Trademark Attorney Morris Turek

Morris E. Turek

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Raw Deal! Groupon’s Trademark Registration for GROUPON Challenged By Owner of GROUPION Trademark

Groupon Trademark

This week’s post involves one of the best places on the web to get substantial savings on tons of different products and services.  If you’ve never heard of Groupon, I suggest you immediately stop reading my blog, sign yourself up on Groupon’s website, and start receiving a new deal in your inbox every single day.  But please don’t forget to come back and finish reading my blog.  After all, no discount is worth missing the fascinating trademark tidbit I’ve got in store for you this week.

OK, now that you’re officially a member of Groupon, you have my permission to continue reading.  Way back on November 5, 2007, a company by the name of Girlawhirl Incorporated filed a trademark application seeking registration of the mark GROUP-ONS for “promoting the goods and services of others by providing a website featuring coupons, rebates, price-comparison information, product reviews, links to the retail websites of others, and discount information.”  The registration issued approximately a year later and claims that the mark was first used in the United States on November 30, 2007.  Shortly afterward, Girlawhirl assigned all rights to the GROUP-ONS trademark to another company called The Point, Inc.  On March 10, 2009, The Point filed another trademark application for GROUPON, which asserted a first use date of October 21, 2008 and was for essentially the same services as those listed in the registration for GROUP-ONS.  In June 2009, The Point legally changed its corporate name to Groupon, Inc., and its application for GROUPON matured into a trademark registration in September 2009.

Here’s where it gets interesting.  In between the time Groupon obtained its registration for GROUP-ONS and the date it filed its application for GROUPON, a German corporation by the name of I-Sense Software filed an application seeking to register the trademark GROUPION.  I-Sense’s application was not based on use of the GROUPION mark in the United States, but rather on a foreign trademark application it filed in Germany on November 27, 2008 (which I note is after Groupon’s first use of GROUPON in October 2008 and GROUP-ONS in November 2007).  Once I-Sense’s foreign trademark application for GROUPION issued to registration in the European Community, its U.S. application for GROUPION proceeded through the registration process and finally issued in July 2010.  This registration was later assigned to a California company called Groupion, LLC in early 2011.  If you’re curious to see what Groupion does, I encourage you to visit its website.  I think you’ll agree that computer software design and development for businesses has pretty much nothing to do with offering a $25 gift certificate to my favorite local Chinese buffet for the amazing price of only $10.

Well, Groupion apparently holds a different opinion than yours truly because on February 23, Groupion instituted a cancellation proceeding against Groupon’s registration for GROUPON on the basis of priority and likelihood of confusion.  Groupion alleges in its petition for cancellation that it has been using GROUPION in the United States in connection with its computer software products and services since May 2007 (which would precede Groupon’s use of both GROUP-ONS and GROUPON).  Of course, I don’t have any of Groupion’s evidence in front of me, but I do think it’s quite sketchy that Groupion is now asserting May 2007 as its first use date in the United States when it chose to rely on its foreign trademark application filed in Germany in November 2008 as the sole basis for its U.S. registration.  I mean, if Groupion actually had use of its mark in the United States at the time it filed its U.S. application, it wouldn’t have had any compelling reason to rely on its foreign application in the first place.  But, even assuming that Groupion can prove priority, I find its likelihood of confusion allegation laughable.  Although GROUPION and GROUPON admittedly look and sound very similar, the services with which they are used appear to be wildly different.  Seriously, it’s not like someone who is familiar with Groupion’s computer software solutions is going to purchase ten pilates sessions for the cost of five thinking that he was dealing with the same company.  Absolutely ridiculous.

But that’s not all.  I suspect that Groupion knows that it’s claims of priority and likelihood of confusion are complete bunk since it also alleged in its petition for cancellation that Groupon committed fraud on the Trademark Office.  To make a long story short, Groupion is basically arguing that Groupon did not have any use of its GROUPON mark in interstate commerce on October 21, 2008 (which is the date listed in Groupon’s registration) and, therefore, was never entitled to registration of its mark.  Groupion alleges that Groupon had only made use of the GROUPON mark solely within the City of Chicago in association with discounts on pizza.  Again, I haven’t seen any evidence on this issue, but my gut feeling is that none of this adds up quite right.

Oh, and a day after Groupion filed the cancellation proceeding, it instituted a trademark infringement lawsuit against Groupon in the United States District Court for the Northern District of California.  So, the cancellation proceeding will probably now be suspended pending the disposition of the civil court action.

So, I urge everyone to buy lots and lots of deals from Groupon in order to help Groupon pay for the costs of defending this nonsense.  As far as I’m concerned, the deal is on!

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