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Trademark Infringement Claims Could Derail Google Nest

Google Nest faces trademark dispute

Google is the most visited website in the world, and it owns the second most visited (i.e., YouTube). It would seem that nothing could stop the company’s rise to dominance, but a trademark dispute over Google Nest could potentially slow it down. The search engine is no stranger to claims of infringement, but this case could have the most significant implications yet.

Google Nest Trademark Infringement Claims

In July 2021, the U.S. Patent and Trademark Office (USPTO) published a registration from Google into the Official Gazette. The company sought to claim a trademark over its Nest line of products. While the original application for registration was filed in October 2020, the history of this product line goes back much further.

While Google didn’t acquire Nest Labs until 2014, the name had been in use since at least 2010. This timing is very interesting, though, thanks to the Trademark Opposition filed by Louis Poulsen A/S on August 12, 2021. The trademark cited in the opposition notice relates to the LP Nest brand — which filed for registration back in June 2010.

Louis Poulsen A/S provides a variety of lighting products for clients around the world. The goods and services offered by Google under the Nest brand make it clear why some confusion may exist between the two companies:

  • Class 009: Light switches, lighting control panels and other lighting products.
  • Class 011: Light bulbs, lighting fixtures, lighting strips and lamps.
  • Class 037: Installation of lighting.
  • Class 042: Online non-downloadable software for controlling automated lighting.

Each of these trademark classes seem to land squarely in the products and services provided under the LP Nest brand. While Google Nest certainly focuses more on home automation, there’s no denying that both companies offer similar products. They’re also very likely to be marketed and sold within the same trade channels.

For this reason, Louis Poulsen A/S filed their notice of opposition against Google on the grounds of priority and likelihood of confusion.

Issues in the Case

The Trademark Trial and Appeal Board (TTAB) will be the first to hear the case between Google Nest and LP Nest. Of course, this is assuming the case makes it that far. The parties involved could reach an agreement before this happens. And although it seems unlikely — particularly considering the capital Google has put into Nest — the search giant could withdraw its application.

If the case moves forward, though, the TTAB will consider a variety of issues. One of the most important will be the likelihood of confusion. If the board believes consumers would likely be confused about the source of Google Nest products, they may find in favor of the opposer. Of course, this may mean little once the issue of priority comes up.

Nest Labs — the predecessor to Google Nest — has operated since 2010. This is the same year the LP Nest trademark was filed. Louis Poulsen A/S will no doubt claim that they have priority — as they did in their opposition notice — but it will fall to the TTAB to decide who has superior rights over the trademark.

What Happens Now?

Now that Louis Poulsen filed its trademark opposition, Google has until September 21, 2021 to submit an answer. In the unlikely event that they fail to do so, the LP Nest brand may emerge victorious in the “battle of the nests.” If they do file an answer with the TTAB, though, procedures such as discovery, pre-trial disclosures and arguments can take place.

Based on the current trial schedule, this case could drag into February 2023. And even after that point, it’s possible that Google Nest and Louis Poulsen A/S could still end up in federal court. It’s impossible to know what the TTAB or any subsequent trials will find. The one thing that we do know, however, is that the facts of this case indicate that it will be an interesting one.

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