23andMe Attacks Ancestry.com's Intellectual Property

23andMe has sued rival genealogy company, Ancestry.com LLC (“Ancestry”) in federal district court over claims of patent infringement, false advertising; and has also petitioned for trademark cancellation of Ancestry’s registration of “ancestry.” Currently, Ancestry is the largest for-profit genealogy company.

Patent Infringement Claims

In the recent dispute between the two companies, 23andMe has sued Ancestry for patent infringement over their patent, U.S. patent number 8,463,554, entitled “Finding relatives in a database,” which covers a systematic method of analyzing DNA in databases and identifying those strands, regions, or portions that are “identical by descent” in matching regions of the DNA genome. 23andMe claims their patent covers the process of analysis used to determine the degree to which people in a DNA database may be related.

23andMe claims that Ancestry has been infringing upon its patent since 2013 but notes that the patent itself does not cover anything regarding the actual process of DNA analysis. Instead, 23andMe notes that its patent covers and refers to specific methods of identifying, measuring, and comparing the aforementioned DNA regions. 23andMe also claims that the process that Ancestry infringes upon is theirs because it relies on calculating the sum of the lengths of these regions and the percentage of shared DNA for use in comparison.

False Advertising Claims

23andMe also claims that Ancestry is guilty of false advertising because they claim on their advertisements that their genealogy tests five more regions than 23and Me and other companies, but some of the advertising materials carry a disclaimer that clarifies that it actually only tests two times more regions. As such, because not all of Ancestry’s promotional materials carry that disclaimer, 23andMe claims that Ancestry is in violation of both state and federal law, specifically the Lanham Act and the California Business and Professions Code.

Trademark Invalidation Claims

Lastly, 23andMe also takes issue with Ancestry’s trademarking of Ancestry as a logotype because it has already taken other DNA testing sites to court over use of the term “Ancestry.” In their petition for trademark cancellation, 23andMe is asking the court for a declaratory judgment to invalidate the trademark registration of “Ancestry” by arguing that the word has become a generic term in the genealogy industry and, as such, must be available for use by companies operating in that sector.

As a result, 23andMe believes the infringement to be willful and deliberate and has asked the court to award damages to reflect such a finding. In the meantime, the court is asking for a permanent injunction prohibiting Ancestry from continuing its promotional advertising in its current form.

About the Firm:

For more information on this topic, please visit our Patent Litigation service page, which is part of our IP Litigation Practice.

Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm.  The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights.  The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution.  Additional information about the litigation law firm and its litigation attorneys may be found at www.klemchuk.com.

Klemchuk LLP hosts Culture Counts, a blog devoted to the discussion of law firm culture and corporate core values with frequent topics about positive work environment, conscious capitalism, entrepreneurial management, positive workplace culture, workplace productivity, and corporate core values.