Man, if that's true, William Gibson's in a load of trouble. He used "google" a whole mess of times in Pattern Recognition.

I can't exactly blame them. Part of the problem is that Google *has* to go after infringers or risk losing trademark protection. If that happens, search engines risk becoming "googlers", by marketing types exploiting google's success.

US Trademark Law needs a way to permit use of a trademark in this way without causing it to become a "general" phrase that competitors can use.

Oren, you're incorrect. Allowing the generic use of "to google" by critical/academic sites like WordSpy does *not* constitute an abandonment of trademark (in fact, trademark abandonment involves a *very* high standard that is far in excess of allowing people to casually use your mark). What's more, trademark specifically does NOT protect your mark from use in criticism, parody, instruction, and other first amendment contexts.

Trademark exists to prevent marketplace confusion, not to stifle speech. Trademark lawyers promulgate the idea that any unauthorized use starts down the slope to abandonment, but it's simply not true. Any reasonable person can make a common-sense determination about whether a trademark use is infringing by asking whether the use is likely to cause confusion in the market.

I'm really disappointed in Google. This is bad and foolish behaviour from a company that I have a lot of respect for.

The example people usually cite about now is Bayer, which lost its trademark protection on Aspirin during WWII, since that is pretty much the ONLY major example we have of a trademark becoming generic.

But Bayer *didn't* abandon its mark in Aspirin. Rather, Bayer fought on the wrong side of WWII, and lost the rights to Aspirin when the US govt nationalized all the Nazi trademarks.

Edited by author 02-26-2003 12:19 PM
asprin and kleenex? I don't know what kind of evening you have planned for yourself, but I support it ;)

Seriously though, this is the first time I've seen Google's rep take a hit in the online communities. I know there are "Googlewatch" websites, but as a whole, Google maintains a very high level of respectability. It will be interesting to see how they respond to the hit on their rep. I expect they'll take patching-up actions before the week is out.

Cory's right, Oren's not. The express purpose of trademark law is to prevent confusion in the marketplace that may result in the trademark owner losing revenue to a competitor. This would be considered "dilution" of the "good will" which belongs to the trademark owner as a product of that ownership.

In practical terms, this means that if (and ONLY if) another search engine commercally advertised itself "Google" or anything that could be reasonably confused with Google, then the owners of the Google trademark may be compelled to take action.

Remember that a lawyer bills FOR EVERY LETTER he mails on his client's behalf. Google's failure here is in trusting their lawyers that these letters were necessary when, in fact, they were not.

BTW, I am not a lawyer (though I'd beat one on TV).

Whatever happened to the much vaunted "Don't be Evil" maxim?

Edited by author 02-26-2003 12:41 PM
I think this is a real shame. Heap bad whuffie, fo' sho'. What kind of mindset does a marketing department have to be in to allow a company to do this sort of karma burn?

More to the point, as I understand it you cannot trademark a verb. Presumably, then, you cannot enforce a trademark when that mark enters into dialect in verb-form. "Google" is enforcable; "to google" is not.

On the other hand, from an etymological point of view the Wordspy chap has an obligation to note the origin of the verb "to google" in Google, the trademarked name of (arguably the most successful) online search service. Had he done this, I believe he would have met all reasonable trademark-protection standards.

Michael, you *can* trademark phrases that contain verbs, like "Avoid the noid."

Cory wrote: "Oren, you're incorrect. Allowing the generic use of "to google" by critical/academic sites like WordSpy does *not* constitute an abandonment of trademark (in fact, trademark abandonment involves a *very* high standard that is far in excess of allowing people to casually use your mark). What's more, trademark specifically does NOT protect your mark from use in criticism, parody, instruction, and other first amendment contexts."

If this is correct, then why do magazines such as Writer's Digest (oh the shame) carry full page ads from Xerox, etc. reminding writers to respect the trademark? Are they being overly cautios? Excuse me, I have to go take a Google (tm).

Edited by author 02-26-2003 01:36 PM
Cory,
That's a phrase, which is copyrightable (is THAT a word?). However, I don't believe that a verb is. I could be wrong though. I only had Media Law for one semester during a summer two years ago.



But I did get an A. :)

P.S. I'm going to copyright the adjective "copyrightable," so don't anyone get any bright ideas.

Point: FedEx encourages the use of their trademark as a verb.

It's too bad; the whole existence of the "google-it" meme is what vaulted them to the "Brand of the Year" spot ( http://www.brandchannel.com/features_effect.asp?id=143#more ) this past year with virtually nothing spent on marketing.

hey, google: do you want ketchup on the hand that's feeding you, or would you prefer steak sauce?

That's a loser idea, which is odd from Google. FedEx has the right idea -- it's free word of mouth advertising. People use to think of Frigidaires when they thought of refrigerators -- that free advertising is long gone. Google, you are not immune.

Off-topic:

I've got a rotten cold too, Cory, and my advice is to get the Kleenex that say "Lotion" on the box. I've gone through two boxes and my nose isn't even red! They don't feel greasy, either, like the first-gen lotion Kleenex did.

Edited by author 02-26-2003 02:38 PM
So what about Googlecaching (or whatever that meme was called last year)?

I like Google as a search engine, but I think they're lame as a corporation -- they strike me as arrogant. I'd asked them time and time again to remove some old stupid posts I made in university (we were younger and naiver back then) and it wasn't until recently that they fully complied. Maybe what Google's doing now over this verb thing is a form of tit for tat: DMCA is forcing 'em to remove posts and sites, maybe Google's doing this to get revenge in a way?

Off topic, too, but advice from a recent cold sufferer: Tylenol Daytime and Nighttime Cold tablets. Babies work like a charm.

great...now that they own blogger, are they going to try to trademark that word too?

Edited by author 02-26-2003 04:31 PM
Colds: yes to lotion kleenex. Also Zicam nose gel, at the beginning of the cold (it has zinc in it) and cold-eze zinc lozenges. And echinacea. and anything http://www.drweil.com says. And quit smoking.

There's a major problem going on in this very discussion.

It's a "Google search engine". "Google" is the trademark. Trademarks of this type are adjectives. If your trademark becomes a noun, you'll have to stick cellophane over your mouth and take the escalator down from the trademark mountain.

Slogans, sounds, colours, shapes, numbers - any distinctive indicator of your goods or service can be a trademark. The apple logo, 967-11-11, "Drivers wanted.", and the Microsoft Sound are all trademarks.

Perhaps they need to teach people to do a "google search".

Wait... Google stole their name from the word googleplex, so someone should be issuing them letters telling them that 'A google is a number with 100 zeros, not a search engine. You'll have to change your company name'.

Hey Cory, is this why your book bio says "using Google to look up interesting facts" instead of "googling for"?

Mattbots, that's a googol not a google.

Naw, I just figured a lay audience wouldn't uderstand the colloquialism.

Edited by author 02-26-2003 04:26 PM
"Wait... Google stole their name from the word googleplex, so someone should be issuing them letters telling them that 'A google is a number with 100 zeros, not a search engine. You'll have to change your company name'."

A little confusion here.

True, googol = 10^100, or 1 followed by 100 zeros.

But googolplex = 10^10^100, or 10^googol, or 1 followed by a googol zeros.

Regardless (or "irregardless", if you are G.W. Bush), what I wrote earlier stands. They are entitled to defend their trademark "Google" as it is used to identify a search engine or related products and services ONLY.

If you want to name your new breakfast cereal "Crunchy Google Bits", you are well within your rights. It's only if you name your new search engine "Google" (or even "Geugle" or "Joogle" or "Ur-Google") that those inevitable lawyer's letters actually become cause for concern.

There's also the possibility of trademarking Google + Blogger combinations, such as BooGer (tm).

Booger jokes are always funny.

Edited by author 02-26-2003 05:36 PM
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.

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.

"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.

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?

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>).

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.

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.

Gizzoogle? Would Gizzoogle work?

Edited by author 02-26-2003 10:45 PM
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.)

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.

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.

"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).

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.

Edited by author 02-27-2003 06:09 PM
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

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... ?"