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Google Versus Froogles Redux

Having been rebuffed by an ICANN panel, search giant Google brought its battle against Froogles.com to U.S. court.

Google filed a trademark infringement suit against Richard Wolfe, operator of the relatively tiny Froogles.com, on Monday. The search provider complained that consumers could confuse Wolfe's bargain-shopping site with Google's Froogle and even the name Google itself -- even though Wolfe had been using the name Froogles since December 2000. Wolfe applied for trademark protection for the name in September 2003.

Google launched Froogle in December 2002; it filed for trademark protection of the term in November 2002. The trademark application was approved in February 2004 and published to give others a chance to protest.

Both Wolfe and Stelor Productions, operator of kid-oriented Web site Googles.com, opposed granting the trademark. The Trademark Appeals Board is still considering whether to revoke the trademark, but Google has asked it to suspend the opposition proceeding pending the result of a court trial. Google executives had not responded to a request for comment by press time.

"I believe the trademark board is likely to grant the opposition and refuse to register the mark Froogle to Google," said Wolfe's attorney, Stephen Humphrey, a partner in the law firm Cameron & Hornbostel. He speculated that Google might have filed the civil suit in Wolfe's home state of New York to stave off a loss in front of the Appeals Board.

"It's not whether Froogles infringes Froogle," Humphries said. "My client wins that, because he used Froogles for his shopping service long before Google did."

In its complaint to the U.S. District Court, Eastern District of New York, Google refined its claims. First, it now says that Froogles.com also engages in "search engine services," because it offers the ability to search within the site. Second, Google claims that it owns any word ending in "-oogles."

"Google is the senior user of marks that incorporate the formative -OOGLE for Internet search services," the suit claims.

"Google has expanded its claim, and developed a fairly novel claim that not only does Froogles infringe the trademark Google, but that Google itself owns -oogle," Humphrey said, noting that there are quite a few registered trademarks that end in either the letters oogle or the phonetic version.

Humphrey said that after Wolfe filed an opposition proceeding with the U.S. Patent & Trademark Office last spring, Google told Wolfe that if he would dismiss his opposition, it would leave him alone. If he refused, according to Humphrey, Google's attorneys said, "We'll file a complaint and take the trademark away from you."

The complaint filed today said that Wolfe should have been well aware of the Google name by the time he launched Froogles.com, thanks to the dozens of positive press reports detailed in the complaint.

If today's lawsuit is a retaliatory move for Wolfe's opposition at the USPTO, it may not be the first.

In May 2004, Google filed a complaint with the National Arbitration Forum (NAF) under the Uniform Domain Name Dispute Resolution Policy adopted by ICANN. On July 18, 2004, a three-person NAF panel turned Google down, saying that Froogles was different enough from Google not to confuse the public. The NAF also noted that Google had waited four years from the date the Froogles.com domain name was registered, complaining only after Wolfe filed an opposition to Google's Froogle trademark.

Google still faces competition for the Gmail trademark, the application for which was filed April 2, 2004. Cencourse, a Miami company that provides multimedia services, still has a live application filed March 31, 2004, while Precision Research, a Santa Barbara, Calif., company that consults on the design of high-tech equipment, has a live application also dated April 2. But two other companies that had applied to trademark the term before Google have dropped out of the race.