Google v. Stoller

Here's something that will make Google very few new enemies, and perhaps some new friends: As reported by the TTABlog, Google has sued Leo Stoller, the well-known trademark "entrepreneur," for false advertising, RICO violations (the predicate acts being state-law extortion and wire and mail fraud), and unfair competition. The complaint, 222 pages including the exhibits, is here.

I've said a couple of times in this space that there's no provision in trademark law penalizing false claims of trademark ownership, or even false claims to own a federal registration, in contrast to the rule for patents. Google has brought its claims under the Lanham Act's general prohibition of false advertising; not only does it dispute Stoller's claims to own a federal registration to the mark "Google," but its allegations also encompass Stoller's claims to own common-law rights in the mark, representations that he could license the mark, representations that he'd prevailed in numerous court cases, and representations that "99% of [his] opponents opt to settle."

The obvious question is whether Google has Lanham Act standing. If the relevant market is the market for licensing trademarks, then Google seems to be a consumer rather than a competitor. If, however, Stoller asserts rights in goods and services sufficient to give him standing to oppose Google's registrations before the PTO, is he estopped from denying competition? My guess is not; noncompetitors can be operating in categories sufficiently related to justify oppositions, besides which Stoller's oppositions have all been rejected.

Evil thought: if Google is using marks in commerce through its AdWords program, then probably they are competitors (though Google doesn't claim to be able to license marks, only to sell them as advertising keywords).

Assuming Google can get past the standing hurdle, are misrepresentations of trademark ownership misrepresentations of the "nature, characteristics or qualities" of Stoller's goods and services? The phrase has been interpreted expansively in the past, and should be here, whether we think of the relevant services as Stoller's licensing services or the relevant goods as Stoller's supposedly Google-branded products. Usually, a misrepresentation of trademark ownership would not be material, but the context here makes it so. (On the other hand, the reason it's material is that Google is the target/consumer, so we're back to the standing issue. State-law fraud/consumer protection claims might have been better under the circumstances.)

Final thought: Whatever Stoller's other characteristics, he doesn't suffer from low self-esteem. In his communications with Google, he promised that his threatened lawsuit would bring Google's stock price below $5 and would result in Google's "total destruction." Even the Author's Guild doesn't make those kind of claims about Google Book Search, and that really could be bet-the-company litigation. Did Stoller really think that his rhetoric would avail him against this ten-ton gorilla?

It will be interesting to see what happens next.