Gadget goes gonzo

Originally posted 2010-02-08 23:24:32. Republished by Blog Post Promoter

Updated (see below) in September, 2011:

Firefly Digital explains the vision behind their, um, trademarks — including the one they claim a little outfit called Google is infringing:

They embody our passion, our vision and our values . . . 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.

Wow, sounds awesome!  You go, Firefly guys!  All protectin’ things and stuff.

And what exactly is the “that” you’re protecting, and how?  Well, the “how” is a trademark infringement lawsuit.  Hey–that’s my passion too!!  And, and??  And the “what” is?

The “what” is the word “gadget” — or rather, the “trademark” GADGET. And the”infringement” of it.

Well, so?  Maybe it’s a mark for a kind of gum, huh?  Or a depilatory cream?  If you were to start a magazine called Gadget maybe that could be a good trademark, long as it wasn’t about, you know, gadgets.  I can think of lots and lots of things that go good with GADGET.  Lots of things, I should add, that embody our passion, our vision and our values.  I mean theirs. Of those things.

Okay, then, so do you give up yet?  Want to know what the trademark’s for?

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.

Oh, you mean the registration covers a kind software… gadget?

Well, no.  No, no!  See, read right here:

They embody our passion, our vision and our values . . .   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.

Ohhh.  Software gadgets… and baloney!!

If it weren’t Google these Fireflies are suing I’d be depressed about this, almost.  Now I’m just going to enjoy it, I think!  What with the passion and the values.

In terms of suing Google, though, I wouldn’t put a lot of stock on the “vision” thing, so much.  (Hat tip to Paul Raynor Keating!)

UPDATE:  No trademark for Firefly’s gadget:  Summary judgment granted to Google dismissing the action.  As I said last year:  A singular failure of “vision.”

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Author:Ron Coleman

I write this blog.

5 Responses to “Gadget goes gonzo”

  1. Paul Keating
    February 10, 2010 at 8:52 am #

    Just out of curiosity, what about why the PTO allows these sort of registrations???

    I wonder what would happen in the TM world (in terms of improving quality of tms) if:

    1. The standing requirement for oppositions was eliminated – imagine, anyone could comment and raise issues such as….well descriptiveness?

    2. The PTO actually started to police marks instead of offloading the cost on the public.

    3. PTO examiners started to question declarations in applications particularly when the corresponding domain name had been registered and used for similar purposes for years. I find it slightly humorous that the burden is placed upon the PTO to establish descriptiveness/genericness when the “right” being granted is a monopolistic right to exclude others from using the same asserted mark. One would think that if you are asking the government to recognize a monopolistic right (particularly one that can impinge on the 1st amendment), the burden would be reversed. I am sure there is a reason for it but my limited and liberal mind cannot quite grasp it. I am sure someone out there can set me right.

  2. Reid Morris
    September 28, 2011 at 11:54 am #

    I’ve heard that the PTO is starting to crack down on these types of descriptive mark applications, but it’s still a toss up on which examining attorney you get. You can tell a client that they have a 50/50 or 1-in-4 chance of getting it through, the office, but, if they do get it through, it’s David vs. Goliath if someone like Google doesn’t like what they see.

    • October 10, 2011 at 12:24 pm #

      It’s also not necessarily much of a favor to get a registration for a vulnerable mark anyway…

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