Ask HN: Suggest an attorney? (Google is after us)

23 points by cvinson 16 years ago | 25 comments

So, I just got a fun letter from Google, saying that my company, Sitezoogle.com, is infringing on their trademark. Specifically, their complaint is that our name is a combination of "website" and "google".

If that's not bad enough, my lawyer's firm represents Google in Canada and can't help due to conflict of interest. Ugh.

Does anyone have experience with a great US trademark lawyer and/or experience fighting a trademark dispute?

BTW: We make website building tools for niche markets. Our main product (which we have a US trademark for) is Bandzoogle.com, a website builder for musicians. We changed the company name to Sitezoogle, because we added a bunch of new non-band markets.

Help is appreciated!

ams6110 16 years ago |

IANAL but I think their claim is weak. "Site" + "Google"? OK, where did the "z" come from?

They can't really claim dibs on any name that happens to end in "oogle" and your firm does not seem to have anything to do with web search. Domino Sugar once tried to claim that Dominos Pizza was infringing on their name, a claim which they ultimately lost.

They've surely got the pockets to harass you and sadly you're going to need an attorney to respond to their complaint.

mechanical_fish 16 years ago | |

Okay, slightly more seriously than my last response:

The "z" is a plural: "Sitez". Surely this meme, while old, can't be so old that only I remember it. Can it?

Meanwhile, let me introduce you to Google's website building business: http://sites.google.com

That's arguably in the same field of business -- enough to cause confusion in the marketplace, which is the legal standard -- and their URL is two characters away from the alleged infringing URL.

I guess this company could try to argue that Google is infringing their trademark... provided they launched before Google Sites, which came online under that name in 2008. Except, oops, the opponent is Google, a company whose legal team's lunch budget could probably buy and sell us all.

Run away!

cvinson 16 years ago | | |

Our company was launched in 2003, well before Google Sites. Since we also own the trademark for Bandzoogle, it isn't a stretch to change to Sitezoogle. My lawyer (who can't officially represent me) said that the trademark office looks mainly at the first 4 letters of the name. Google Sites is a trademark, which is very different from Sitezoogle.

The very worst that can happen is that I lose a few thousand dollars defending their contest. It's not like they are going to back down at this point. The next thing they'll send is the domain dispute letter. If I lose, fine, I'll change the name. But just instantly giving in to the big "do no evil" bully seems a little premature.

cduan 16 years ago |

Have you considered contacting the Electronic Frontier Foundation? They might take interest in this case (I know they did some work in these sorts of domain name disputes before), and they are near enough to Google HQ that they might have some contacts there.

keefe 16 years ago |

honestly, there was no thought of google when you decided to suffix your names with "oogle"? The actual spelling of the word is http://en.wikipedia.org/wiki/Googol so you just happened to choose the bit of the word the misspelled...

gojomo 16 years ago | |

I don't think 'sitezoogle' would even try to claim they were also thinking of the numerical 'googol' as a basis. (If so, they're doomed.)

Rather, they made up a fun name with a long-U and ending -gle sound. '-oo-' is fairly common for goofy/froopy/groovy/loony 'U' sounds, and '-gle' is the common playful way to spell its sound, as in giggle/wiggle/finagle/beagle.

Still, I think the little guys have got a tough case. '-oogle' was rare before Google, and 'sitezoogle' for website services sounds like a sites.google.com or some other Google-derivation. And, they probably did have 'Google' in mind when they chose both Bandzoogle and Sitezoogle. (Bandzoogle was probably a little safer as long as it wasn't a search-engine for finding bands.)

So they may not need a lawyer as much as a new name.

keefe 16 years ago | | |

my point was basically exactly what you've said - except for the second paragraph. I was pointing out that the original word is spelled googol so they copied the bit that is unique to google, I'd say yeah they are done get a new name

JangoSteve 16 years ago |

This is almost exactly like Google's trademark claim against Groovle.com a couple months ago, which was unanimously dismissed (read: not even close) in Canada. However, that was only the second time out of 65 that Google has lost a domain name dispute.

http://www.gawkwire.com/domains/google_loses_domain_name_tra...

In the end, unless you have a ton of money to throw down on a big-time lawyer and a lot of press coverage, I don't think your choice of attorneys is going to make or break your defense. Might be better to just go ahead and decide if your domain name is worth the money it'll take to defend it.

letsgofast 16 years ago |

Not sure if you found someone to help you. If not then I will suggest Rodenbaugh Law - http://www.rodenbaugh.com/ - Mike Rodenbaugh has extensive transactional and dispute resolution experience with respect to intellectual property, e-commerce and internet marketing. He has specialized in trademark and domain name matters since 1995, including more than 7 years at Yahoo! Inc. mike@rodenbaugh.com

foldr 16 years ago |

Is it worth all that trouble just to keep the domain name?

delano 16 years ago |

If you're in Montreal, I know someone you can talk to. Send me an email.

delano (@solutious.com)

tzury 16 years ago |

Whichever lawyer you will hire, should start the response letter with the following statement:

    "Do Not Do Evil"

What kind of a rubbish is that

pvh 16 years ago |

Just change the name. Not a big deal.

holograham 16 years ago | |

ok steve jobs

cvinson 16 years ago |

Thanks for all the responses. The quality of feedback you get from HN is really amazing.

aresant 16 years ago |

http://www.coastlawgroup.com - great team, Seyamack Kouretchian there is the technology guru to speak with.