s
CHROMEBOOK PC products. This confusion cannot be undone.
In addition, Isys has garnered rights based on its filing an intent-to-use application. Isys’
intent to use rights as well as the underlying policy upon which Intent to Use applications are
based, will be eviscerated should the Court deny the preliminary injunction. Isys’ Intent-to-Use
application imbues Isys with certain rights which are not provided to those who do not file Intent
to Use trademark applications.

The Court should recognize these rights and the benefits

provided to Isys for applying the rules.
The TTAB has recognized the need for perfecting registration:
[T]he constructive use provision [15 U.S.C. § 1057(c)] was intended to
foster the filing of intent-to-use applications, to give an intent-to-use applicant
a superior right over anyone adopting a mark after applicant’s filing date
(providing the applicant’s mark is ultimately used and registered) and to
prevent a third party from acquiring common law rights in a mark after the
filing date of the intent-to-use application. With these being the aims of the
constructive use provision, there can be no doubt but that the right to rely upon
the constructive use dates comes into existence with the filing of the intent-touse application and that intent-to-use applicant can rely upon this date in an
opposition brought by a third party asserting common law rights.

Zirco Corp. v. AT&T, 21 U.S.P.Q.2d 1542 (TTAB 1991).
Market degradation has already begun with Google’s product announcement and will be
exasperated by the June 15, 2011 sales via Samsung, Acer, Best Buy and Amazon.com. This is a
situation Google has caused by opposing registration of Isys’ CHROMIUMPC mark and doing
so relying upon abandoned rights. This conduct of Google should not be rewarded with further
market alteration but checked until Isys has the opportunity to perfect its pending but likely
registration rights including dates of constructive use back to June 2010.
D.

The Balance of Equities Favors ISYS

ISYS has done all that the Lanham Act asks of a trademark owner. ISYS has timely
sought and pursued registration for its CHROMIUMPC mark. Isys has invested its effort and
money in promoting the CHROMIUMPC brand and developing goodwill among PC product

9

consumers. But unless the Court grants ISYS the requested relief, all of that effort and goodwill
will irretrievably vanish in the wave of Google’s onslaught.
Maintaining a no-CHROMEBOOK/CHROMEBOX market entry status quo does not
harm the Defendants. They have thus far successfully conducted business using other brand
names and should simply be required to do so in this case at least until Isys is able to perfect its
trademark registration or know whether it cannot.
E.

A Preliminary Injunction Will Serve the Public Interest

The public interest strongly favors due process and denial of the preliminary injunction
will effectively deny ISYS its due process. ISYS played by the rules, applied for a trademark,
waited through the public opposition period, endured the months of Google’s extensions only to
discover that Google used the extensions to delay the issuance of ISYS’ registration until
Google’s product release was eminent. Gaming the system in such a way goes against public
notions of due process and fairness and the Court should not condone such tactics.
Similarly, the public interest at stake in a trademark infringement matter is the public's
right to be free of confusion as to the source of goods or services offered by sellers, Amoco Oil
Co. v. Rainbow Snow Inc., 809 F.2d 656, 658 (10th Cir. 1987) (The Lanham Act protect the
public from deception by accurately indicating the source of a product.) There is no
countervailing public interest in assuring that Google's product can be rolled out under the
CHROMEBOOK trademark.

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IV.

CONCLUSION
Thus, for the reasons stated above, ISYS respectfully request that the Court preliminarily

enjoin Google from continuing to assert abandoned rights in CHROMIUM against Isys in the
opposition proceeding and this proceeding and to enjoin the Defendants from irreversibly
altering the market with the intended June 15, 2011 launch of sales of the CHROMEBOOK
and/or CHROMEBOX PC products.
DATED this 6th day of June, 2011.
KIRTON & McCONKIE
By:

s/ Todd E. Zenger
Todd E. Zenger
Dax D. Anderson
Joshua S. Rupp

Attorneys for Plaintiff
ISYS TECHNOLOGIES, INC.

4839-8734-8745.1

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