• Henry Park

Don't forget to comply with trademark license terms

On September 27, 2019, Elasticsearch Inc. sued Amazon.com, Inc. for trademark infringement (Case 3:19-cv-6158, N.D. California) (see Complaint, a copy is hosted on Mega.nz). This case should be a reminder that businesses need to comply with the trademark usage guidance from trademark owners.

Elasticsearch developed a product called Elasticsearch which is an open source search and analytics engine (see link). Elasticsearch obtained a federal trademark registration for its ELASTICSEARCH mark (see TSDR link). Elasticsearch issued guidelines for the use of its ELASTICSEARCH mark (see link) which state that (1) you cannot use the ELASTICSEARCH mark as part of any product name, (2) the use of the ELASTICSEARCH mark must be less prominent in placement and size than the other product name, (3) the use of the ELASTICSEARCH mark must not create a sense of affiliation with or endorsement by Elastic, and (4) the use of the ELASTICSEARCH mark must include proper attribution of mark ownership to Elastic.

As you can guess, Amazon hasn't followed the guidelines -- which is a license to use the ELASTICSEARCH mark.

In particular, Amazon is using the ELASTICSEARCH mark in two product names: (a) Amazon Elasticsearch Service and (b) Open Distro for Elasticsearch. In both product names, the use of the ELASTICSEARCH mark is not less prominent than the other product name. In its marketing materials, Amazon has not disclaimed or communicated that Elasticsearch is not connected to the Amazon product offerings and Amazon has not attributed ownership of the ELASTICSEARCH mark to Elasticsearch.

Therefore, Elasticsearch argues Amazon has infringed its registered trademark.


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