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TOPIC:

Google's trademark counsel behaving stupidly

^     All messages            27-42 of 42  11-26 >>
42
Zed LopezPerson was signed in when posted
02-27-2003
06:29 PM ET (US)
I'm midway through Pattern Recognition. I liked the bit in which by way of getting to know someone she might be working with, our heroine asks "I Google you, I get... ?"
41
tikkPerson was signed in when posted
02-27-2003
05:42 PM ET (US)
Red Headed Ba*d wrote:
"Nonsense. When I wrote of "trademark dilution", I was referring to misrepresentation on the part of a competitor to gain undue market share, not the entry of that trademark into common usage."

I'm incorrect about my use of the term - 'Trademark Dilution' is a claim a holder brings against a party. I wasn't responding to your use of the term, as I hadn't read it.

The correct term for what I was speaking of is 'Genericity'. The two terms share a common lay meaning, so it's easy to confuse them sometimes.

If a court decides, as they did in Kellogg Co. v. National Biscuit Co., that 'shredded wheat' is too generic a term, the trademark can be lost. 'Cellophane' and 'Aspirin' suffered similar fates for the same reason, although Bayer lost 'Aspirin' during WWI, so politics have always been rumored to have played a part (Bayer is a German company).

When determining whether a trademark has become generic, courts will look for *dictionary definitions* amongst other mediated examples (newspapers, magazines). They will also look for evidence that the trademark holder has tried to protect its mark.

So, to defend my original point, by ignoring the generification of its trademark, Google risks losing it. Not this week or the next - but at some indeterminate point. If the legal staff didn't send a letter to Word Spy, they'd be remiss.

Whether or not it seems ridiculous that 'Google' would enter the same realm as 'Cellophane' isn't for a lawyer to decide because, hey - you never know.

~ scott
Edited 02-27-2003 06:09 PM
40
jleaderPerson was signed in when posted
02-27-2003
01:54 PM ET (US)
It seems to me that if Word Spy said that "google" meant "to search for information on the web..." without mentioning the Google(tm) Search Engine, then it's perfectly appropriate for Google Technology Inc's lawyer to send them a letter saying "Hey, you ought to mention that that's our trademark, we invented the word." I don't know how much recourse Google Inc should have if Word Spy declines to add such a notice, but I'd think that Word Spy would want to mention that "Google" is a trademark. Which they've done.

The subsequent messages on the American Dialect Society mailing list at
http://listserv.linguistlist.org/cgi-bin/w...ind0302d&L=ads-l#25 , http://listserv.linguistlist.org/cgi-bin/w...ind0302d&L=ads-l#28 , http://listserv.linguistlist.org/cgi-bin/w...ind0302d&L=ads-l#49 , and http://listserv.linguistlist.org/cgi-bin/w...ind0302d&L=ads-l#50 give some interesting perspectives from professional lexicographers on issues of trademarks appearing in dictionaries.
39
Red Headed Ba*dPerson was signed in when posted
02-27-2003
10:03 AM ET (US)
"Trademark dilution happens glacially over time though, so it's difficult to pin down instances where it's 'obviously ok' for a trademark to be used outside its allowable use."

Nonsense. When I wrote of "trademark dilution", I was referring to misrepresentation on the part of a competitor to gain undue market share, not the entry of that trademark into common usage.

The point (which Google's lawyers are ignoring) is that these are two entirely different things. Even though you and I can "xerox" documents on a Canon "xerox machine", it remains a potentially illegal violation of trademark law for Canon to sell that machine as a "Canon Xerox Machine".

Social dialogue is free. Commercial dialogue (i.e. dialogue intended to make a buck) is not; it is subject to tradmark laws (and many other laws).
38
tikkPerson was signed in when posted
02-27-2003
08:25 AM ET (US)
I think that the problem for Google lies in trademark law itself, as it forces companies to jump through needless hoops for the sake of appearances. If a company is seen as taking a non-defensive stance of its trademark, it is more likely to lose it, regardless of the context in which the defense is made. No distinction is made for dictionaries and related ilk, who, while they are for-profit endeavors, can't be said to be competing with Google.

ADS-L is right - the word should be there - it's being used and a good dictionary is an honest reflection of usage; but Google has no choice either. When the time comes where Google *is* in court with a real trademark infringement case, a lack of a preemptive defense will garner less sympathy with the law.

Trademark dilution happens glacially over time though, so it's difficult to pin down instances where it's 'obviously ok' for a trademark to be used outside its allowable use. You'd think that maybe dictionaries could be singled out as being such a case though, perhaps if accompanied by disclaimerese from the trademark holding company as a suitable compromise.
37
rustyPerson was signed in when posted
02-26-2003
11:24 PM ET (US)
Anyone else smell the impending doom for Google? Not that they did anything wrong here, but they've become the leader in internet search technology by such a wide margin that it's only a (very short) matter of time before someone publically calls them "the 800 pound gorilla." And once that happens it's all over. Suddenly they're not the plucky young startup that could anymore. They're the established leader, then they're the entrenched monopoly, then they're the hated overlord. I remember when this happened to Microsoft.

Google is very slick, but a company that big can't manage the spin like the legendary "two guys from Stanford" could. The first Google critics are already receiving more notice than their crackpot complaints deserve, simply because anyone actually saying something negative about Google is newsworthy. And now they've bought themselves a million or so webloggers, who everyone knows are the most reasonable and levelheaded of all net denizens.

One misstep and one semi-viable competitor is all it will take. I wouldn't want to be running Google right now. And if anyone out there is working on some super badass new search technology, get ready for your shot. It's coming.
36
UkeGapPerson was signed in when posted
02-26-2003
10:44 PM ET (US)
Cory said " A use that creates consumer confusion is infringing."

Exactly so. Perhaps the clearest example would be if in an advertisment, Ask Jeeves were to claim the be the "best way to google." Here there's a clear likelihood that this claim would confuse consumers and might lead them to believe that the Ask Jeeves search engine is based on, or somehow affiliated with Google. This would be a clear case in which one company is "trading on," or improperly capitalizing on the mark of another company.

(Ask Jeeves could claim to be "better than Google." Comparisons are permitted, so long as you can substantiate your claim. But then they couldn't, could they.)
Edited 02-26-2003 10:45 PM
35
Jim TreacherPerson was signed in when posted
02-26-2003
09:40 PM ET (US)
Gizzoogle? Would Gizzoogle work?
34
Glenn FleishmanPerson was signed in when posted
02-26-2003
09:22 PM ET (US)
If you want to exclusively use a word, you make one up and trademark it. If you want it to continue to be yours to use exclusively, you enforce that trademark. If you don't want to be a dickhead, you approach the issue well: ask nicely to fulfill your legal requirement; only sue if it's someone trying to distort what you're doing or make money off the word. Google seems within all these parameters.

I specifically chose an untrademarkable term when I launched my Web development company in 1994: Point of Presence Company. It was in common parlance in the field, so I was free to use it, and someone couldn't name their company confusingly like mine even without trademark enforcement. But I didn't have to name it something stupid or suffer trademark suits from other people.
33
Aaron SwartzPerson was signed in when posted
02-26-2003
08:33 PM ET (US)
Cory writes: "What's more, trademark specifically does NOT protect your mark from use in criticism, parody, instruction, and other first amendment contexts."

I'd like to dispel the idea that just allowing certain types of speech prevents a law from violating the first ammendment; in fact nearly the opposite is true. Imagine a law that only the President to be discussed in parody or criticism. Such a law would obviously violate freedom of speech! The same goes for trademark and copyright laws; limiting speech by it's content is clearly unconstitutional.
32
CPGPerson was signed in when posted
02-26-2003
07:02 PM ET (US)
I really do not see the problem with the actions of Google's tm counsel in this case. First, the C&D was fairly mild. It was sent to WordSpy, a well-respected and often-referenced site whose definitions are relied upon by many. WordSpy can (and apparently has) changed its listing to provide tm attribution to Google while retaining the explanation of the colloquial use "to google." So again, what's the problem?

Please remember that, in addition to traditional tm infringement, which relies upon a standard of likelihood of confusion, the US also has a federal anti-dilution statute. Dilution only applies to famous marks, which Google probably qualifies as by this time.

Cory, if you are going to rant against "the man," at least acknowledge that you have axes to grind. All IP law is *not* evil (except certain parts of the DMCA, of course <g>).
31
dwightPerson was signed in when posted
02-26-2003
06:25 PM ET (US)
Me: Hmmm, suppose google did become a commonly used verb that meant "to search online."

Red Headed Ba*d: I'd say that has already happened.

I'm not convinced that it has happened yet. I think that it has become a commonly used verb that means "to Google(tm) search online." I'm not sure that it has crossed the line to mean a generic online search. I may be splitting hairs, but I think it is an important hair. Because I don't think that reasonable people would expect a button labeled "search online" to invoke a Google(tm) search.

Cory: Right, A use that creates consumer confusion is infringing.

My difficulty here is that once it becomes a generic verb, I think that the consumer is already confused. Is contributing to confusion the same as creating confusion?
30
Red Headed Ba*dPerson was signed in when posted
02-26-2003
05:48 PM ET (US)
"Hmmm, suppose google did become a commonly used verb that meant "to search online." "

I'd say that has already happened.

"And suppose that a website relabeled all their search buttons to read "google" even though the underlying search had nothing to do with Google (tm) the company."

That would be wrong of them, as any Reasonable Person clicking a button marked "Google", during the act of submitting a query to a search engine, would expect that search engine to be Google (tm).

"What recourse would Google (tm) have? I might buy Cory's post as it applies to nouns, but I'm missing something as it applies to verbs."

THEN their recourse is to send out those lawyer letters, followed by litigation if the offending search engine does not redress.
29
Cory DoctorowPerson was signed in when posted
02-26-2003
05:46 PM ET (US)
Right. A use that creates consumer confusion is infringing. Noting the growing trend to using google as a verb on a site that tracks lexical evolution in netspeak is not. They're unrelated cases. Google has a cause to be concerned about the former and not the latter.
28
dwightPerson was signed in when posted
02-26-2003
05:35 PM ET (US)
Hmmm, suppose google did become a commonly used verb that meant "to search online." And suppose that a website relabeled all their search buttons to read "google" even though the underlying search had nothing to do with Google (tm) the company.

What recourse would Google (tm) have? I might buy Cory's post as it applies to nouns, but I'm missing something as it applies to verbs.
Edited 02-26-2003 05:36 PM
27
CraniacPerson was signed in when posted
02-26-2003
04:32 PM ET (US)
There's also the possibility of trademarking Google + Blogger combinations, such as BooGer (tm).

Booger jokes are always funny.
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