Deutsche Telekom escapes Splunk trademark claims over magenta, for now

A man walks past the logo of Deutsche Telekom AG at the headquarters of German telecommunications giant in Bonn, Germany, February 19, 2019. REUTERS/Wolfgang Rattay
  • Splunk filed complaint for court to declare its TM rights
  • Complaint argued Splunk was at risk of DT lawsuit in U.S.
  • E.U. dispute didn't create live U.S. controversy

(Reuters) - Tech company Splunk Inc can't sustain its lawsuit against Deutsche Telekom over its trademark rights in a "color gradient" that includes DT's signature color magenta, a San Francisco federal court ruled Monday.

U.S. District Judge James Donato said Splunk didn't have a "reasonable apprehension" of litigation in the U.S. based on a cease-and-desist letter it received from DT about its conduct in Europe and DT's trademark action against it in Germany.

However, the court gave Splunk permission to file an amended complaint to address the lack of a live controversy.

Splunk and its attorney Ashok Ramani of Davis Polk & Wardwell didn't immediately respond to a request for comment, and neither did DT nor its attorneys Ross Panko and Dana Finberg of Arent Fox.

San Francisco-based Splunk, which creates software for searching machine-generated data, sued the German telecom company last year, seeking a declaration that its use of a coral, magenta, and orange "color gradient" in its branding doesn't infringe DT's U.S. trademark rights in the color magenta.

Splunk said its preemptive lawsuit was justified because DT was going to sue it in U.S. court, citing a trademark action DT filed in Germany and history of "aggressive" trademark enforcement, as well as a cease-and-desist letter that said DT "reserves its right" to sue under U.S. law.

DT moved to dismiss the case, arguing its dispute with Splunk was purely European, and noting that its cease-and-desist letter didn't relate to its U.S. trademarks and it hadn't opposed Splunk's U.S. application for a federal trademark covering its color gradient.

Donato agreed with DT, finding the facts were "a country mile" from establishing jurisdiction.

An "express threat of a lawsuit is not a precondition" for a live controversy, Donato said. "But the centerpiece of Splunk's argument is merely a reservation of rights. In ordinary usage, to reserve a right is to refrain from exercising it."

Donato also said that Splunk "has not presented evidence showing that what has happened in Germany won't stay in Germany." DT told the court that it didn't plan to sue Splunk in the U.S., and Splunk didn't show that its "aggressive" trademark enforcement against other companies was in bad faith or had created any U.S. litigation, Donato said.

The case is Splunk Inc v. Deutsche Telekom AG, U.S. District Court for the Northern District of California, No. 3:20-cv-04377.

For Splunk: Ashok Ramani of Davis Polk & Wardwell

For DT: Ross Panko and Dana Finberg of Arent Fox

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Blake Brittain reports on intellectual property law, including patents, trademarks, copyrights and trade secrets. Reach him at