In an April 8 filing with the U.S. District Court for the Eastern District of New York, Google Inc. asserts that Froogles and Froogles.com, a Web site that links to Web-based shopping deals, infringe on the Google trademark and dilute the value of the Google name.
"Protecting the Google brand is a top priority for us," Steve Langdon, a spokesman for Mountain View, Calif.-based Google, said in an e-mail. "This includes seeking trademark registration protection for Google and related brands, like Froogle, as well as taking action against infringers."
The companys legal wrangling with Richard Wolfe, the proprietor of Holtsville, N.Y.-based Froogles.com, began when Google applied to register the name Froogle with the U.S. Patent and Trademark Office in 2002. Wolfe filed an objection to that registration based on his own use of Froogles.com, which he also registered for a trademark. According to Wolfes lawyer, he also demanded that Google stop using the Froogle name.
Google in May 2004 offered to allow Wolfe to continue using the Froogles.com site if he withdrew his complaint. His lawyer, Stephen Humphrey, said Wolfe refused the offer and Google filed a complaint with ICANN (the Internet Corporation for Assigned Names and Numbers), which rejected Googles claim that Froogles.com was "confusingly similar" to Google.
"The reason given for this suit is that Froogles.com infringes the mark Google," said Humphrey, Wolfes lawyer in Washington, D.C. "Thats the same issue that was decided by the ICANN panel."
The decision on Googles trademark application for Froogle is still pending, but the suit this month also asks the court to "direct the Patent and Trademark Office to dismiss Wolfes opposition proceeding regarding our Froogle trademark," Googles Langdon said.
"Its reasonable to suspect in filing the lawsuit in New York and suspending the trademark opposition is to avoid a decision from the trademark office," Humphrey said. A judgment in Wolfes favor in the trademark office would result in Froogle not being registered.
Wolfes position is that he registered the Froogles.com domain in December 2000 and "began planning" a shopping-based service at that time. He launched a Web site in March 2001 and was operating that shopping Web site prior to Froogle, which Google introduced in December 2002. They also argue that Froogles.com is not confused with Google. Humphrey said Google had no issues with Froogles.com until Wolfe filed the trademark opposition.
Humphrey called many of the claims in Googles suit "preposterous," such as those of creating unfair competition, steering customers away and deceiving the public, and he said the argument has a David-versus-Goliath nature.
"Hes a sole proprietor operating this from his home, and they may be trying to put additional pressure on Richard Wolfe to close down his business or abandon his efforts," Humphrey said.
Even if Wolfe keeps his site operational through the dispute, Google ultimately wants the courts to close him down.
"Google is seeking a court order prohibiting Mr. Wolfe from using Froogles, Froogles.com, or any mark or domain name similar to Google," Langdon said