5 December 2019TrademarksSarah Morgan

Waymo v Waymo TM clash ends with settlement

Google's former self-driving car division Waymo has settled a trademark dispute with a Florida-based company it accused of “intentionally” selecting the Waymo name to do business.

Waymo, which is incorporated in Delaware and a subsidiary of Alphabet, filed a notice of settlement at the US District Court for the Middle District Court of Florida on Monday, December 2.

The notice stated that it would dismiss the lawsuit shortly after the “completion of contingencies” which are expected to occur by no later than February 3, 2020.

Back in August, the self-driving car company accused Florida-based Waymo (which was incorporated in 2017) of damaging “plaintiff’s reputation and goodwill” through the use of the Waymo name.

“Because of the public’s intense interest in self-driving technology, plaintiff being on the frontline of this technology, and the attendant and significant publicity that plaintiff has therefore attracted, the ‘Waymo’ mark quickly achieved immense consumer recognition and fame due to plaintiff’s use of the ‘Waymo’ mark in connection with its offerings prior to defendant’s incorporation on October 24, 2017,” said the suit.

The Floridian company sells medical accessories and other related products, such as spill-resistant cups, through Amazon. Waymo also claimed that the defendant was selling accessories for use in automobiles.

According to the suit, Alphabet’s Waymo sent a letter to the company, requesting that it stop using the ‘Waymo’ mark and the Waymo trade name, but the defendant refused.

“On information and belief, defendant intends to continue to expand its use of the ‘Waymo’ mark on various offerings, including offerings directed at the disabled and elderly, as well as offerings related to or used with automobiles,” added the claim.

Since the claim was filed, the Florida court has granted three motions to extend the time to respond to the suit, as the parties were engaged in settlement negotiations.

After Waymo filed its notice of settlement on Monday, Judge Charlene Honeywell signed a 60-day order dismissing the case. If Waymo doesn’t file a notice of voluntary dismissal before this period ends, the dismissal will occur with prejudice.

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