May 7, 2010
A Trademark Is A Trademark, Even When It Isn't...
A Trademark Is A Trademark, Even When It Isn't... Cliff Ennico www.creators.com "Last year I set up a small Internet business to sell products on eBay, Google, Amazon and other online retail venues. I was especially interested in advertising my Website on Froogle, a specialized search engine provided by Google that helps people find low-priced items on the Web, so I registered a domain name that included the word Froogle - www.xxxxxfrooglexxxxxx.com [actual name deleted for privacy reasons]. I notice several other people have done this with their Websites, and I haven't heard of Google suing anyone to prevent them from using that name. In fact, I understand Google has recently renamed this service, and is no longer using the Froogle name. I think 'Froogle' is still pretty cute, and I really don't want to call Google if I don't have to. Am I okay to use 'Froogle' as part of my Web domain name and business name?" One of the toughest challenges in starting any small business is to find a good name for the bloody thing. The law says that if someone else has registered a name as a "trademark" or "service mark" with the U.S. Patent and Trademark Office ( www.uspto.gov ), you cannot use that name as part of your business name, Web domain name, or anything else. If you do, even if you are not offering the same products or services as that other company, you may be "infringing" the other company's trademark and are likely to receive a nasty "cease and desist letter" from that company's attorneys warning you to cease using the name . . . or else. Because the other company is usually a lot bigger than you are, with millions of dollars to throw at lawsuits to protect their trademarks, you will have no practical choice but to back down, lick your wounds, and find another name. If "Froogle" were a registered trademark of Google (or indeed any other company), that would be the end of the story. But wait . . . this gets interesting. A quick search of the Patent and Trademark's Office records shows that Google at one time did try to register "Froogle" as a service mark, but "abandoned" their application at a later time (meaning they withdrew their application). Without looking at the underlying trademark file, we can only speculate as to why that happened. Perhaps the trademark examiners felt that "Froogle" was too close to "frugal" - a word that has been in the English language for hundreds of years. Or perhaps the fact that a number of people tried to register "Froogle" at the same time convinced the trademark examiners that the word was a generic or "descriptive" name for something and that therefore no one should have the exclusive right to use it. The plot thickens. Another service mark application, for "Froogles", was filed two years prior to Google's application and is still pending in the Trademark Office. Furthermore, Google has (as you correctly point out) ceased calling its shopping service "Froogle". It's now called "Google Product Search", although its Website still appears as froogle.google.com. Without calling Google and getting their permission, you really don't know for sure whether or not you can safely use the "Froogle" name as part of your Web domain name. I sympathize with your desire not to call Google directly - after all, what incentive do they have to say "okay"? But I don't think it's a good idea to use the Froogle name. Even if Google is no longer seeking to register the name as a service mark, they may still consider it a "common law" service mark and will send you a nasty letter if they find out you are using it to drive traffic to your site (which is, I presume, the reason you wanted to include it in your domain name). Also, don't forget that other guy that applied to the Trademark Office to register "Froogles" - he's still out there as far as I can tell, and might well send you the nasty letter Google wouldn't bother sending you if indeed they are "abandoning" the Froogle mark. There are plenty of good names out there that do not conflict with anyone else's. Sometimes the best name for a company has nothing whatsoever to do with your business - what does "Monster," for example, have to do with looking for jobs online? Unless the "Froogle" name is essential to the success of your business, I would steer clear of using it until Google specifically states they no longer consider "Froogle" a trademark or service mark. Using the name as a "keyword" to optimize your Website for Google's search engine, on the other hand . . . Cliff Ennico ( cennico@legalcareer.com ) is a syndicated columnist, author and host of the PBS television series 'Money Hunt'. His latest books are 'Small Business Survival Guide' (Adams Media, $12.95) and 'The eBay Seller's Tax and Legal Answer Book' (AMACOM, $19.95). This column is no substitute for legal, tax or financial advice, which can be furnished only by a qualified professional licensed in your state. To find out more about Cliff Ennico and other Creators Syndicate writers and cartoonists, visit our Web page at www.creators.com . COPYRIGHT 2007 CLIFFORD R. ENNICO. DISTRIBUTED BY CREATORS SYNDICATE, INC. Permission granted for use on DrLaura.com.

Posted by Staff at 1:50 AM