United States District Court, W.D. Washington, Seattle
ORDER ON CROSS MOTIONS FOR SUMMARY JUDGMENT
JAMES P. DONOHUE, Magistrate Judge.
I. INTRODUCTION AND SUMMARY CONCLUSION
On July 11, 2013, plaintiff and counter-defendant Treemo, Inc. ("Treemo") filed a declaratory judgment against defendant and counter-claimant Flipboard, Inc. ("Flipboard") for a declaration of non-infringement of trademark rights under the Declaratory Judgments Act, 28 U.S.C §§ 2201 and 2202, and the Lanham Act, 15 U.S.C. § 1124(a) and (c). Dkt. 1. On July 26, 2013, Flipboard filed an answer and counterclaims alleging statutory and common law infringement of trademark rights and false designation of origin claims, under 15 U.S.C. §§ 1114 and 1125(a). Dkt. 6.
On June 19, 2014, the parties filed cross motions for summary judgment. Dkts. 51, 61. Treemo seeks an order granting summary judgment that its "FLOWBOARD" mark does not infringe its "FLIPBOARD" mark. Dkt. 51 at 4. Conversely, Flipboard asks this Court to determine, as a matter of law, that Treemo's FLOWBOARD mark infringes its mark. Dkt. 61 at 6. Having considered the briefs and supporting materials filed by the parties, the parties' oral arguments on August 1, 2014, and the balance of the record, the Court DENIES both motions for summary judgment (Dkts. 51 and 61).
Founded in 2010, Flipboard is a technology company based in Palo Alto, California. Dkt. 61 at 8. In July 2010, Flipboard launched its primary product, which is a software application for smartphones and tablet computers called "Flipboard" (hereinafter the "Flipboard App"). Id. The Flipboard App allows users to create interactive publications by combining elements of online content in order to tell stories, act as an online photo album, and display social media content. Id. at 9. Depending on the user's preferences, the Flipboard App allows users to make personal publications that can include content from various Internet sources. Id. Users can then publish and share their content for other users to view. Id. The Flipboard App is available for free and can be downloaded from online channels such as Apple's App Store for iPhones and iPads, and the Google's Play Store for Android devices. Id.
Associated with Flipboard's App is a FLIPBOARD mark and its "F" logo, which have been used in commerce since 2010. Id. at 10; Dkt. 56. Flipboard applied for registration of its FLIPBOARD mark with the U.S. Patent and Trademark Office ("USPTO") in February 2010, and for its F logo mark in December 2010. Dkt. 61 at 10. The USPTO granted registration of the FLIPBOARD mark and F logo (collectively "the FLIPBOARD Marks"), separately, in July 2012 and again in August 2013. Dkt. 61 at 10-11.
The FLIPBOARD mark is used throughout the Flipboard App, in the URL of Flipboard's website, the account name for Flipboard's official Facebook account, and as the "handle" for Flipboard's official Twitter account. Dkt. 61 at 10. Similarly, its F logo is displayed throughout Flipboard's website, the Flipboard App, and in Flipboard's marketing material. Id.
Founded in 2005, Treemo is a technology company based in Seattle, Washington. Dkt. 51 at 5; Dkt. 61 at 12. Since its founding, Treemo has been in the business of developing and marketing mobile applications. Id.
In 2011, Treemo was producing and distributing a software product for mobile devices called "AppaFolio." Dkt. 51 at 5. The AppaFolio product was a platform for a user to bring together into a "folio" the user's personally-generated multimedia content, such as graphics, images, or other user-created content. Id. In early 2012, Treemo began researching and developing user interface prototypes for a tablet-based authoring tool that would allow anyone to author interactive presentations from their tablet, specifically the iPad tablet. Id. at 6. The goal was to create a tool that would allow users to author presentations that could be explored interactively. Id. According to Treemo, "the new Treemo product allowed the user to build a storyboard-style presentation and then add interactive links to enable the viewer to arbitrarily follow various paths in the presentation, the way one would in a flowchart." Id. Thus, the fundamental interaction used to navigate Treemo's application is the ability to scroll or "flow" from screen to screen. Id.
Starting around May 2012, Treemo decided to rebrand its AppaFolio product. Id. Treemo began considering the name "Flowboard" for its product. Dkt. 61 at 13. According to Treemo, it conducted some research, including doing a search of domain names, trademarks, and other uses of the words "flow" and "board, " in order to determine whether the term "Flowboard" was available to use. At least as early as this time, Treemo discovered the FLIPBOARD Marks. Id. In July 2012, Treemo Director Geoff Entress noted to Treemo Founder Brent Brookler that the Flowboard name being considered was similar to Flipboard's. Id. Despite the recognition of the FLIPBOARD Marks, Treemo decided to proceed with the Flowboard name for its product. Dkt. 51 at 8. On August 9, 2012, Treemo filed an application for registration of the "FLOWBOARD" mark with the USPTO and was issued the mark. Dkt. 53-5. In addition, to the FLOWBOARD mark, Treemo also adopted its own version of an F logo (collectively "the FLOWBOARD Marks"). See Dkt. 51 at 8.
On or about April 18, 2013, Treemo launched its rebranded application (hereinafter "the Flowboard App"), and began doing business as Flowboard. Dkt. 61 at 13. Like the Flipboard App, the Flowboard App is available for the iPad, and is available for download at the Apple App Store. Id. at 14. Treemo uses its FLOWBOARD Marks in essentially the same way as Flipboard uses its marks. Id. Treemo uses the FLOWBOARD mark as the URL of its official website, in the account name for Flowboard's official Facebook account, and as the "handle" for the Flowboard's official Twitter account. Id. The FLOWBOARD Marks also appear throughout the Flowboard App itself, in all of ...