When Washington Post reported that "Google" had entered the
Merriam-Webster Collegiate Dictionary, it observed that the word
has become a descriptor for its sector. Google wrote that it must
avoid "genericide" and provided a list of appropriate and
inappropriate uses of its name.
Among its examples was this appropriate use: "I ran a Google
search to check out that guy from the party"; and this
inappropriate use: "I googled that hottie"
Google no doubt hoped that a light-hearted example would avoid
the company sounding oppressive. It has to send letters like this;
but its lawyers know that it has only limited powers to dictate how
the brand is used. So the letters are seeking support, not
threatening litigation.
The risk for Google is that it ceases to become a brand
altogether. If it becomes generic, the brand can be struck from the
register of trade marks, leaving the owner without rights. This has
happened before: escalator, aspirin, pogo, gramophone and linoleum
were once registered trade marks that became victims of
genericide.
More recently, in 2002, Austria's supreme court ruled that Sony
does not have exclusive rights to the Walkman name for personal
stereos and allowed a wholesaler to label rival players as
Walkmans. In 2004, Australia's trade mark office has dismissed
'Linux' as too generic to protect.
Google is not alone in writing to media outlets: Band-Aid,
Kleenex, Hoover, Perspex, Portakabin, Xerox, Frisbee and Jacuzzi
are all still registered trade marks that battle against
genericide.
We received a letter from Adobe in 2003 after using the word
'photoshopping' in an OUT-LAW story about image manipulation. Adobe
would have preferred us to refer to 'Photoshop graphics software'.
As Adobe pointed out in its reasonable letter, publishers help to
establish the popular vocabulary. It has to do what it can to
prevent its marks falling into common generic use.
Brand owners can use the '®' symbol with their marks to show the
brand is registered; and they can write to dictionaries and
newspapers. Sometimes they advertise. Since the 1970s, Xerox has
conveyed its brand guidelines through adverts in industry
publications: "If you use 'Xerox' the way you use 'zipper', our
trademark could be left wide open," reads one ad.
Merriam-Webster defines Google thus: "Google, trademark
for a search engine: to use the Google search
engine to obtain information about (as a person) on the World Wide
Web"
Note the trade mark reference. In contrast, the Concise Oxford
English Dictionary has defined “Walkman” as a noun, without
reference to Sony. Getting your brand into everyone's vocabulary
might seem like the ultimate accolade, but it is dangerous. RIM
must diligently protect 'BlackBerry'; Sony must protect
'PlayStation'; Apple must protect 'iPod'.
Genericide is a risk for many, but as long as Google continues
to monitor and chastise brand misuse and abuse, it can be confident
of its courtroom prospects should a rival search engine one day
dare to promote 'googling'.
By Struan
Robertson, Editor of OUT-LAW. These are the personal views of
the author and do not necessarily represent the views of Pinsent
Masons.
Pinsent Masons offers various brand protection services. For
more information, get in touch with one of our contacts.
