Google Vs. Vexatious Balls

    February 23, 2007
    WebProNews Staff

Google is well known for fighting the genericization of its trademark, and was especially incensed when Webster’s and Oxford Dictionaries recently added "to google" to its list of verbs. While it’s common for major companies to be sensitive about their trademark, a petition for cancellation of the Google trademark by a most notorious litigator was no doubt a burr under their saddle.

Though Wikipedia notes the federal government placed Leo Stoller on a list of "vexatious litigants" in 2005 for repeated abuses of the legal system, Stoller describes himself as an "intellectual property entrepreneur." That means he sues people for trademark infringement – a lot.

One of Stoller’s more recent targets, through his company Central Manufacturing Inc., was Google. In a petition for cancellation of Google’s trademark, Stoller claimed that Google’s mark had entered to vernacular as a verb, giving him "common law" rights to the term.

He also claimed Google had infringed on his right to the mark, which Stoller said was being used for plastic exercise balls made by his company, and that Google had "mutilated" its own mark through dressing up the logo on holidays. The petition was recently dismissed by the US Patent and Trademark Office, but the decision is, of course, being appealed.

But a victory at the Trademark Office isn’t taking Stoller to task quite enough, as far as Google is concerned. The company wants Stoller’s alleged abuse of the system stopped for good and has filed suit against him and his companies for false advertising and unfair competition.

But also, and this is the big one, Google is seeking a judgment that Stoller’s companies are in violation of the Racketeer Influenced and Corrupt Organizations Act (RICO), which can carry a penalty of up to 20 years in prison.

Rebecca Tushnet, law professor at Georgetown University, explains why Google is so aggressive in combating the most famous of so-called "trademark trolls":

[T]here’s no provision in trademark law penalizing false claims of trademark ownership, or even false claims to own a federal registration, in contrast to the rule for patents.

However, she doubts whether Google can make a claim for unfair competition under the Lanham Act:

If the relevant market is the market for licensing trademarks, then Google seems to be a consumer rather than a competitor. If, however, Stoller asserts rights in goods and services sufficient to give him standing to oppose Google’s registrations before the PTO, is he estopped from denying competition? My guess is not; noncompetitors can be operating in categories sufficiently related to justify oppositions, besides which Stoller’s oppositions have all been rejected.

Eric Goldman, whose cyberlaw and intellectual property credentials speak for themselves, sees Google as kind of a white knight in this case:

There have been many attempts to curb Stoller’s activities, but this lawsuit may be the most serious…

Google has the cash and mettle to challenge Stoller, they are sympathetic litigants, and they unquestionably know what it means to fight Stoller but chose to do so anyway. Should they succeed in their efforts, I think it’s likely that other trademark owners who are targeted by Stoller will follow suit.

On his blog, Stoller paints himself as a sort of victim struggling against major corporation – and a "nationally known legal ethics expert." Recently though, his ire seems more directed at Google attorney Michael Zeller, whom he accuses of professional misconduct.

Writing of himself in the third person:

This story has all of the drama of a major motion picture…100 billion dollar company, multi million dollars lawyers…against Leo Stoller….David and Goliath…now playing….

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