Will Google’s Alphabet Begin with B-M-W?

“A, B, C,…as easy as 1, 2, 3?” That remains to be seen. BMW may be driving Google down a bumpy road named Trademark-Infringement Lane, after Google surprised everyone on August 10th with the creation of a new company, Alphabet. I say this because the trademark “Alphabet” and the domain name alphabet.com are currently owned by German automobile-manufacturer BMW. Following the announcement, BMW reportedly indicated that it is now “necessary to examine the legal trademark implications” of Google’s move.

The ABCs of Alphabet

So, what is Alphabet? Alphabet is Google – sort of. As described by Alphabet CEO and Google cofounder Larry Page, Alphabet is a collection of companies, the largest of which is Google, now a subsidiary of the new company. Google in turn has “slimmed down” and moved its non-internet projects to Alphabet – similar to lifespan research company Calico or investment-focused Google Ventures. According to Page, “This new structure will allow us to keep tremendous focus on the extraordinary opportunities we have inside of Google.”

BMW is No Crash-Test Dummy

For BMW, “alphabet” has quite a different meaning. The trademark and .com address are owned by a subsidiary of the German automaker, which provides corporate car fleet services. Presumably, Page and colleagues (wait for it) googled their desired name before the big reveal, yet BMW informed the media that they were never contacted by Google prior to the Internet giant’s announcement. Also, BMW’s spokesperson, Micaela Sandstede, told the New York Times that BMW has no plan to sell the domain to Google, as the website is a “very active” part of (BMW’s) Alphabet’s business. However, BMW is investigating into whether any trademark infringement indeed occurred.

Is BMW Geared-Up and Ready to Go? 

The big question is: does BMW have a case and will it pursue it? Under US trademark law, infringement occurs when a registered mark is used in a way that will likely “cause confusion, or cause mistake, or to deceive.” In other words, having two companies with the same name is okay, as long as there is no possibility that consumers could become confused.

This is where the road gets rocky. Google’s Alphabet is located at http://abc.xyz, but BMW’s alphabet.com experienced a huge spike in visits after Page’s announcement – so significant that it was reported that BMW’s site crashed. The traffic spike might be indicative to a court of confusion among many investors and curious minds as to where they might access Google’s Alphabet online. Furthermore, it was noted that there is a connection between the services of Google and BMW, as BMW is a car manufacturer and Google has a line of self-driving cars. This could potentially be submitted as evidence under the “likelihood of confusion” test.

Although BMW may be annoyed, I think it is rather unlikely they will pursue legal action, no matter what their investigations may uncover. It has been made clear that Alphabet Inc. is purely a parent company and will not sell products or brands built under its name. There should be no confusion between the products and services of Alphabet (Google) and Alphabet (BMW), as Google’s Alphabet technically has neither. Further, Google and BMW are each titans in their respective industries, and I think it would be difficult to prove that the average Joe could not differentiate between the ABCs both companies spell out.

That said, this editor also (wait for it again) googled “how many ‘alphabets’ are there in the world?” Although the answer was not confirmed, a quick search of the USPTO Trademark Database revealed that over one hundred registered marks with some use of the word “alphabet” exist. It is unknown if any of these companies could be impacted by the new Alphabet, and what the fall-out, if any, might be. As reported by the New York Times, it is possible that some “Alphabet” companies sell their domain names, while others may be concerned about their Google result priority, which could affect their online presence. Regardless, the harsh reality is that these smaller entities are unlikely to gear up for battle, because (in the words of an alphabet-named business owner): “Who sues Google?” (Note: this editor also googled this question and over 5 million results appeared in 0.37 seconds, although I did not include the search term “successfully”).

This will be an exciting case to follow should a lawsuit unfold; however, as of today, BMW’s decision on the issue is unknown. You can be sure that I will google it again tomorrow.

Jaimie Franks is an IPilogue editor and JD candidate at Osgoode Hall Law School. 

Leave a reply

Your email address will not be published. Required fields are marked *

twenty + five =