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Evidence 1:
Apple contested our application that was in Google's play store directly with Google, who joined hands to remove our iMessenger/IMESSENGER app from the Google Play Store. As per Apple's legal counsel, they believed that iMessenger would cause likelihood of confusion with Apple's iMessage, though iMessage is an iOS based application, whereas ours was an android based application.
Additionally, IMESSENGER trademark was approved not once, but twice by the USPTO and was the first one in this series dating back to 1999 before other trademarks such as AOL messenger and Instant Messenger came out. Finally after more than a decade, Apple's iMessage was registered. Going by the argument meted out by Apple's legal counsel, it makes us wonder whether iMessage should be a trademark in the first place going by their own legal counsel's argument? What do you think?
Table I:
TABLE II:
References:
1. https://www.legaldhoom.com/2020/02/imessenger-trademark-story-contd.html
2. https://www.legaldhoom.com/2019/08/imessenger-trademark-saga-quiz-iv.html
3. https://www.legaldhoom.com/2019/08/imessenger-trademark-saga-continues_14.html
4. https://www.legaldhoom.com/2019/08/imessenger-saga-continues-ii.html
5. https://www.legaldhoom.com/2019/08/imessenger-trademark-saga-continues.html
6. https://www.legaldhoom.com/2019/07/imessenger-imessenger-trademark.html
7. https://www.legaldhoom.com/2019/07/privacy-policy-for-imessenger-mobile-app.html
8. https://www.legaldhoom.com/2019/04/legaldhoom-unit-of-val-u-pro-consulting.html
What other evidences are we going to provide?
To follow,
i. USPTO examiner brings up the likelihood of confusion clause
ii. European decisions on iMessage trademark eligibility
iii. What other interesting stories?
Google did not even wait to take our Android app from the Play Store without even allowing to present our side, whereas there are other similarly named apps that utilizes similar platforms and were added later, that were kept intact on the Play Store. We will also be sharing how we would have dealt with this issue, if this were to happen on our "The Yagle" play store, part of Amazebaba.com.
Google Play Trademark Notice
Inbox
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Jun 28, 2018, 12:55 PM
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This is a notification that your application, iMessenger, with package ID com.wiMessenger_5172678,
has been removed from Google Play in the following locale(s): US
REASON FOR REMOVAL: Alleged trademark infringement.
Google has been notified that aspects of your application, iMessenger, allegedly infringe upon the
trademarks of others, and it has been removed from Google Play due to a violation of the Developer
Program Policies.
All violations are tracked. Serious or repeated violations of any nature will result in the termination
of your developer account, and investigation and possible termination of related Google accounts.
You may contact Apple at enforcement.72257.161521@mail.
specifically authorizing your app to be re-published, and your app does not otherwise violate the
Developer Distribution Agreement and Content Policy, we will reinstate the app.
Please note that we have included a text copy of the Infringement Notice we received for your
reference. If you have any further concerns about this issue, please address them directly to the
complainant in the Infringement Notice provided below.
The Google Play Team
Text Copy of Infringement Notice:
full_name: Alexis Meghrouni Rivas
your_title: Director, Enforcement Strategies and Services
companyname: Apple
address: 501 W. Grove Street
Boise
Idaho
83702
US
country_residence: US
contact_email_noprefill: enforcement.72257.161521@mail.
phone: 8722402777
trademark_relationship: Note: AppDetex is authorized by Apple to facilitate
the submission of and correspondence regarding complaints.
tm_work: iMessage 4471307: US 4244502: US iMessage
4244501: US
android_app_url:
https://play.google.com/store/
trademark_explain: IMESSAGE word mark (U.S. Reg. Nos. 4244501, 4244502,
4471307) This app entitled "iMessenger" uses a confusingly similiar variant
of Apple’s IMESSAGE word mark in the app title and description, without
authorization, to market an arguably competing product. Such use by the
developer is likely to cause consumers to mistakenly believe that Apple is
affiliated with this developer or the app, when that is not the case. No
viable fair use argument discerned.
tm_sworn_statement1: tm_good_faith
tm_sworn_statement2: tm_swear
NoticeToDeveloper: agree1
signature_date: 6/18/18
signature: Alexis Meghrouni Rivas
subject_lr_trademark: Your Request to Google
hidden_product: googleplay
geolocation: US
hidden_uraw:
:---- Automatically added fields ----:
Language: en
IIILanguage: en
country_code: US
auto-helpcenter-id: 1647639
auto-helpcenter-name: legal
auto-internal-helpcenter-name: legal
auto-full-url:
https://support.google.com/
auto-user-logged-in: true
auto-user-was-internal: false
IssueType: lr_trademark
form-id: lr_trademark
form: lr_trademark
subject-line-field-id: subject_lr_trademark
body-text-field-id:
AutoDetectedBrowser: Chrome 45.0.2454.101
AutoDetectedOS: Intel Mac OS X 10_11_0
MendelExperiments: 10800161,10800170
Form.support-content-visit-id: 1-636649396364491590-
has been removed from Google Play in the following locale(s): US
REASON FOR REMOVAL: Alleged trademark infringement.
Google has been notified that aspects of your application, iMessenger, allegedly infringe upon the
trademarks of others, and it has been removed from Google Play due to a violation of the Developer
Program Policies.
All violations are tracked. Serious or repeated violations of any nature will result in the termination
of your developer account, and investigation and possible termination of related Google accounts.
You may contact Apple at enforcement.72257.161521@mail.
specifically authorizing your app to be re-published, and your app does not otherwise violate the
Developer Distribution Agreement and Content Policy, we will reinstate the app.
Please note that we have included a text copy of the Infringement Notice we received for your
reference. If you have any further concerns about this issue, please address them directly to the
complainant in the Infringement Notice provided below.
The Google Play Team
Text Copy of Infringement Notice:
full_name: Alexis Meghrouni Rivas
your_title: Director, Enforcement Strategies and Services
companyname: Apple
address: 501 W. Grove Street
Boise
Idaho
83702
US
country_residence: US
contact_email_noprefill: enforcement.72257.161521@mail.
phone: 8722402777
trademark_relationship: Note: AppDetex is authorized by Apple to facilitate
the submission of and correspondence regarding complaints.
tm_work: iMessage 4471307: US 4244502: US iMessage
4244501: US
android_app_url:
https://play.google.com/store/
trademark_explain: IMESSAGE word mark (U.S. Reg. Nos. 4244501, 4244502,
4471307) This app entitled "iMessenger" uses a confusingly similiar variant
of Apple’s IMESSAGE word mark in the app title and description, without
authorization, to market an arguably competing product. Such use by the
developer is likely to cause consumers to mistakenly believe that Apple is
affiliated with this developer or the app, when that is not the case. No
viable fair use argument discerned.
tm_sworn_statement1: tm_good_faith
tm_sworn_statement2: tm_swear
NoticeToDeveloper: agree1
signature_date: 6/18/18
signature: Alexis Meghrouni Rivas
subject_lr_trademark: Your Request to Google
hidden_product: googleplay
geolocation: US
hidden_uraw:
:---- Automatically added fields ----:
Language: en
IIILanguage: en
country_code: US
auto-helpcenter-id: 1647639
auto-helpcenter-name: legal
auto-internal-helpcenter-name: legal
auto-full-url:
https://support.google.com/
auto-user-logged-in: true
auto-user-was-internal: false
IssueType: lr_trademark
form-id: lr_trademark
form: lr_trademark
subject-line-field-id: subject_lr_trademark
body-text-field-id:
AutoDetectedBrowser: Chrome 45.0.2454.101
AutoDetectedOS: Intel Mac OS X 10_11_0
MendelExperiments: 10800161,10800170
Form.support-content-visit-id: 1-636649396364491590-