On Friday, May 11, 2018, 23andMe hit genealogy rival Ancestry.com with a false advertising and patent infringement lawsuit in California federal court. 23andMe is seeking to to invalidate Ancestry’s “Ancestry” trademark , claiming that the latter company sells a DNA-based ancestry test that infringes on 23andMe’s patent. Here’s what you need to know, and what this could potentially mean for genealogists.
Why 23andMe is suing
The lawsuit filed by 23andMe accuses Utah-based Ancestry.com of infringing its patent since 2013. That year, Ancestry began selling its AncestryDNA kits, which identify relatives who share parts of customers’ DNA. The suit claims that the 23andMe patent titled “Finding Relatives in a Database” describes a specific process for determining a relative relationship between two individuals. This process involves comparing recombinable DNA sequence information of two individuals stored in a database, rather than comparing the whole genome.
According to 23andMe, the patent explains that only relatives will share long stretches of genome regions — dubbed “identical by descent” regions—where their recombinable DNA is completely or nearly identical. The suit states that the patent’s technology focuses on identifying those regions.
In addition to patent infringement, the lawsuit also claims that Ancestry.com has been misleading customers by running a “perpetual sale” on its DNA test, and by falsely claiming in ads that it tests five times more regions than its rivals.
“Defendants’ repeated pattern of false and misleading advertising has caused, and will continue to cause irreparable injury to 23andMe’s reputation, goodwill and business, if not enjoined,” the suit says.
23andMe seeking damages and disgorgement
23andMe has asked for a permanent injunction prohibiting Ancestry.com from infringing upon its patent. 23andMe also claims that Ancestry.com should have to pay three times the amount of damages for the infringement.
The official suit seeks damages and disgorgement of the company’s profits, plus attorneys’ fees and interest. It also asks that the court declare that 23andMe, which names its ethnicity reporting “Ancestry Composition,” doesn’t infringe on Ancestry.com’s “Ancestry” trademark. 23andMe is asking the court to find that the “Ancestry” trademark is invalid, arguing that the term “ancestry” is generic. Finally, 23andMe asks the court to bar Ancestry.com from continuing to use allegedly misleading ads.
What this means for genealogists
This isn’t the first genetic genealogy industry lawsuit. In 2017, AncestryDNA settled with DNADiagnostics over the latter company’s “AncestryByDNA” test. Ancestry also paid a company called OraSure Technologies $12.5 million to settle a patent infringement lawsuit over its saliva collection technology.
But you’ll want to keep an eye on this suit between two industry leaders as it winds its way through the legal process. In genealogy, the common use of terms such as “family tree” and “ancestry” can lead to name confusion (we’d love to have a nickel each time we send a genealogy conference attendee to the Family Tree Maker or Family Tree DNA booth). Perhaps we’ll see changes in how DNA test kits are marketed. We also wonder whether the distraction could slow innovation at AncestryDNA. This suit is definitely an indication how intensely competitive the genetic genealogy industry has become.