The online payment company Xoom Corp. made a bit of a splash in 2011 by bringing trademark infringement claims against Motorola Mobility right before Motorola launched a tablet computer under the Xoom moniker. The dispute, which has generated work for at least three Am Law 100 firms, came to a quiet end on Monday with a confidential settlement that requires Motorola (now a Google Inc. subsidiary) to phase out its Xoom brand.
Lawyers for both companies filed a joint stipulation of dismissal on August 9 in U.S. district court in San Francisco. Judge Charles Breyer signed off on the dismissal on Monday. Xoom Corp. spokesperson Robin Carr declined to comment, except to say that the case has been "resolved to the resolution of the parties," and that "Motorola will phase out its use of the Xoom brand."
Xoom is well-funded Web company that allows users to send money to foreign countries. It's operated the Xoom.com domain name since 2003, and filed a trademark registration for "Xoom" in 2004.
Motorola introduced its Xoom tablet in January 2011 in hopes of challenging Apple Inc.'s dominant iPad. You may have seen the Super Bowl commercial for the Xoom that parodied Apple's famous "1984" ad.
In February 2011, just weeks before the Xoom tablet hit shelves, Xoom Corp.'s original lawyers at Morgan, Lewis & Bockius sued Motorola for trademark infringement and unfair competition. They argued that consumers would mistakenly think that the company is associated Motorola. Xoom was clearly miffed that a Motorola web page advertising its product had started dominating online search results for the term "Xoom."
When the complaint dropped, IP blogger Florian Mueller of FossPatents speculated that Xoom might not settle "even for a check over several million dollars." The company "may want to defend its exclusive use of that brand," he wrote.
Judge Breyer referred the case to a mediator in late 2011, and it hasn't generated much docket activity since. Earlier this year, Xoom swapped Morgan Lewis for counsel at Goodwin Procter. Motorola was represented by Katten Muchin Rosenman, as well as the California firm Manning & Kass, Ellrod, Ramirez, Trester.
It's unclear how big of a blow Monday's settlement is for Google and Motorola. Sales of the tablet were disappointing from the get-go, and by April 2012 they represented just 7 percent of the market for Android tablets.
Goodwin Procter partner Ira Levy, who signed the stipulation for Xoom Corp., declined to comment. Katten Muchin partner Kristin Achterhof did not return a call seeking comment.
Jan Wolfe is a senior reporter with The Litigation Daily, a Recorder affiliate.
