Bill Wiseacre had just managed to settle his legal dispute with Safe & Steady Consulting over his breach of a non-solicitation provision. He wasn’t thrilled about the financial hit, but it was a necessary step to put the ordeal behind him. With that chapter closed, Bill was finally ready to focus on his new venture and begin making strides in the right direction.
Bill decided to operate his consulting business as a sole proprietorship, believing that forming a legal entity wasn’t necessary. Why make things more complicated than what they needed to be? He quickly chose a name for his new enterprise: “Google Computer Consulting.” Initially, he considered “Steady & Safe Consulting,” but wisely dismissed it, knowing it would infuriate his former employer. Bill’s too smart to make the same mistake twice!
Bill, ever the resourceful entrepreneur (and despite his knack for cutting corners), checked the United States Patent & Trademark Office (USPTO) website to see if “Google Computer Consulting” was available. To his surprise, it was! None of the existing trademarks exactly matched his desired name, so Bill assumed he was in the clear. He was a small, solopreneur, after all. Would Google even find out?
With his business name seemingly secured, Bill purchased the “GoogleComputerConsulting.com” domain and began searching for a web developer. He received multiple bids and, true to his frugal nature, opted for the lowest one from a company called Slightly Shady Web Developers. They promised to have his site up and running within two days, and Bill, eager to get started, hired them without a second thought. After all, time is money, right?
Not surprisingly, after Bill’s website was up and running, 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, which could lead to potential legal liabilities and brand dilution for Google. 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.
As if that weren’t enough, Bill discovered another problem with his website after a client of his pointed out a glaring error. A huge block of text on his site mentioned a different company! Curious and concerned, Bill copied the text into a search engine and found it duplicated across many sites developed by Slightly Shady. It became clear why they were able to deliver a website so quickly and cheaply—they were recycling content from previous projects! His website was virtually identical to many others they had created. Fearing another cease-and-desist letter, this time for copyright infringement, Bill hastily took down his website.
It had been a rough start for Bill, but he remained hopeful that things would start to improve soon.
The Momentum Law Group Perspective
- Bill’s choice to use “Google” in his business name was misguided. A more unique name, such as “Wiseacre Consulting,” would have spared him the trouble. Ideally, Bill should have conducted a thorough trademark search and consulted a trademark attorney to ensure his business name wouldn’t infringe on existing trademarks. This precaution would have saved him the stress and cost of dealing with Google’s legal team.
- Bill’s thrifty approach to web development also backfired. He failed to vet Slightly Shady properly and didn’t have them sign a web development agreement, making enforcement difficult, especially since they were overseas. In the future, Bill should ensure he hires reputable developers and enters into agreements that protect his rights, confirm the originality of the content, and guarantee non-infringement on others’ rights.
What would you have done in Bill’s situation?
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