

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

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".<p>If that's not bad enough, my lawyer's firm represents Google in Canada and can't help due to conflict of interest.  Ugh.<p>Does anyone have experience with a great US trademark lawyer and/or experience fighting a trademark dispute?<p>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.<p>Help is appreciated!
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ams6110
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
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
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.

~~~
BobbyH
In case they file a UDRP
([http://en.wikipedia.org/wiki/Uniform_Domain_Name_Dispute_Res...](http://en.wikipedia.org/wiki/Uniform_Domain_Name_Dispute_Resolution_Policy))
complaint, make sure that your contact info is correct on your whois
(<http://www.whois.net/whois/Sitezoogle.com>). I know somebody who lost a UDRP
complaint because their contact info was out of date and the UDRP complaint
wasn't sent to them, so they lost by default.

------
cduan
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
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
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
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

~~~
stan_rogers
"Google" is older than "googol", and appears to have been a mixture of "goofy"
and "ogle", referring to crazily wandering eyes. It certainly entered popular
culture with the Snuffy Smith/Barney Google cartoons, so Google (the company)
can't claim coinage.

~~~
keefe
lol I had no idea, nice!

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JangoSteve
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...](http://www.gawkwire.com/domains/google_loses_domain_name_trademark_arbitration.html)

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

~~~
cvinson
Well, it depends on the cost. It is our corporation's name, and we have
printed promotional materials. The biggest issue is that we have thousands of
members using our DNS servers that are using the domain. Changing it would
require them to change their DNS settings, or have their site go offline. A
big pain to say the least.

~~~
andyjdavis
Sounds like a major hassle to change names plus it may look shady to your
customers.

The lawsuit sounds pretty bogus based on what you've said. Surely Google can't
be allowed to have exclusive use of "oogle" just because it sounds like part
of their company name. That would be like Microsoft saying no one can have a
company ending with "soft".

That said, I'd say this would be expensive and time consuming to fight. May
not be worth the effort even though you may be in the right (ethically if not
legally).

Is there any chance this could get you into the press? Small company being
picked on by enormous corporation. Could be good for you.

~~~
cvinson
Good idea, but unfortunately Sitezoogle isn't the product; our members just
know our main website brands like Bandzoogle (that are protected by existing
trademark).

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

delano (@solutious.com)

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tzury
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

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pvh
Just change the name. Not a big deal.

~~~
holograham
ok steve jobs

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

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

