Fame tends to attract attention, and imitation, especially unwanted imitation from, well, even pests. The Google trademark appears to have obtained such a high degree of fame that no third party can include the word “Google” in its mark without having a problem, regardless of what the third party happens to be selling. Ron, can you say, right in gross?
A couple of weeks ago, the USPTO refused registration of GOOGLE UNIVERSITY for college consulting services and in doing so, it not only relied on likelihood of confusion under Section 2(d) of the Lanham Act, as a substantive basis for refusal, but it also relied on Section 2(a) of the Lanham and the false connection prohibition (a clever way to avoid the fact that Examining Attorneys at the USPTO cannot rely on dilution of a famous mark under Section 43(c) for ex parte registration refusals):
“Registration is refused because the applied-for mark consists of or includes matter which may falsely suggest a connection with Google, Inc. Although Google is not connected with the services provided by applicant under the applied-for mark, Google is so famous that consumers would presume a connection (please note the attachment from About.com, which refers to Google as one of the top 5 most popular websites in the world).”
Indeed, the only third party marks — arguably containing the Google mark — that have achieved federal registration are those consisting of or comprising the plural form of the word (apparently creating a distinct commercial impression from GOOGLE): GOOGLES for pet toys, children’s books, plush toys, fireworks, conducting theme parties, cookies, and protective eye and face shields for dental offices. OK, there is one exception, but it’s understandable: Barney Google and Snuffy Smith for a cartoon series.
Yet — given the appearance of the above depicted Bugaboo Pest Control logo that clearly refrains from using the word “Google” — in copying the distinctive and widely recognized lettering style and colors of the Google logo, one might ask a related “right in gross” question, namely: Is the non-verbal visual impression of the Google logo so well-known and famous, that it may not be replicated by others, regardless of the words infiltrating this particular appearance and style.
Perhaps something can be learned from the breadth and wide scope of protection afforded the famous Coca-Cola script trademark against another’s poster depicting the words “Enjoy Cocaine” using the same color and distinctive lettering style, where the court noted in 1972:
“One would have to be a visitor from another planet not to recognize immediately the familiar ‘Cola’ in its stylized script and accompanying words, color and design.”
And, to that point, what sort of planet might house living organisms unfamiliar with colors and style of the Google logo, and what sort of pesticide might Google be tempted to unleash on this most recent trademark bugaboo?