DuetsBlog Collaborations in Creativity & the Law

Messin’ With Google

Posted in Advertising, Genericide, Law Suits, Marketing, Search Engines, Television, Trademarks

What does Google have in common with Sasquatch? Well, perhaps one possible point of similarity is that if you mess with either, you might get yourself seriously messed up in the process.

With respect to the defensive power of Sasquatch, a local Wisconsin business success story, Jack Link’s Beef Jerky, has gotten much notoriety with its series of hilarious 30-second television commercials, featuring their own character and version of the Sasquatch who firmly retaliates when he is bullied, teased and humiliated, this golf-themed commercial being my favorite.

Admittedly Google doesn’t tip over golf carts or send irritants to the hospital, but it is predisposed to tip over your claimed trademark rights, where possible, especially if the irritant unwittingly offers them up for attack while aiming them at Google and asking for lots of money in the process. 

As you may recall, last February I discussed the Firefly Digital Inc. v. Google Inc. trademark infringement lawsuit in the context of why marketing and business types should remove the D-word from their vocabulary, and I warned that Google would not likely overlook the admission by the CEO and President of Firefly that its GADGET and WEBSITE GADGET trademarks "are descriptive of our products on many levels":

Word to the wise. Be very, very careful in the words you choose to convey the meaning behind your brand. All too often brand owners and their consultants unwittingly explain the meaning behind the brand name in ways that can push it down the Spectrum of Distinctiveness into the realm of Limbo Land, a place where inherent distinctiveness and immediate trademark rights do not exist. For more on this point, see A Legal Perspective on the Pros and Cons of Name Styles.

Firefly Digital may have to learn this lesson the hard way. Firefly Digital brought a trademark infringement lawsuit against Google for its use of the term GADGET in connection with various Google service offerings. Firefly Digital apparently was able to federally register GADGET and WEBSITE GADGET for computer software and related services, and the Trademark Office registered them as inherently distinctive marks, deserving immediate protection without proof of acquired distinctiveness or secondary meaning.

As it turns out, a couple of weeks ago, the federal district court judge assigned to the case in Louisiana, summarily dismissed all of Firefly Digital’s claims against Google, and then it went a step further and ordered the USPTO to cancel both federal trademark registrations owned by Firefly Digital –for GADGET and WEBSITE GADGET — as either generic or merely descriptive without secondary meaning (copy of decision is here).

So, after pursuing about twenty months of vigorous litigation with Google, it appears that Firefly Digital will be leaving the case with less than it brought, in more ways than one.