The official Google blog carried a post titled Do You Google? It’s message was this: “You can only ‘Google’ on the Google search engine. If you absolutely must use one of our competitors, please feel free to “search” on Yahoo or any other search engine.” I learned of the Google post from an article taking Google to task for its “12-year-old lawyers . . . trying to reinvent the law.” Coincidentally we discussed generic usage of trademarks in class yesterday. I told my students that large corporations with well-known trademarks employ teams of lawyers to scour the world for unauthorized usages and send cease-and-desist letters to the offenders. I love these moments when the world breaks into the classroom.
I don’t agree with everything Hotchkiss says, maybe because as a lawyer I understand why Google needs to make a point about using “to Google” as a generic term meaning “to search.” Google made this point in a blog post, not in a cease-and-desist letter to The New York Times. Still, Hotchkiss gets it right when he says of other trademarks (e.g. trampoline, brassiere) that have passed into generic usage, “[t]The consumers didn’t take the brand away from the company, the company surrendered the brand to the competition.” A trademark owner cannot prevent consumers from using their trademarks generically, and generic usage by consumers is not enough to weaken the mark. That can happen only when competitors use the mark in its generic sense, and we won’t see ads stating “use Yahoo to google your website.”
Relax. consumers. We can rollerblade, sneeze and ask for a kleenex, Tivo our favorite shows and watch them from our barcaloungers, and bandaid our finger when we hit it with a hammer. Just don’t say “I’ll have a burger, fries, and a coke” if the diner only serves Pepsi.
Gord Hotchkiss, Thou Shalt Not Google (Unless It’s On Google), SearchInsider 02-Nov-06