Trademark Infringement Complaint
On July 9th 2015 and September 29, 2015, the Cashflow and Cashflow (Free) apps were the subject of trademark infringement complaints made to Google and Amazon respectively. Google suspended the apps from the Google Play store on July 10, 2015 and Amazon suspended the free app from the Amazon Appstore on October 13, 2015.
The trademark infringement claims alleged that the Cashflow and Cashflow (Free) apps infringed on trademarks related to financial education board games, financial education books, financial education services (such as seminars, classes, and workshops), and financial education computer games.
Immediately following the initial suspension from the Google Play store, in literally a matter of minutes, Cashflow’s developer initiated contact with the representative that submitted the complaints on behalf of the trademark holder. The individual who submitted the complaints refused to rescind the complaints despite the fact that the Cashflow and Cashflow (Free) apps were not, in fact, games or financial education products that the trademark holder could reasonably assert trademark protection against.
In an effort to resolve the dispute rapidly before users of the apps could be impacted by the suspension from the primary Android marketplaces, Cashflow’s developer offered to settle the dispute by either adding a disclaimer to the software disclaiming and relation to the trademark holder or the trademarked products or by simply changing the name of the software. It was communicated clearly and explicitly, to the individual responsible for initiating the complaint, that Cashflow’s developer could not change the name of the software while the apps were suspended. In order to change the name of the software, the complainant would need to rescind the complaint with Google so that the suspended apps could be updated. Google rejected the counterclaims submitted by Cashflow’s developer and Google does not allow developers to update suspended applications.
The individual who submitted the complaints refused to work with Cashflow’s developer to remove the suspension, even when the developer offered to rename the apps. It was suggested that Cashflow’s developer could simply republish the app under a different name.
Re-publishing the app under a different name
Android applications all have a unique package identifier. The package identifier cannot be changed, otherwise devices would consider the app to be completely different. An app’s name can change but the package identified cannot. In order to re-publish the apps under a different name to circumvent the suspension by Google, the package identifier would have to be changed. This would mean that the app would be brand new on the market. The app would have zero ratings and zero downloads. Users that previously purchased Cashflow would have to re-purchase the new app and would not be notified up updates and upgrades. Users transferring their apps to a new phone would not receive the new app. Cashflow’s developer would have no way of contacting the existing users to notify them of the name change and new app.
In short, re-publishing the app would have a negative impact on the existing users and would put Cashflow’s developer in the position of trying to start over in an already mature market with zero visibility to users.
Having exhausted any means of resolving the dispute through the individual who initiated the complaints, Cashflow’s developer began exploring the possibility of seeking legal recourse for what he believed to be a textbook case of Trademark Bullying. Trademark Bullying is typically defined as a legitimate trademark owner exerting trademark protection more broadly than the law could reasonably be construed to allow, and often against products in different markets and people or companies that generally lack the means to engage in costly and time consuming intellectual property litigation.
This process began with complaints to the State Bar of Arizona regarding the apparent Unauthorized Practice of Law by the individual “representing” the trademark holder. Almost a year later, the State Bar of Arizona would find that the individual in question was engaged in the unauthorized practice of law but would decline to pursue a legal complaint against him as this appeared to be an isolated incident and he was now being “supervised by an attorney”.
After consulting with numerous attorneys and researching trademark infringement, Cashflow’s developer sent a letter to the trademark holder demanding that the complaints be rescinded, outlining the facts and informing the trademark holder that without action on their behalf, that Cashflow’s developer would have no choice but to seek recourse through litigation. The trademark holder’s attorney briefly engaged Cashflow’s developer in discussions regarding changing the name of the software but was dismissive of his concerns and seemingly didn’t understand that the apps were not financial education products or games and that Cashflow’s developer could not change the package identifier which included the term “cashflow”. Ultimately the attorney for the trademark holder stopped responding to Cashflow’s developer.
On July 1, 2016, Cashflow’s developer filed a civil lawsuit, 6:16cv00038, against Cashflow Technologies, Inc. in the United States District Court For the Western District of Virginia. Cashflow’s developer filed the lawsuit primarily seeking a declaratory judgement that his apps were not infringing upon the trademark holder’s trademarks and an injunction preventing the trademark holder from asserting trademark protection against his apps. The lawsuit also requested relief for damages and costs related to the dispute.
On August 1, 2016, Cashflow Technologies, Inc. responded to the lawsuit complaint filed by Cashflow’s developer and initiated a counter-suit against both Cashflow’s developer and his company NDL, Inc. alleging trademark infringement and unfair competition seeking an injunction preventing Cashflow’s developer and his company from using “Cashflow” as the name for his apps.
On February 8, 2017, Tyler, NDL, Inc., and Cashflow Technologies, Inc. (CTI) entered into a settlement agreement to dismiss the lawsuit without admitting liability while allowing Tyler and NDL to continue using the name Cashflow for the applications in questions. Per the agreement, CTI rescinded the infringement claims with both Google and Amazon. The Cashflow apps were restored to the Google Play store on March 11, 2017.