But manipulations of the Google name, such as Gmail, are an anomaly in Google’s stable of trademarked products names. As the company matured, it shied away from playful variations of “Google” in favor of building the strength of its primary brand. Towards that end, in April 2007, the company changed the name of its shopping search service from “Froogle” to “Google Product Search” just over four years after Froogle’s original launch. [1] As one Google executive explains, the name Froogle “caused confusion for some because it doesn’t clearly describe what the product does.” [2] Notably, the company’s solution was to re-brand that service using its core “Google” name.
These various instances are only some examples of the strength of Google’s trademark. Throughout its explosive growth, Google has steadfastly held on to its motto: “don’t be evil.” [3] This in turn has endeared the search engine to the public, generating enough goodwill that “a huge group of Web users and bloggers stand ready to adopt any ol’ app Google rolls out, whether its best in class or not.” [4] For Google, the goodwill and universal recognition vested in its trademarked name makes that trademark one of Google’s most valuable assets. As a result, Google actively protects its trademark from a variety of threats, including genericide, the process by which a trademark becomes generic and ineligible for protection.
II. Background of trademark law
Passed by Congress in 1946, the Lanham Act is the source of all Federal trademark law in the United States. The Lanham Act protects marks, designs, product configurations, sounds and other source identifiers. In theory, strong and easily distinguishable trademarks allow consumers to quickly determine the origins of a product or service. Conversely, businesses have an incentive to build public recognition of their trademarks through investments in advertising. By defending trademark rights, the government protects a business’s investment in its mark, and increases consumer confidence that marks reliably indicate a product or service’s origin. But the government is also wary of overprotecting marks and inadvertently stifling competition among businesses who might use them in bad faith. As a result, trademarks are afforded varying degrees of protection depending on their strength, as measured by the “Abercrombie spectrum.” [5]
The Abercrombie spectrum defines four possible categories of strength for trademarks. In order from strongest to weakest, those categories are: arbitrary or fanciful, suggestive, descriptive, and generic. While arbitrary or fanciful marks are afforded all of the advantages and protections of trademark law, generic marks are essentially in the public domain, and are afforded no protections.
Although arbitrary marks and fanciful marks are two distinct categories of trademarks, they both enjoy maximum protection under the Lanham Act. Fanciful marks are marks that are created expressly for the purpose of being a trademark. Prominent examples include Kodak, Clorox and Exxon. Because these words were created for the purpose of being trademarks, courts are comfortable in granting to their owners the exclusive right to use those marks.
In contrast, generic marks represent the other end of the Abercrombie spectrum, and are afforded no trademark protections. The key question is whether the mark signifies the name of a product or service, its genus, rather than signifying its origin, or species.
Thomas McCarthy’s seminal treatise on trademark law states his “who are you, what are you” test. [6] If the mark answers the question “who are you” or “where do you come from,” then it is not generic and is still eligible for trademark protections. If the mark merely answers the question “what are you,” then it has lost its source identifying properties, and is generic.
III. Genericide
A finding of genericness typically arises from one of two scenarios. The first possibility is that the term is generic “by virtue of its natural relationship to the products with which they are used.” [7] For example, the mark “Beer” would be generic with regards to a beer product. [8] The second possibility is that a formerly non-generic mark may become generic over time through evolving public usage, a process known as genericide.
As Google seeks to avoid the genericide of its own trademark, it has an ample history from which to draw lessons and warnings. Genericide has claimed several well-known, widely-recognized victims, including Xerox, Band-Aid, Aspirin, Escalator, Kleenex and Thermos. In their day, the products sold by companies such as Aspirin, Escalators and Kleenex dominated their respective markets to such an extent that over time, public usage of those marks shifted. Instead of identifying a brand of adhesive bandage or facial tissue, Band-Aid and Kleenex eventually came to identify the product itself.
For instance, the genericide of “escalator” is one prominent example of how inaction on by the mark’s owner can make that mark generic. The Otis Elevator Company’s trademark for the term “escalator” was cancelled, in part, because the company failed to actively defend their mark from genericide. Specifically, two employees of the Otis Elevator Company were on the committee that drafted the “Standard Safety Code for Elevators, Dumbwaiters and Escalators.” [9] Neither of these employees objected or protested in any way to the generic use of the term “escalator” in the drafted safety codes. This course of conduct by the Otis Elevator Company caused the mark to “lose its significance as an indication of origin.” [10]
Public use of the mark, for purposes other than source identification, is also heavily weighed by courts when determining whether a mark is generic. Dictionary definitions are one such public use, as they “reflect the general public’s perception of a mark’s meaning and implication. Newspaper and magazine use of a mark was also used as “a strong indication of the general public’s perception” of a mark. [12]
Like these brands, Google’s trademark can be readily classified as a fanciful mark: a word created for the sole purpose of being a trademark. The word “Google” was a play on the word googol, and appears to be a word created for the express purpose of identifying the company, an ideal position for seeking trademark protections. [13] However, Google must take active steps to avoid falling victim to genericide.
IV. Evaluating Google’s position
As Google comes to dominate the internet search industry, the term “Google” has increasingly been used for purposes other than source identification. Google appears to be well aware of the potential implications of these expanding, varying uses of the term “Google,” and has been taking steps to combat this potential genericide. Since at least February 2003, Google has been actively policing the use of its increasingly valuable trademark. [14]
Most famously, Google sent a cease-and-desist letter to the creator of the Word Spy website in early 2003. Word Spy was a popular online dictionary, and had recently added a definition of “google.” The widely-publicized letter from Google’s trademark attorneys asked Word Spy to clarify its entry and emphasize that “google” refers to an internet search conducted using Google’s search engine, and not to internet searches in general. [15] This particular letter from Google was just the first to draw significant attention from commentators.
In early 2006, a television commercial for Pontiac automobiles urged viewers to “Google ‘Pontiac’ to find out” more. [16] Curiously, Google did not object to the commercial’s usage of “Google” as a verb, even though the infraction seems similar to various other instances that prompted a letter from Google’s attorneys. Indeed, Google essentially consented to the commercial’s usage of “Google,” since Pontiac contacted Google to obtain permission for use in the ad. [17] This particular instance of generic use may be especially damaging to Google, since their consent to the use is similar to that of the Otis Elevator Company, which weighed heavily in the finding of genericness. However, Google might successfully argue that the video of the commercial included images of the Google search page being used, reinforcing the public’s understanding that the phrase “Google ‘Pontiac’ to find out more” means use of the Google search engine.
In mid-2006, Merriam-Webster’s Collegiate Dictionary added the term “Google” as a verb. [18] However, the dictionary’s lexicographers were sensitive to Google’s attempts to protect its trademark, and crafted the entry accordingly [19]: “to use the Google search engine to obtain information about (as a person) on the World Wide Web”. [20] The induction into Webster’s dictionary was marked by an article in the Washington Post, which drew a cookie-cutter letter from Google’s trademark lawyers. [21] Like its previous letter to Word Spy, this response This in turn sparked cries of outrage and disappointment for Google’s apparent lack of humor. [22]
While Google’s efforts to preserve its trademark has drawn the ire of many commentators and industry, they remain necessary actions in its quest to preserve trademark rights. Many of these writers do not recognize the imminent danger that Google faces from potential genericide. Furthermore, the actions taken by Google to prevent genericide are innocuous requests made to writers, bloggers and the general public. [23] They do not contain any threats of legal action, but merely ask the relevant party to change the way it uses the word “Google.” However, such letters should help combat allegations of consent and indifference on the part of Google.
V. Conclusion
As several commentators have discussed, Google is unlikely to suffer the same trademark fate as Xerox and Aspirin, simply because they own the Google.com domain name. Thus, Google’s source identifier is precisely how customers find their product, protecting Google from the dangers of genericide. However, Google should continue to zealously defend its trademark from genericide, for several reasons.
First, Google’s current position of dominance in the search engine arena is by no means guaranteed or secured. By vigorously defending their trademark now, Google ensures that their mark will still be non-generic in future years when, like Xerox and Otis Elevator before it, Google may no longer dominate its industry.
Furthermore, Google’s ownership of the Google.com domain name may not be adequate protection against genericide in the future. Given the rapid evolution of web-related technologies, how consumers access the internet may be radically different in the near future. If and when this happens, Google will likely need a robust and non-generic trademark to maintain market dominance.
Finally, Google’s powerful trademark is useful for non-web-based products and applications, where its domain name is a non-factor. Branching away from internet-related services, Google has attached its name to cell phones and even lip balm. [24] As it expands its portfolio of products and services, Google will likely attach its trademark to other products. Towards that end, Google will need its mark to serve as a non-generic source identifier.
Given Google’s current dominance of internet search engines, commentators are understandably puzzled over the company’s concern for its trademark. However, the history of dominant companies and ubiquitous trademarks has shown that a mark owner should always remain vigilant against genericide.
Endnotes
[1] Danny Sullivan, Goodbye Froogle, Hello Google Product Search!, Apr. 18, 2007, http://searchengineland.com/070418-202109.php
[2] Marissa Mayer, Back to Basics, Apr. 18, 2007, http://googleblog.blogspot.com/2007/04/back-to-basics.html
[3] Google Code of Conduct, http://investor.google.com/conduct.html
[4] Kyle Monson, Trashing Yahoo! By Buying It, Feb. 19, 2008, http://www.appscout.com/2008/02/trashing_yahoo_by_buying_it.php
[5] Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 4 (2d Cir. 1976).
[6] 1 J. Thomas McCarthy, Trademarks and Unfair Competition, § 12.01 (3d ed. 1992).
[7] Dinwoodie, Janis, Trademarks and Unfair Competition, Aspen Publishers, p64.
[8] Id.
[9] Haughton Elevator Company v. Seeberger, 85 U.S.P.Q. (BNA) 80 (Commr. Pat. 1950)
[10] Id.
[11] Gimix, Inc. v. JS & A Group, Inc., 699 F.2d 901, 905 (7th Cir. 1983).
[12] Murphy Door Bed Co. v. Interior Sleep Systems, Inc., 874 F.2d 95, 101 (2d Cir. 1989).
[13] Google Corporate Information: Google Milestones, http://www.google.com/corporate/history.html
[14] Jonathan Duffy, Google Calls in the ‘language police,” June 20, 2003, http://news.bbc.co.uk/2/hi/uk_news/3006486.stm
[15] Colin C. Haley, Protecting Google Brand “Tricky Business,” Feb. 27, 2003, http://boston.internet.com/news/article.php/1730921
[16] Gary Price, TV Commercial “Googles” Pontiac, Jan. 26, 2006, http://blog.searchenginewatch.com/blog/060126-185815
[17] Id.
[18] Frank Ahrens, goo gle (goo’-gul), July 7, 2006, http://www.washingtonpost.com/wp-dyn/content/article/2006/07/06/AR2006070601815.html
[19] Jason Lee Miller, Google Gets Dictionary-ized, July 6, 2006, http://www.webpronews.com/topnews/2006/07/06/google-gets-dictionaryized
[20] Merriam-Webster’s Dictionary. “google”
[21] Frank Ahrens, goo gle (goo’-gul), July 7, 2006, http://www.washingtonpost.com/wp-dyn/content/article/2006/07/06/AR2006070601815.html
[22] Stephen Foley, To google or not to google? It’s a legal question, Aug. 13, 2006, http://www.independent.co.uk/news/business/news/to-google-or-not-to-google-its-a-legal-question-411600.html
[23] Struan Robertson, Why Google Is Right to Rebuke Brand Abuse, Aug. 14, 2006, http://www.out-law.com/page-7193
[24] Chris Silver Smith, Google On Everyone’s Lips: A Trademark Nightmare?, Nov. 21, 2007, http://searchengineland.com/071121-080639.php
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