This is an issue over the use of the word "scholar," not over the contents of the databases. From what I have seen of google.scholar, it is very weak in the chemistry area.
Note the recent CAFC decision in Shen v. Ritz, especially as to dissection. The commonality asserted by the ACS is only as to the less important word "scholar" and the significance thereof diminishes when one views the full term to get --google scholar-- and --SciFinder scholar.-- The ACS position is very weak.
from slashdot, Dec. 11:
"John Batelle is noting that 'The American Chemical Society yesterday filed a complaint against Google, claiming the new Google Scholar infringes on its own product, called SciFinder Scholar.' Fairly typical subscription vs. free dispute, but with intellectual property issues thrown in for good measure."
A two page ad in the Dec. 13, 2004 issue of Chemical & Engineering News (C&E N) at pages 10-11 mentions SciFinder but does not mention Scholar. The bottom mentions that SciFinder is a registered trademark of the American Chemical Society.
Does a user of databases, on seeing discussion of Google Scholar, a free service, have confusion over the source between Google, and the ACS, which offers a service for an amount of money? It would not seem that there is a likelihood of confusion between --Google Scholar-- and --SciFinder Scholar-- for a number of reasons. The real identification of source resides in the words --Google-- vs.
--SciFinder-- with Scholar more a descriptive add-on.
****Also, from the AP
Handing a major legal victory to Google, federal Judge Leonie Brinkema rejected a claim December 14, 2004 by auto insurance giant Geico Corp., which argued that the search engine should not be allowed to sell ads to rival insurance companies that appear whenever Geico's name is typed into the Google search box. The judge said the case would continue to move forward on one remaining issue: whether ads that pop up and actually use Geico in their text violate trademark law.
***Update. Oct. 11, 2006**
from: The Chronicle of Higher Education
Google has settled a lawsuit filed against it by the American Chemical Society over a claim that the Google Scholar search engine violated the society’s trademark for its academic search engine, Scifinder Scholar. The settlement was reached without fanfare this month, with both parties agreeing not to discuss the details, according to CNET News.com. In the lawsuit, filed in December 2004 in U.S. District Court for the District of Columbia, the society argued that it holds a "common law" trademark for the term "scholar" because people often refer to the Scifinder Scholar tool, which was started in 1998, as simply "Scholar."—Jeffrey R. Young
Posted on Monday July 24, 2006