Mamas Don’t Let Your Babies Grow Up To Be Trial Lawyers

If you are among the dozens of my students considering law school, and if your knowledge of the legal profession comes from Law and Order and John Grisham novels, and if you imagine you’ll be a trial lawyer because that’s the only type of lawyer you know, and if you picture yourself locked in a daily courtroom struggle with fiendishly smart opposing counsel, irascible judges, shifty witnesses, and a quixotic search for truth, then don’t read this deposition excerpt published on Cleveland.com.  Otherwise, if you want a peek into the heart of civil litigation,* read on.

*with a bonus lesson on generic usage of trademarks

Google Goes Generic?*

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.

Google Goes Generic?

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