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ACS Sues Over Google Scholar

The American Chemical Society announced last Friday that it is suing Google over the Google Scholar service. ACS runs SciFinder Scholar, a service for accessing scientific literature published by CAS (the Chemical Abstracts Service), and ACS argues that it owns trademark rights to the word “Scholar,” at least in the context of information retrieval.

At any intuitive level, this is wacky stuff. Take it on the merits, first: ACS does have a registered mark (No. 76262236, if I’m doing the search correctly) for “SciFinder Scholar” in connection with “computer software enabling users to locate and access scientific and technical information on an electronic database and to browse and search on-line scientific and technical literature, together with manuals sold therewith” and “providing an online computer database in the scientific and technical information fields.” Google clearly isn’t doing the latter, and IMHO it isn’t doing the former. That’s not dispositive of the case, but it sheds light on whether there is (or is not) a “likelihood of confusion” here.

Importantly, of course, ACS’s mark is “SciFinder Scholar,” not “Scholar,” and Google is only using the latter word. It’s doubtful that ACS owns the word “Scholar” for information retrieval services.

But that’s for the court to decide, right? The complaint may be on the fringe, but ACS, as an owner of a registered mark, has an obligation to protect its mark, lest those rights wither away. This is ACS’s thinking: “‘The field of scientific research and related services is, of course, open to all,’ said Flint Lewis, ACS’s secretary and general counsel, in a statement. ‘But when someone uses a trademark similar to ours, we have no choice but to take action—to protect the goodwill that we have built over the years and to prevent the likelihood of confusion in the marketplace.’ (Here’s the link to the ACS press release.)

This is the “devil made me do it” premise of a lot of trademark litigation (and threats), and it’s a myth worth debunking. Trademark owners have to take care that their mark is not deemed “abandoned” and that the mark does not become “generic,” i.e., descriptive of some class of goods or services, rather than of the mark owner’s goods or services. That legitimate interest in “policing” the use of the mark does not mean that preemptive lawsuits against any use of even part of a mark, by anyone, are necessary or appropriate. The benchmark for trademark infringement is, as one federal court put it recently, that “the defendant advertises or otherwise promotes the [trademark] thereby causing the public to see the protected mark and associate the infringer’s goods or services with those of the mark holder.” That’s the case where “policing” the mark is a legitimate justification for cease and desist letters and actual lawsuits. That’s not ACS’s position; ACS is saying, “You used my word.”

Suppose Google put up a service called “Scholar,” with the Google Scholar functionality. Infringing? Never. ACS and CAS can’t use trademark threats to keep competitors out of the scientific search market. This one isn’t even close.

UPDATE (12/14/04): Adam Kessel has a copy of the Complaint here. ACS’s claim is based not only on its registered SciFinder Scholar mark but also on common law rights in the word “Scholar.” The latter arise, allegedly, because ACS and users of SciFinder Scholar “often refer to the product simply as ‘Scholar.'” This tidbit of information doesn’t change my view of the merits; in fact, it confirms the weakness of ACS’s case. ACS was thoughtful enough to register the mark that matters. It didn’t even try to register “Scholar” as a mark. (If it had, there’s a fair chance that the application would have been rejected.) If it didn’t care before, it shouldn’t have standing (using that term colloquially, not legally) to do so now.

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