The Substantially Similar Weblog

The American Chemical Society· has filed a trademark infringement lawsuit· against Google for its new Google Scholar· service. ACS uses SCIFINDER SCHOLAR for its desktop scientific research tool; Google uses GOOGLE SCHOLAR for its web-based research journal search engine.

I haven’t reviewed the papers, which at this point I expect consist just of a complaint, but at first blush this appears to be a weak suit.

ACS’ mark SCIFINDER SCHOLAR was only registered on May 6, 2003. Registration gives the mark a presumption of validity. After five years of registration, a trademark holder can file for “incontestable” status which makes it more difficult for a defendant to challenge the mark’s status, but a newly registered mark does not have that benefit.

Trademark strength is evaluated on a spectrum ranging from arbitrary and fanciful (think Volkswagen’s “farfegnugen”) to suggestive (7-ELEVEN for a store open from 7 to 11) to descriptive (PHOTO CENTER) to generic (DINER). SCIFINDER SCHOLAR is, at best, suggestive, and arguably descriptive.

Another problem for ACS is that SCIFINDER SCHOLAR is only registered in its stylized form (see right). If the registration were in block letter form, it would cover all forms of the mark—stylized and plain. Here, there is no argument that Google infringes the stylized design of ACS’ mark; and not even the whole mark, just the “scholar” part. While it is true that in trademark law, similarities between marks are generally weighed more heavily than differences, in this case, SCIFINDER SCHOLAR (stylized) is pretty dissimilar from GOOGLE SCHOLAR as used by Google (below).

There is a long line of trademark cases that hold that the use of a trade name or house mark in connection with another mark reduces the likelihood of confusion. In other words, GOOGLE SCHOLAR is less likely to be confused with SCIFINDER SCHOLAR than if the mark Google were using was just SCHOLAR. Furthermore, the GOOGLE part of the mark is much larger than the SCHOLAR part. Consumers are not likely to be confused about who is providing the service: Google is a household name, and it should be clear that it is providing the service, not ACS.

Finally, the class of prospective consumers for each service is likely dissimilar. SciFinder Scholar is a “desktop research tool for students and faculty·”, while Google Scholar is likely to have a much broader and less specialized audience. This is often a problem with Internet trademark lawsuits: the prospective audience is possibly the whole world, and a trademark that might be well known within a small niche (academic research scientists) might be entirely unknown to the Internet population. I’m sure Google has already collected statistics on its Google Scholar service based on the IP addresses of users doing searches.

This lawsuit seems like a dumb move on the part of ACS. People always get upset about trademark lawsuits brought on shaky grounds, especially when the defendant seems to be involved in the dissemination of useful information rather than just pawning off substandard goods. I’m sure some people will characterize this lawsuit as a claim by ACS that they own the word SCHOLAR, which isn’t quite what they’re arguing, but it can’t possibly be good publicity for ACS. I can’t imagine its academic membership is too happy about this.

As an interesting side note, observe that the ACS website· uses “ACS Google” to do a site search.

(As an example of the effectiveness of Google Scholar, here are some references to a chemistry paper for which I did the initial experimental research, which, ironically enough, was published in the Journal of the American Chemical Society. You would have to pay to read the article online; unfortunately I don’t have an electronic copy myself.)

Update: I found a copy of the complaint in ACS v. Google, which basically confirms my analysis. ACS claims that it, and its users, often refers to its service as “SCHOLAR” and that Google’s research tool operates under the name and trademark “SCHOLAR.” This is apparently how they’re going to try to get around the “house mark” issue—but I haven’t found any instance of SCHOLAR alone on Google’s site—it always appears as GOOGLE SCHOLAR. They’ll likely lose on the facts on this one.

Second update: Thanks to Joseph Lorenzo Hall who got my a copy of my paper, Peroxidase Activity in Heme Proteins Derived from a Designed Combinatorial Library. The experiment in a nutshell was to see if proteins designed de novo based on a combinatorial pattern of amino acids designed to form four-helix bundles would have catalytic properties. The answer is that they did. This is not a very surprising finding today but a few years ago it was significant.

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