Android Ex-Founder's 'Essential' Phone Faces Trademark Scuffle With Spigen
Essential Product, Inc., the company run by Andy Rubin, just recently introduced their flagship phone that was named after the company. However, they are already facing a legal scuffle due to the device's brand.
Rubin is well-known for being one of the co-founders of Android and for being one of the key persons at Google.
Very shortly after the Essential Phone was announced late last month, phone cases and accessories maker Spigen called the attention of Rubin's company to the matter of its using the "Essential" brand, which, as it turns out, had already been trademarked by Spigen.
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Spigen's legal counsel, East West Law Group, sent a letter dated June 1 (obtained by Android Police) to the legal representatives of Essential Products, Inc. to address the matter. Part of the letter reads: "Spigen has the exclusive right to use its federally registered trademarks, including but not limited to ESSENTIAL and SPIGEN ESSENTIAL."
Based on the United States Patent and Trademark Office online database, Spigen filed an application to trademark "ESSENTIAL" on May 19, 2015. The application was published on Sept. 22 of the same year and was granted approval on Aug. 2, 2016 with registration number 5014095.
The goods and services included for use with the "ESSENTIAL" trademark include a wide array of electronic gadgets and accessories such as batteries, speakers, cell phone covers, and more.
Spigen has also acquired trademark certification for the "SPIGEN ESSENTIAL" brand for the same types of goods and services. It was approved by the USPTO last Feb. 21 with registration number 5147290.
With that, Spigen raised concern over the fact that Essential Products, Inc. submitted an application for the "ESSENTIAL" mark last Dec. 22, 2016 — over four months since Spigen was granted their second trademark for the said name.
Last Jan. 13, the USPTO documents also showed that Rubin's company submitted another application to trademark "ESSENTIAL PRODUCTS."
Currently, both trademark attempts from Rubin have been served with refusal letters from the USPTO on the basis of Trademark Act Section 2(d) or the "likelihood of confusion" with other brands that have already been trademarked.
The USPTO issued Essential Products, Inc. a deadline of six months (corresponding letters were mailed last March 27) to submit their response to the government agency's refusal of the applications, along with requirements to "Amend the Identification of Goods" and "Amend the Description of the Mark."
If Rubin's company will not comply with the USPTO's requirements within the given period, their trademark application might face abandonment or dismissal.
Meanwhile, Essential Products, Inc. commented on the issue (via Android Police): "Threat letters are commonplace in our sector. While it's Spigen's prerogative to make assertions, Essential believes they are without merit and will respond appropriately."
