Google vs BMW – Trademark Dispute Over Google’s Choice of Alphabet Name?

A Trademark Dispute may be about to erupt over Google’s recent choice of name for its new holding company, Alphabet.

Not long after our blog post “iWatch Trade Mark – Apple In Multimillion Trade Mark Dispute”, the news about another potential big trade mark dispute indicates how common it is for businesses to trip up on an intellectual property issue.

The recently formed conglomerate’s choice of name –  Alphabet – might have run into serious trademark issues because the trademark ‘Alphabet’ is owned by someone else.

Google’s name change

This week Google announced its name change to Alphabet and followed the trend of big companies such as Unilever, FCA and United Technologies to add a new parent company for a famous brand. This approach, Fortune reports, has helped those companies grow steadily.

To many people this is a confusing step to take from a strategic point of view. What could be the reason for running away from the well-known brand worth billions and embrace a new name that is completely unfamiliar to the public? Yet, over the years this has proven to be a very smart and strategically sound brand strategy. It creates flexibility and, in the future, the firm can then easily acquire brands and explore opportunities to grow.

CEO Larry Page’s words clarified this by commenting that “Alphabet is mostly a collection of companies”. Google will not be Alphabet, nor will Google drop its name. Alphabet will simply be the owner of different brands including Google itself, Android, YouTube and others. In other words, it will be the corporate and brand parent. Alphabet will be led by the current Google CEO Larry Page while the subsidiary “Google” part of the business is entrusted to Sundar Pichai.

As a result, Google can be Google – the world’s best search engine and there will be no confusion between the product and the company itself. And Alphabet, on the other hand, will be holding the other strong brands previously owned by Google.

The potential trade mark dispute

Google’s name change would not have been so interesting were it not for this potential trademark dispute. Just one day after announcing the big change, Alphabet faces legal issues due to BMW whose subsidiary is also called Alphabet. BMW’s Alphabet has been part of the German family for a long time. They own the rights in the ‘Alphabet’ trade mark and their current international registration has existed since 1998. Furthermore, the new company will not be able to use the alphabet.com  domain name as it is also owned by the German auto manufacturer.

An article by IT ProPortal reports that a BMW spokeswoman stated that neither Larry Page nor anyone else on behalf of Google have contacted them prior to the Alphabet announcement to acquire the trademark or the domain name. BMW is not intending to sell the trademark either.

Google’s plans and the trademark dispute

It is interesting to follow how this develops especially when Google has plans to launch a fleet of taxi cars and be a direct competitor to Uber (to some extent to BMW as well). Reuters comments that a legal dispute is unlikely since Google’s Alphabet was not intending to build products and brands under that particular name. What is more, there are 103 trade mark registrations solely in the US that include the word ‘alphabet’ or a similar variation, the USPTO reports.

For a trade mark infringement case, the TM owner needs to show that the new name would create “likelihood of confusion” amongst consumers, which can happen if the two offer similar goods and services. This is not the case for now but who knows – now that Alphabet has opened its doors to new opportunities and growth, we may soon hear about a new high-profile trademark dispute.

Whatever the outcome, it is astonishing that a company such as Google would pick such a contentious trademark for its huge change. Naming strategy should be strategic, and avoid the potential for costly litigation down the road.