Trademarks: Can I google you on Yahoo?
October 26, 2006 5:49 AM   Subscribe

Does trademark law really offer any basis for the practice of using legal threats to prevent a trademark from becoming common usage? This article in the Google Blog strongly suggests that trademark law prohibits me from using (in a non-commercial context like a post on MeFi) the verb "to google" to mean "to search on the Yahoo search engine." Is this so?

In my (naive?) understanding, if I'm not selling Yahoo's services, then they have no grounds for action against me and if the word is becoming common usage then there's nothing they can do to prevent it (other than make threats which are not backed up by the law -- which might be enough, I guess)

And yet this seems to be a common practice, with lawyers apparently sending out warning letters to publications whenever they see their company's trademark used in a generic way.

FWIW, Google's in the USA and I'm in Canada but I don't think it makes a difference on this issue. But if it does (or there's someplace else where it might) that would be interesting too.
posted by winston to Law & Government (30 answers total)
Response by poster: And even more "more inside":

Of course they are free to ask that people not use it as a generic term, and do any number of things to "educate" the users about the proper use of their trademark. But I'm more interested in the suggestion in the article that I am not allowed to use it as a generic term as long as the trademark is still in force.

Tangential question: it seems clear to me that the verb "to google" is already common usage, and even the primary usage of the term. Can't they still maintain exclusive rights to the noun Google?
posted by winston at 5:50 AM on October 26, 2006

it was my understanding that a company in that position needed to make a constant demonstration of protecting their trademark, so that if/when they have to sue someone for a meaningful infingement, they have a documented history of defending their trademark. otherwise there must be some legal question as to why they haven't bothered to defend their trademark until said case. but IANAtrademarkL.
posted by sonofslim at 6:01 AM on October 26, 2006

Response by poster: Yes, but as I understand it, defending the trademark (according to the law itself) means preventing others from using it to sell their own products -- not preventing me from using it in a non-commercial context.
posted by winston at 6:08 AM on October 26, 2006

Just fyi, there's a related post on the Google Blog today. Google is defending their trademark (including defending against the use of "google" as a verb).
posted by inigo2 at 6:32 AM on October 26, 2006

I don't think that blog entry implies that Google can sue you if you use their trademark in a generic way. But their lawyers would prefer that you didn't, because that reduces their ability to sue others. Too bad for Google.

In order to infringe or dilute a trademark, you must be using it in commerce. That necessarily doesn't mean for profit, but there must be a good or service involved.

inigo2: You really ought to read the question more carefully.
posted by grouse at 6:35 AM on October 26, 2006

No, there is no legal basis for demanding that anyone stop doing anything with a trademark except using it, in business, to sell competing products.

You can use "Google" or "Youtube" or "Yahoo" in ANY WAY YOU SEE FIT except to promote your competing internet services. I'm going to go youtube my google on the internets now.

And re: sonofslim: this is a justification that is often trotted out when trademark holders are incredibly overzealous. It doesn't hold water - nothing in law requires trademark holders to be overzealous.

The Google Blog post is doing what anyone has a perfect right to do: asking others to behave in a certain way. But Google has NO LEGAL BASIS to *demand* or enforce that you act in that way. (Aside: it's very unlikely that Google will actually become a generic word referring to any search engine - "I have five different googles bookmarked, which one do you think is the best search engine?" Google's lawyers are wasting their time trying to prevent something that isn't going to happen.)
posted by jellicle at 6:37 AM on October 26, 2006

it seems clear to me that the verb "to google" is already common usage, and even the primary usage of the term. Can't they still maintain exclusive rights to the noun Google?

Of course. I can't start selling GOOGLE brand photocopiers because that would dilute their mark.
posted by grouse at 6:37 AM on October 26, 2006

As a non-commercial entity writing on a message board, it is not illegal for you to use "google" generically, just like it is not illegal for you to order a cola in a restaurant by asking for a "coke".

If you were writing your own blog and you used in generically, I don't think it is illegal or trademark infringement, but google will likely send you a letter informing you htat hte word is trademarked blah blah.

What is infringement is the restaurant not correcting you by saying "is a pepsi okay?" when you ask generically for a coke.

The practice of legal letters is not only authorized under trademark law, it is pretty much a necessary step for companies to take to prove that they did not allow their trademark to fall into generic usage. As I said, if you start using the word on your blog in a generic sense, google should send you a letter politely reminding you that hte word refers only to the google search engine, and is not a verb to be used to refer to searching generally.

If they do not do this, they could, and would, lose their trademark over the word.
posted by Pastabagel at 6:40 AM on October 26, 2006

On posting, jellicle, I disagree with this: You can use "Google" or "Youtube" or "Yahoo" in ANY WAY YOU SEE FIT except to promote your competing internet services.

Since Google is clearly a "famous mark" and a made-up word (despite being close to "googol"), you can't use it to sell anything, no matter in what area of commerce it is in. That would be dilution which was made actionable in the Federal Trademark Dilution Act of 1996, different from the traditional infringement which does require that the same field of commerce be involved.
posted by grouse at 6:41 AM on October 26, 2006

I don't think Google is suggesting that you *legally* can't use the term "Google" for a generic search -- but that you can't, physically, Google something on Yahoo.

And Google has it right -- they are required, in the United States, to attempt to protect their trademark from genericization. If they do not, the mark is considered to be abandoned, and then anyone can indeed begin using Google to sell anything they wish. They can't sue you for using the term generically in a non-commercial context, but they must show ongoing attempts to educate the public and maintain their mark. So if someone high profile were to use the term generically, they might send a letter reminding them of the proper use, but I doubt they would actually suggest they were pursuing legal action.

In short, I don't think they're threatening. I think they're trying to persuade/inform the public and/or make a good faith showing of non-abandonment.
posted by katemonster at 8:31 AM on October 26, 2006

Response by poster: inigo2: that's the article I'm referring to.

I don't think that blog entry implies that Google can sue you if you use their trademark in a generic way

It doesn't invoke any particular consequence but it very nearly says that you may not use it in a generic way. ("You can only 'Google' on the Google search engine", in the context of explaining trademark legalities.)
posted by winston at 8:33 AM on October 26, 2006

Response by poster: And Google has it right -- they are required, in the United States, to attempt to protect their trademark from genericization.

Do you have a citation for that? They are required to protect their trademark from being used to sell other products or it will be considered abandoned but as far as I know there's no basis in law for them to do anything to anyone who uses the word in any way other than selling other products.
posted by winston at 8:37 AM on October 26, 2006

I agree with grouse that there could be a dilution claim here. Moreover, just a few weeks ago the President signed the Trademark Dilution Revision Act of 2006 lowering the standard for proving trademark dilution.
posted by exogenous at 8:37 AM on October 26, 2006

Response by poster: Yes, but even with dilution, I still have to be selling something. It doesn't prevent me from using the verb "to google" (meaning searching other that using Google's web site) in a newspaper article or a novel or a blog post, etc.
posted by winston at 8:44 AM on October 26, 2006

True, the law still requires use "in commerce." But I'm not a profitable blog or newpaper wouldn't qualify. Here's the text of the new dilution law.
posted by exogenous at 8:52 AM on October 26, 2006

Sorry, that should be "not sure a profitable blog or newspaper wouldn't qualify"
posted by exogenous at 8:53 AM on October 26, 2006

thanks katmonster, that is a much better explanation of what i was thinking of.

from here: "a trademark does not become generic simply as a result of popular usage, particularly if there has been no legal determination on the status of a trademark, and the trademark owner maintains and enforces their rights."

so it may be overzealous as pointed out above, but i think in a lot of cases it's a matter of the trademark holder making sure their bases are covered when it comes to maintaining their rights. i know Hasbro has C&D'd one or more online scrabble sites for using the name without permission, and their usage manual states that you are at all times to refer to it as the SCRABBLE(tm) brand crossword game, for similar anti-dilutional reasons.
posted by sonofslim at 9:03 AM on October 26, 2006

So I read the blog. I'm expecting an open letter from Google's lawyers to any and all infringers about how they're going to shut down your web page if you're found using the word incorrectly, or how they're going to replace it with GENERIC SEARCH (with a blink tag) or they're just going to come to your door and beat you the EF up, bitches! if you're using the word incorrectly.

This is the most mundane and kindly "hey, would you guys mind not doing something?" I've ever read. Winston, really, I think you might need to reevaluate your skin. 'Cause it's gotta be kinda thin to get all uppity about that post.

Thing is, they've gotta protect their trademark or it goes bye-bye. Then you and I (and anyone who thinks of it) could publish "Google, The Dictionary!" Does that mean that they're going to prosecute you if you use the word incorrectly? Nowhere in that article did it say that. But now they're on record as registering their displeasure with the notion that the word is falling into common usage. Will they smote you? No. But all they need to do is demonstrate that they're doing something about protecting their trademark. This is defined as something, as are those cease and desist letters. It doesn't matter if the requests are legal or enforceable -- I can ask you to do anything I want. You can say no. If I think the law is on my side, I can take you to court. If I don't think the law is on my side or if it isn't worth my time (as incorrect usage surely isn't worth Google's time) then I won't be suing your ass or beating you up.
posted by incessant at 9:18 AM on October 26, 2006

Response by poster: I'm not getting upity. And it's not really about Google in particular. It just seems to be standard practice to C&D someone for using a trademark as a generic and as far as I can tell, doing so is just blowing smoke. So I was curious if I was correct in thinking that it's just blowing smoke. That's all.
posted by winston at 9:28 AM on October 26, 2006

Response by poster: Thing is, they've gotta protect their trademark or it goes bye-bye. Then you and I (and anyone who thinks of it) could publish "Google, The Dictionary!"

What I'm saying is that (as I understand it) there are two completely separate issues which seem to be getting confused:

1) The trademark holder has to protect their trademark against misuse. If they allow others to use the trademark in a commercial context (e.g. publishing "Google! The Dictionary") then they are considered to have abandoned their trademark.

2) The trademark holder can also loose their trademark to genericization. AFAICT, there is no obligation to protect their trademark against this and no benefit to doing so (from a legal perspective that is -- the benefit is that it results in people into mistakenly believing that they can be sued for it)
posted by winston at 9:33 AM on October 26, 2006

33 Hofstra L. Rev. 603

II. The Structure of Trademark Law

A. Attenuated Rights

.... At every moment of their existence, trademark rights are contingent on those two elements. Without use, no trademark rights arise. Without continued use, trademark rights will - after a lag time of a few years - be extinguished; the mark is abandoned. Without consumers' belief that the mark indicates a source (even if consumers don't know the source), the mark ceases to exist or never comes into being in the first place. In other words, if consumers think the mark is the name of the product rather than a source indicator, the mark has ceased to function as a trademark; it has become the generic - and hence unprotectable - term for the product itself. Words such as aspirin, yo-yo, and cellophane were once valuable trademarks that have become mere generic product names due to shifts in consumer perception.
posted by katemonster at 9:35 AM on October 26, 2006

To clarify, I don't think what winston is talking about is a valid dilution case. The plain meaning of the statute (even the new one) talks about use of "marks or trade names" in commerce. Using a verb in the middle of some sentence does not necessarily mean it is a mark or a trade name. The reason that companies want to avoid genericization is simply that it uses the word in a context where it is not a mark.

It just seems to be standard practice to C&D someone for using a trademark as a generic

Most letters I have seen regarding using a trademark for a generic (like DAY-GLO) have been quite friendly, especially compared to a cease and desist.
posted by grouse at 9:35 AM on October 26, 2006

A better reference:
The trademark owner itself is occasionally partially at fault in the evolution from trademark to generic name. Under the statute, a trademark is abandoned, and protectible rights lost, '[w]hen any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark.' In other words, a mark will be deemed abandoned under the Lanham Act if its owner permits it to become a generic term. Such courses of conduct include failure to use the mark correctly on the product and in advertising, failure to prevent infringements and generic uses, and failure to educate the public as to the proper generic name for the product. If the trademark owner uses its mark as a generic name, it should come as no surprise that the public does as well. For example, the WALKING FINGERS logo became generic for yellow pages directories where its creator encouraged use by others of the logo and disavowed exclusive rights in it for thirty years.

1-2 Trademark Protection and Practice ยง 2.02
Trademark Protection and Practice
posted by katemonster at 9:42 AM on October 26, 2006

Response by poster: katemonster, that's what I'm referring to under #2 in my previous message. I understand that they can lose their trademark this way. What I'm asking is that is there any basis in law that would (a) prohibit someone from contributing to this loss by using the trademark generically, or (b) compel the trademark holder to defend against such a generic use in the same way they are compelled to defend against misuse in a commercial context.
posted by winston at 9:43 AM on October 26, 2006

Sorry for the above, I'm not too bright.
posted by inigo2 at 10:13 AM on October 26, 2006

Well, the authors of the treatise, who are well-respected trademark lawyers, seem to think that yes, the trademark holder must defend against generic use by preventing infringements and generic uses, and educating the public as to the proper generic name for the product.

There is undoubtedly case law supporting this, but frankly AskMe doesn't pay well enough for me to do that level of research.

There is no prohibition on persons using TMs non-commercially in generic senses -- ie, "I need a Kleenex" -- but it is Kimberley-Clark's responsibility to try to educate the public and prevent that kind of use.
posted by katemonster at 10:14 AM on October 26, 2006

The original question is a common one in trade-mark law. This is because brand owners want to be the market leader and have their brand associated with the product or service. It must also protect their brand from generic use as a noun to describe all similar products. Think of: JEEP sport utility vehicle, THERMOS containers, KLEENEX tissue, TROJAN condoms. When we say JEEP we know its a brand because Chrysler worked hard to teach us while enforcing its rights against others. When it created its JEEP vehicle, there was no other term for it. Now, we all now that a JEEP is an SUV it wasn't so long ago that people used JEEP to describe any old 4 wheel drive off road vehicle.

If a brand owner doesn't police its brand, the trade-mark can become generic -- which means its the term for all wares or services of that kind regardless of the source. This is different from abandonment. When this comes to light, is not in daily use, but when the brand owner tries to prevent another person from abusing the trade-mark. The alleged abuser, will say -- well, "that's what everyone calls it." And if its true... well some heads will roll.

In Canada, my interpretation is that you cannot be sued for using the phrase "I googled it" on your webblog. (And if you were sued, it would not be for cash but for an order preventing you from saying "googled") That being said, Google has an obligation to send letters to the Globe and Mail, The Toronto-Star and arguably even bloggers to request that Google be treated as a trade-mark and a noun, and not a as a verb. This is not because it is written in the Trade-marks Act. This is to fight the cultural forces that equate the brand with the product or service. The reason is that the trade-mark must remain "distinctive" of a single source. This is why years ago Xerox took ads out to explain its brand was not a process (Xerox this) and we now say photocopy not xerox something (from our Canon or whatever copiers).

There are some key differences between Canada and the United States.

Canada does not have an equivalent of The Dilution Act. It does have something analagous that relates to the depreciation of goodwill (s. 22 of the Trademarks Act).

Also, in Canada, the fame of a mark is only one factor in all of the surrounding circumstances to be considered. This was confirmed this year when the Supreme Court of Canada decided that BARBIES for a restaurant was not confusing with BARBIE dolls by Mattel.
posted by greedo at 11:12 AM on October 26, 2006

I must add that the YMMV and the above is not to be taken as legal advice and that generally, abusing the trade-marks of others is not nice.
posted by greedo at 11:17 AM on October 26, 2006

From my understanding, the reason they don't want you to do this is that if it becomes synonymous with "search" (like if everyone just started to call it Googling) they would lose their trademark on the term.

If anyone recalls the earlier days of photocopying, Xerox were pretty much the top dog, to the point where "photocopying" and "xeroxing" became synonymous, whether one was using a Xerox photocopy machine or not. As such, Xerox was in danger of losing their copyright on the word "Xerox".
posted by The God Complex at 12:38 PM on October 26, 2006

I saw Google's general counsel speak at an event today. He used google as a verb, and then corrected himself. It was funny.
posted by grouse at 6:09 PM on October 27, 2006

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