Google faces trademark challenge from kids website

Stelor Productions Inc, the exclusive worldwide licensee of the trademark GOOGLES, has filed two actions with the US Patent and Trademark Office (USPTO) against (i) an application by Google Inc to extend its GOOGLE mark to child-related goods and services, and (ii) the registration of GOOGLE for email services.

In 1991 Steven A Silvers published Googles and the Planet of Goo, a children's book that created four friendly alien creatures called the Googles, who were sent to Earth to teach its inhabitants the environmental lessons implemented on their eco-friendly Planet Goo. Silvers and Stelor, to which he licensed his rights in the GOOGLES trademark, created an interactive website based on the book at 'googles.com'. Stelor also sells children's merchandise relating to the Googles characters, including Googles stickers and music CDs, and has given away promotional children's T-shirts bearing the name. Trademark registration for GOOGLES was first obtained on August 12 1997 based on use since 1994.

Stelor opposes Google's application to register the mark GOOGLE for goods and services relating to:

• children's books and clothing;
  
  
• mugs;
  
  
• flashlights; and
  
  
• electronic retailing services via computer for the aforementioned products.

Stelor bases its opposition on its GOOGLES mark, which it claims has (i) developed a valuable reputation and goodwill, and (ii) achieved a following among children and their parents, who have come to associate the mark with child-appropriate goods and services. To support this contention, Stelor points to over 130,000 children who have registered on the 'googles.com' website as authorized users, as well as nearly 170,000 weekly visitors to 'googles.com' as of April 2004. Stelor also alleges that (i) its use of GOOGLES in connection with children's goods and services, including those claimed in the GOOGLE application, occurred prior to Google's first use of its mark for those goods and services, and (ii) GOOGLES has priority of first use for children's goods and services.

In its petition seeking to cancel Google's trademark registration, obtained on January 20 2004, for services related to providing email over computer networks, Stelor alleges that Google falsely declared on March 15 1999 that it was using the GOOGLE mark for, among other things, providing electronic email services over computer networks, in order to induce the USPTO to grant the registration. Stelor claims that, in contrast, its 'googles.com' website has displayed, and continues to display, buttons for Googles Mail, which Stelor intends to offer as a pornography-free, predator-free way for children who are authorized users of the website to send emails to each other. Stelor has filed an intent-to-use application, dated May 17 2004, with the USPTO covering email services intended for use by children.

In both complaints, Stelor claims that the slight difference between the marks GOOGLES and GOOGLE is insufficient to avoid confusion and mistake among the public. Stelor supports this contention by noting that it has already received a substantial number of emails from consumers indicating confusion over the two websites. Moreover, Stelor claims Google's pending application has prevented potential investors and business partners from investing in the GOOGLES mark.

Howard J Shire and Mark Yuan, Kenyon & Kenyon, New York and San Jose