Intellectual Property Law

You can't google it. You also can't xerox a xerox. Still.

By Anthony Verna, Esq.

Google is now beginning to take steps to protect its trademark. Google has been sending letters to media organizations to state that its trademark is not a verb. So, someone cannot say "Google it for me" or "I googled it and here's what I found."

Those of us who are fans of sports commentator and new (reluctant) Monday Night Football announcer Tony Kornheiser used to hear him say to use "The Google Key" in searching for something on the Internet. My friend Vicki jokes that she gets help from "Professor Google" in searching. Both of those are good uses of the word "Google" to search the Internet.

Why?

In trademark law, the trademark must NOT be a generic word. You cannot register "ball" as a trademark for a ball. It's generic. There is no Beer-brand beer. Even to your eyes and ears, it is somewhat silly to say that. If a trademark turns into a generic word, then the owner loses all rights.

(And now, a boring legal citation on the topic. A mark is deemed to be abandoned when "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." This is USC Section 1127.)

Turning "Google" into a verb meaning "to search the Internet" which Merriam-Webster has accepted into the language means that there is no longer a unique link between the trademark and the services provided. That is why marks are registered in the first place. A company wants to protect not only the names it has chosen, but also the quality of the product. A generic word strips that connection that ordinarily would not be there.

And don't forget, you may make a photocopy of your document on your Xerox-brand copier.

Full post as published by Trademark, Copyright and Entertainment Law Forum on August 22, 2006 (boomark / email).