March 16, 2015

Bill Wiseacre had just left his prior employer and promptly got a cease and desist letter from their counsel because he had been actively soliciting their clients in violation of a non-solicitation agreement.  Fortunately for Bill after a great deal of legal wrangling, Safe & Steady agreed to settle the dispute in exchange for Bill’s agreement not to solicit the clients anymore.  Phew!

Now Bill Wiseacre was finally ready to start his new venture in earnest.  Since Bill was going to provide consulting services, he didn’t feel it was necessary to form a legal entity.  Instead he just needed to select a name for his new sole proprietorship.  After a quick deliberation, he decided to call his business “Google Computer Consulting.”  He was going to go with Steady & Safe Consulting but decided against doing so since he knew his former employer would likely object (or more likely, blow a gasket).

Bill is a bright guy (despite some poor decisions early on) and checked on the United States Patent & Trademark Office (PTO) website and the “Google Computer Consulting” name, surprisingly, was available!  Since there were other trademarks shown on the PTO’s website with “Google” in their name (besides the ones owned by Google Inc.), he figured it would be okay.

His next steps were to purchase the “GoogleComputerConsulting.com” domain and get a website built.  Bill put his website development project out for bid - he figured getting a site, any site at all, up and running was important.  Slightly Shady Web Developers came in at the lowest price by far and promised they could have his site up and running within 2 days, so he hired them to develop the website.  After all, time is money, right?

Not surprisingly, Google’s trademark team found Bill’s website pretty quickly and their lawyers sent Bill a cease and desist letter regarding the use of the Google Computer Consulting name and domain. Google’s lawyers claimed since they own the Google trademark and are in the technology industry, Bill’s new website would create a likelihood of confusion between Bill’s services and Google’s.  In other words, someone may think Bill is a part of Google and that would be inappropriate.  Now Bill was nervous.  He didn’t want to give up his name, but he knew he didn’t have the financial wherewithal to go toe to toe with Google’s legal team, so he had no choice but to acquiesce and agree to change his business name.

Bill’s day got even worse when he noticed a seemingly small mistake on his website where it named another company instead of his own.  He decided to investigate by cutting and pasting a block of text from his site into an Internet search engine and he was shocked to find that same block of text appeared in many other sites developed by Slightly Shady.  He then understood why they could produce a site so quickly and for so little money - they were just recycling what they had done for their other customers.  In fact, his site was basically identical to many others created by them.  Bill pulled down the website before he got yet another cease and desist letter for infringing someone else’s copyright!

It’s been a rough start, but things have to start getting better for Bill, right?

The Momentum Law Group Perspective:

  • Bill was naïve to think that Google wouldn’t have been bothered by the use of such a similar name.  Had Bill called the company Wiseacre Consulting, he would have been fine.  In an ideal situation, Bill would have selected a name that hadn’t been used before so he could build a brand around it.  In addition, he should have engaged someone to assist him in confirming the name wouldn’t violate anyone else’s trademark.
  • Bill’s desire to be economical is laudable, however, he didn’t take the time to vet Slightly Shady, nor did he have them sign any form of web development agreement (in that they were overseas, enforcement would have been a challenge in any event).  Next time, he’ll want to ensure that he gets a reputable company to develop the site and he’ll want to enter into an agreement that confirms they won’t violate anyone else’s rights, they won’t use the same content for anyone else, etc.

What would you have done in Bill's situation?
Share it on Twitter with #uhohenterprises with @MomentumLawyers or comment below.

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