Ask HN: Suggest an attorney? (Google is after us) | Hacker News Reader

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

23 pointscvinson25 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!

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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.

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!

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.

In case they file a UDRP (http://en.wikipedia.org/wiki/Uniform_Domain_Name_Dispute_Res...) 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.

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.

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...

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.

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

"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.

lol I had no idea, nice!

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.

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

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

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.

I am not a lawyer and am not competent to give legal advice.

That said: I can only assume that you are standing so close to the problem that you can't appreciate the sheer scope of your legal peril. The odds that you have a case are not worth the legal fees to calculate. Lawyers' calculators are not optimized for small numbers. Save your money and change the name. Unless your promotional materials include a fleet of blimps.

If you do hire a trademark lawyer, your money would probably be better spent by having him or her help you with your next name. I'll do my part by suggesting a list of names you should avoid in the future:

  Sitecrosoft
  SighBM
  Sicombinator
  Sapple Computer
  Siteman Sachs
  Sintendo

Though it's a pity about the last one, which would be a great name for a site specializing in off-color Flash games.

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.

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).

Deciding on a ballpark range will help you pick out the lawyer you want - usually more established lawyers will charge higher fees but they're not necessarily "better", especially because in your case the types of trademark claims they are probably going to go after you for, trademark dilution and trademark infringement based on confusion are straightforward and could be handled by someone right out of law school. I agree with the above poster that on first look their claim doesn't seem that strong; it doesn't seem as if the average user would confuse "sitezoogle" with a google product but again they can plausibly make that claim. I'm happy to give you advice for free and suggest a couple people that can help you in California if you email mdayal [at] ucdavis.edu.

I am pretty sure any domain registered with 00gle in the name they contact. When I registered officezilla.com I was contacted by the lawyers for the Godzilla trademark. It's just a way the law firms make more billable hours, writing form letters. That is about all it is. I told the Gozilla people I was not interested in them and not only did they go away they sent me a letter I could use the domain officezilla.com which I figure was just another way to drum up more billable hours.

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

delano (@solutious.com)

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

Just change the name. Not a big deal.

ok steve jobs

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

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

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