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Robert McEwen, Esq.
Robert McEwen, Esq., Lawyer
Category: Intellectual Property Law
Satisfied Customers: 11705
Experience:  Licensed Texas General Practice Attorney
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I am one of the little people. In Aug. I thought it would be

Resolved Question:

I am one of the little people. In Aug. I thought it would be fun to start a website about beer, searching beer info etc. The web host told me to pick a domain name, I used the dictionary verb google along with beers for"googlebeers". Everybody thought it was great. I checked google trademarks and there was nothing there so I applied for a trademark Aug 26th, and past the initial check. So I have built a site, and have a twitter and facebook acct. Today I get an email from Google to shut everything down because my name is XXXXX XXXXX to theirs. They want me to stop my trademark application, sell my domain names and quit my twitter and facebook. All my fun gone! Can they really own "made up" words?
What can they do to me? Do I have to "roll over" and comply because of an email?
Submitted: 11 months ago.
Category: Intellectual Property Law
Expert:  Robert McEwen, Esq. replied 11 months ago.

Robert McEwen, Esq. :

Thank you for using JustAnswer. I am researching your issue and will respond shortly.

Robert McEwen, Esq. :

I'm sorry to hear about your situation, but as the law stands, you would almost certainly lose if they took you to court. You see, "Google" is a made up word by the Google Corporation, and a federally trademarked one at that. Even though you add a word to that, that does not then necessarily make it "safe". Rather, courts look to see if there's a "likelihood of confusion" between the use of your mark and another mark. To analyze whether a particular situation has developed the requisite "likelihood of confusion," courts have generally looked at the following eight factors:



  1. the similarity in the overall impression created by the two marks (including the marks' look, phonetic similarities, and underlying meanings);

  2. the similarities of the goods and services involved (including an examination of the marketing channels for the goods);

  3. the strength of the plaintiff's mark;

  4. any evidence of actual confusion by consumers;

  5. the intent of the defendant in adopting its mark;

  6. the physical proximity of the goods in the retail marketplace;

  7. the degree of care likely to be exercised by the consumer; and

  8. the likelihood of expansion of the product lines.


The first five of these factors are examined in every trademark infringement action. The last three factors are the most common additional factors that are considered by a court.

Robert McEwen, Esq. :

Now the fact that "Google" is a dictionary word does not automatically diminish the strength of the mark, although it could.

Robert McEwen, Esq. :

Rather, the dictionary term does indicate a verb to search, using the Google search engine, rather than any generic search engine.

Robert McEwen, Esq. :

It is possible that a trademark could lose trademark protection (which it would HAVE to in order for your use to not be infringing). A trademark can become "generic" through use (examples include "Kleenex" and "Thermos")

Customer:

So the trademark application getting this far would mean nothing and I should quit?

Robert McEwen, Esq. :

But note that those examples have been court cases that have involved many years of litigation to get to such a judicial determination of trademarks having lost their protection.

Robert McEwen, Esq. :

A trademark application, if not "final", could be contested (which this one appears to be). The main issue is that it appears clear that you're using the "Google" trademark (again, the dictionary definition applies to the trademark itself, not the other way around, which is a big distinction) and as such, you almost certainly would not win.

Robert McEwen, Esq. :

That is, it would be a MAJOR shocker and something that all the trademark journals (and in a larger sense, the business journals and other insiders) would be talking about and scratching their heads as to why that actually occurred.

Robert McEwen, Esq. :

So while it is possible that you could be successful, it would be a major shift in trademark jurisprudence, and as such, I think it would be highly unlikely.

Customer:

What do you advise? canceling two months of work and money?

Robert McEwen, Esq. :

There are situations where the case against the "little people" is far more tenuous, and the larger company most likely would not win. Monster Cables threatened (and actually filed lawsuits) against businesses with "Monster" in the name, including Monster MiniGolf. Those cases probably would not win, but this one is one where Google would almost certainly win, unless you could show that the term has become generic. As a practical matter, that would involve years of litigation and hundreds of thousands of dollars (as Google has a very significant interest in keeping up that trademark, they would spend whatever it took, and they have the money to do so).

Robert McEwen, Esq. :

I wouldn't say throw away all the work, but rather come up with a name that is actually generic...

Robert McEwen, Esq. :

BeerDetective or something like that.

Robert McEwen, Esq. :

(I'm sure that you have brainstormed for a long time on this)

Robert McEwen, Esq. :

Any reference to GoogleBeer should be taken down, however, as that could land you in hotwater.

Customer:

Ok sir, with sadness I say thank you for your time :(

Robert McEwen, Esq. :

*hot water... my space bar does not work sometimes.

Robert McEwen, Esq. :

My pleasure. As a beer lover myself, and a small business owner, I wish I could have given you better news, but the law is what it is. If you have any other questions, please let me know. If not, and you have not yet, please rate my answer AND press the "submit" button, if applicable. Please note that I don't get any credit for my answer unless and until you rate it a 3, 4, 5 (good or better). Thank you, XXXXX XXXXX good luck to you!

Robert McEwen, Esq., Lawyer
Satisfied Customers: 11705
Experience: Licensed Texas General Practice Attorney
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