Dropbox wins TM dispute with rival
US file hosting service Dropbox has won a trademark dispute against a rival business at a US district court.
Judge Edward Chen at the US District Court for the Northern District Court of California granted Dropbox’s motion for summary judgment against cloud storage company Thru Inc on Tuesday, November 15.
Dropbox was founded by Drew Houston in 2006. He launched the Dropbox products in 2008.
In 2009, Dropbox applied to trademark the term ‘Dropbox’ at the US Patent and Trademark Office (USPTO). The mark was granted in 2014 and covers online non-downloadable software.
Although three claimants initiated opposition proceedings before the USPTO’s Trademark Trial and Appeal Board, each claiming superior rights to the ‘Dropbox’ mark, Thru Inc was not one of these claimants.
Each of these trademark oppositions was ultimately terminated, according to Dropbox.
Texas-based Thru Inc has offered a file management software program called File Transaction Hub, since 2002.
In 2004, the business added a feature called DropBox to its software, that allowed customers to receive digital files from third parties.
“It also appears that Thru Inc at times—but not always—appended a ™ symbol when it used the ‘DropBox’ designator on documents intended for customers and the general public,” said Chen’s order.
In 2011, Thru applied to register the term ‘DropBox’ at the USPTO.
According to the order, Thru “took no action” to enforce any trademark rights for the term ‘DropBox’ until December 2011, when the business’ counsel asserted that it had used the term “continuously” since 2004.
When the USPTO issued Dropbox’s trademark registration, Thru filed a petition for cancellation.
Dropbox sued Thru in April last year. Thru then filed counterclaims for trademark infringement and unfair competition.
In his ruling, Chen said that Dropbox argued it is entitled to a summary judgment because Thru has “no trademark rights in ‘DropBox’ because it failed to use it as a trademark”.
Additionally, the hosting service argued that Thru’s claims are “barred by laches”.
Chen found in favour of Dropbox’s laches argument and granted the company’s motion for a summary judgment.
Bart Volkmer, general counsel at Dropbox, told WIPR: “From the outset, we believed Thru’s claims of trademark rights had no merit.
“Instead of taking a ‘wait and see’ approach, we took the initiative in filing a pre-emptive action to confirm our trademark rights. We’re pleased that the court dismissed all of Thru’s claims and recognised its deliberate delay in filing suit.”
A spokesperson for Thru said that it is not commenting at this time.
