Legal Blog Watch has a brief post about the threat of the Google trademark passing into common usage, or going generic. There’s nothing Google can do about us regular folks using Google as a verb–“I Googled that guy and he turned out to be a creep”–or as a substitute for the noun “search.” Those are a function of extreme brand penetration. What somewhat more troublesome for Google is generic usage by commercial actors such as the media. The New York Times ran a story this week about how more people are “Googling themselves.” (A pointless pastime with a name like David Randall–there may only be one of me but there are too many of us.) For at least the past couple of years Google has reminded users not to engage in this type of usage, and a well-placed cease and desist letter to The Times or other media outlet will help curb the practice. It may be counterintuitive given the ubiquity of Internet publication, but I think there is less danger of a mark passing into generic usage now than in times past. Companies are more keenly aware of the value of their brands, devote more resources to protecting them, and because of the Internet can track troublesome or infringing uses more readily and come down on malefactors like grim death. It’s the same problem brands like Xerox -one photocopies a document, one does not Xerox it–and Kleenex–as you were about to sneeze when was the last time you shouted “pass me a facial tissue!”–have faced. The key is to manage common usage so it never gets to the point where competitors use the erstwhile brand to describe their own products.
*A lifetime subscription to anyone who identifies the movie title echoed by this tagline.
A friend alerted me to this story: Timbuk2 announced plans this summer to make custom messenger bags by laminating recycled advertising material such as posters, billboards, and shopping bags. Timbuk2 advertised images of these Lamitron bags bearing the Target logo. Target responded with a cease-and-desist letter expressing “concern that [Timbuk2’s] use of [Target’s] famous Bullseye Design mark could give the impression that these bags originate from, or are somehow sponsored by, or are otherwise affiliated with Target . . . we request that you cease use of TBI’s Bullseye Design mark on your Lamitron bags.”
This dispute is the trademark law equivalent of a remix or mash-up of a copyrighted song and exists on the cusp between traditional trademark law and 21st century marketing. The lawyer in me understands why Target sent the cease-and-desist letter. Trademark law places the onus of trademark protection on the mark’s owner, who must guard against unauthorized use of the mark, whether infringing (likely to cause confusion about the source of a product) or dilutive (weakening the identity of the mark in ways that are not infringing). To a lawyer this is a classic slippery-slope problem. It Target lets Timbuk2’s use go unchallenged then the next unauthorized use becomes harder to challenge and, at some point, the Bullseye Design loses its association with Target and becomes another piece of worthless iconic flotsam on the sea of advertising images.
Idea City, a marketing and advertising blog, argues the other side: “Shame on you, Target. This is a new era . . . Timbuk2 may be another “company” rather than a “customer”, but what they offer you is a way to keep the Target brand relevant, fresh, and at the cutting edge of fashion and design. Why in the world would you ask Timbuk2 to remove your logo from their bags?” The lawyer’s retort is “because (1) Target, not you, gets to decide how to keep its brand relevant and fresh, (2) unauthorized use of the Bullseye Design will weaken its relevance and freshness, a result that does not harm you but harms Target deeply, and (3) allowing your use would be the first big push down the slippery slope.”
Trademark law shapes the environment in which the parties confront this issue, but its concerns are not the only ones. Creativity builds on the creations of others. Danger Mouse remixes The Beatles’ White Album and Jay-Z’s Black Album to create the Gray Album. Tom Stoppard takes two minor characters from Hamlet to create Rosencranz and Guildenstern Are Dead. Alice Randall reimagines Margaret Mitchell’s Gone With the Wind through the eyes of a slave in The Wind Done Gone. Timbuk2 takes found advertising images and places them in a different context by incorporating them into its Lamitron bags. Is Timbuk2 picking stuff at random from the cultural stream and giving it new meaning, or trading on the value of Target’s property? We know what the lawyers say and what the creative types say. Is there satisfactory middle ground?
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