iWatch and Android Smartwatch trademark issues

If Google were to produce a smartwatch, you might expect them to call it Android Smartwatch. But they might be blocked from doing so.

When the many third party companies that build Android hardware market their wearables, you might expect to hear them described as Android smartwatches. But even that might not work.

Why couldn’t these companies call an Android smartwatch an Android smartwatch? Because another company has been calling their line of watches Android for quite some time — far longer than Google has distributed the Android platform. Far longer than most people carried around basic cell phones, even.

Existing trademarks could play a large part in the naming of smartwatches. It’s not just Android, either. Apple has already faced issues naming its own smartwatch.

The issue of trademarks and smartwatches is not an isolated one. Products need names, and names cannot potentially confuse consumers. The body of existing trademarks, registered or not, dictates what companies can and cannot name their products. They will determine the future of naming gadgets.

The 20-year-old Android watch

Android Smartwatch

The Android-brand smartwatch

If you search the Trademark Electronic Search System for the word Android, you’ll see 29 live records. Not each of these is a registered trademark. Only the ones with registration numbers represent federally registered trademarks. The others sit at some point in the trademark registration process.

U.S. Trademark Application Serial No. 77318565 is a listing that does not have a registration number, and so is not a federally registered trademark. That listing belongs to Google, for the Android platform. They filed the trademark application almost seven years ago, but have faced a number of challenges along the way.

U.S. Trademark Registration No. 3467615 is a registered listing for Android. This is from OKO International. Though they filed their trademark application a month after Google, their trademark was approved less than nine months later. Why? Because it’s hard to argue that an Android wristwatch could potentially confuse consumers with existing Android brands.

A few years later, and about 20 years after they started selling Android watches, OKO has gained an advantage. They have already sued Google for trademark infringement, though that case dealt with traditional watches that Google sold through its online store. It’s not difficult to see how Google might have difficulty marketing an Android Smartwatch.

Complicating matters further, OKO filed a trademark registration in September 2013 for the term “ANDROID SMARTWATCH”. A few months later they indeed launched a smartwatch named Android Smartwatch. The trademark application is still pending, and the United States Patent and Trademark Office (USPTO) is requiring OKO to submit a disclaimer for the term smartwatch, acknowledging that they can’t claim exclusive rights to the use of that term.

Even without the “ANDROID SMARTWATCH” registration, OKO has acted aggressively in protecting its trademark rights. It recently sued Sony over the latter’s Sony SmartWatch. That might not contain Android in the title, but Sony has marketed it as “Sony SmartWatch Android Watch” and “Android Watch.” OKO objects to these marketing materials, since they do appear to infringe on its existing trademark.

If OKO does prevail in its trademark registration for “ANDROID SMARTWATCH” and does prevent Sony, and by extension other companies, from marketing these smartwatches with the word Android, then where does that leave the future of gadget naming?

Putting the i in Apple

Apple iWatch

Todd Hamilton’s iWatch concept.

Rumors have flowed heavily this year that Apple will launch its own smartwatch. When they finally unveil it, what name do people expect Tim Cook to say? iWatch, naturally. Yet even before we know a thing about what the iWatch will be, Apple faces trademark issues with the name. Might other companies prevent Apple from registering the logical product name for its smartwatch?

That appears to be the case already. The Trademark Electronic Search System (TESS) reveals a number of trademark applications for “IWATCH”. M.Z. Berger & Co., Inc. filed a trademark application for the term in 2007. More recently, a company called OMG Electronics, LLC filed an application in August 2012. Both marks were published for opposition, despite using the same iWatch mark. The main point of difference, it seems, is that M.Z. Berger filed in the wristwatch class, while OMG Electronics filed in the mobile phone class.

In both cases, Swiss watchmaker Swatch filed an opposition. They have actually done the same to Apple itself. While it has not filed a trademark application in the U.S., at least under its own name, Apple has filed trademark applications in numerous other countries. In a number of them Swatch has challenged them, citing their existing iSwatch trademark. They’re using the same mark to oppose M.Z. Berger’s and OMG Electronics’ applications.

Chances are they will do the same should Apple produce a smartwatch with that name. There is a chance that Apple has already filed a trademark application using a shell corporation, as MacRumors has speculated. There is a trademark application for “IWATCH” from Brightflash USA LLC, but the USPTO has already issued an Office Action refusing the registration. The examining attorney cites the previous applications for the “IWATCH” mark.

While Apple does not have a monopoly on the letter i, it has made i[Product] a major part of its branding efforts for more than 15 years. Companies who use the same naming format are essentially profiting from Apple’s success — the very act trademark law was intended to control. When Apple is finally ready to release the iWatch, assuming they do intend to call it that, we could see an unprecedented trademark battle involving Swatch, M.Z. Berger, and even OMG Electronics.

A sign of issues to come

The issues themselves carry enough merit. If companies can’t describe their smartwatches as Android smartwatches, they lose a major marketing point. If Apple can’t call its smartwatch the iWatch, they have to break a line of branding that has worked exceedingly well. It seems almost unfair that other companies can control the usage of these terms.

Yet the future issues loom larger. Rapidly developing technology might produce great products, but those products need names. A market producing an unprecedented number of products will face many naming issues in the process. Only the strongest brand names will pass muster.

The trademark system isn’t broken in the same way as the patent system. Yet in the same way, the only real solution is to examine intent. Why did we, as a country and society, create these systems? The trademark system allows companies to clearly identify their products and prevent competitors from using those identities for their own profits.

By this logic, Google should be awarded the trademark for Android. They’re clearly not trying to profit off any previous brand called Android, nor would or does the public associate Google’s Android brand with any that came before. In the same way, Apple should have every right to call its smartwatch the iWatch. That is how they name their products. Another company shouldn’t have the right to horn in, just because they can use the letter i preceding their product names.

Chances are the trademark system won’t change at all, though. The result? More cases like the above, where companies spend money defending their brand names in front of the Trademark Trial and Appeals Board — or worse, in federal court — rather than on invention and innovation.