Firefly Digital , a Web site design, development and hosting company, filed a federal lawsuit against Google last week, alleging the Internet search engine giant infringed on two of its registered trademarks.
The trademarks are for its “Website Gadget,” a content management system, and “Gadget,” a user-friendly application that works with its “Website Gadget.”
The company received a state trademark for “Website Gadget” in 2002 and federal trademarks for both in 2009.
In the lawsuit, the company alleges that Google’s use of features and programs, such as “Google Gadgets,” “Google Gadgets Editor,” “Google Gadget Ventures,” Gadgets API,” and “Gadget” has created a likelihood of injury to Firefly’s business reputation and a weakening of the distinctive quality of Firefly’s famous marks.
On Friday, Spears said the case is “about a small business standing up for its rights, even if that means going up against an industry giant like Google.”
Andrew Pederson, a spokesman for Google, said Friday the company believes the claims are entirely without merit and “we will defend against them vigorously.”
Spears said he believes otherwise and the company’s trademarks represent a significant innovation in Web technology and “a significant investment in not only our product but the trademarks as well.”
Spears added that the terms are more than mere words.
“They embody our passion, our vision and our values,” Spears said. “They are descriptive of our products on many levels. Firefly is a business given life through ingenuity, hard work, the contributions of our employees and the trust of the many clients we serve. We’re prepared to protect that.”
We have written often on the fact that every dictionary word has been trademarked.
We also know that trademark groups are pushing for even stronger enforcement laws and the Utah trademark law flew through committee this week on the way to what looks like a quick passage.
It maybe the only hope we have, are suits like this, against companies like Google, will illustrate to how even the big boys can be negative effected by over broad, over reaching trademarks and will bring to light this problem all domainers face and slow the trademark train down
Steve M says
While also glad to see them file this action for the reasons you give, Mike, I believe that–due at least to the facts that these are very recent fed regs (and so can be more easily challenged) and that they are rather generic terms–Google will have little trouble having these registrations canceled.
jeff schneider says
I like your thought train here MHB. The trademark laws are trying to overide the freedom of speech laws which are universally accepted worlwide. It is ludicrous for example for a company like Bed Bath and beyond. To simply think that these three universally accepted words cannot be used by any other entity.
The trouble with any law is the fact that any good attorney such as yourself can figure out how to manipulate them for their clients selfish interests. Distortion of law has been a much to common practice for far too long. Hopefully as you say, maybe this madness will eventually end. Common decency and fairness are universal laws that eventually will prevail. Thank you for your astute observation.
Tim Davids says
“Common decency and fairness are universal laws that eventually will prevail.”
not a chance…the bigger checking account usually wins. Not nice but true.
it is laughable that they succeeded in obtaining a standard character mark for that in the first place.
Firefly alleges that it has used both terms, “Gadget” and “Web site Gadget,” continuously since January 2002, and as a result, each has “become well and favorably known to the consuming public and the trade as identifying and distinguishing Firefly’s goods and services from others.”
That is what will sink them, too. Purely descriptive using a generic name.
“A gadget is a small technological object (such as a device or an appliance) that has a particular function, but is often thought of as a novelty. Gadgets are invariably considered to be more unusually or cleverly designed than normal technological objects at the time of their invention. …”
“The “gadget” was the code-name given to the first nuclear explosive developed under the Manhattan Project during World War II, which was tested at the Trinity test site on July 16, 1945. …”
and let’s not ignore this one:
“In computer science and computational complexity theory, gadgets are often used to construct reductions from one problem to another. Each element of the first problem is converted to a gadget built from elements of the second problem. …”
What’s next? “WebPage”, “servers”, “widgets”, even “tools”? Ridiculous.
Basically, they are trying to call attention to themselves through this whole endeavor and don’t stand a chance in Hell at succeeding. They admit to wanting Google to “settle out” on this, so it is extremely transparent.
And here’s another, http://www.dallasnews.com/sharedcontent/dws/news/texassouthwest/stories/DN-lottosites_02tex.ART.State.Edition1.4ba53bc.html
Is the abusive Trademark lobby headed towards their Waterloo in challenging free speech? Or will the UDRP providers once again overstep their bounds and rule on the case.
And how far will it go before ICANN pulls the chain on runaway UDRP providers and reminds them of their narrow charter and the prescribed basis for their decisions?
Valerie Beeby says
I find it outrageous that anyone should even be given the exclusive ‘right’ to a word we all use in the English language! It’s like being told you are not allowed to say something is ‘nice’ because somebody has patented the word ‘nice’!!
“Website Gadget” is a very weak trade-mark as is made from common nouns frequently used in the industry. Those terms should not have been allowed to be trade-marks in the first place. One must remember what happened to strong trademarks such as kerosene, nylon, escalator, and linoleum to see why Firefly Digital claims are without merit. Ironically, “google” is becoming a verb, and that trade-mark is at risk too…
Use gadget says
I will make a review for this gadget. looks like this good gadget
Steve, Google owns generic name trademarks that they must protect and control on internet.
So they can’t go around cancelling generic sounding marks, it will backfire and be more damage to Google and all of thier affiliates if they begain to challenge the intellectual property rights that they used to protect thier own business models.
Google better check thier own generic trademark list before they start attacking others.