To Google or Not to Google

As we all learned by watching Schoolhouse Rock, a noun is a person, place, or thing.  As the brand name of a leading search engine, the word “Google” is clearly a noun, and is a legally protectable trademark.   At least, that’s the way it started out.  Over the past few years, however, that noun morphed into a verb.  Check out the following definition, courtesy of dictionary.com:

Google: verb (used with object):  to search the Internet for information about (a person, topic, etc.): “We googled the new applicant to check her background.”

This isn’t the first time such a linguistic mutation has occurred.  After all, nouns become verbs all the time, and no one seems to mind.  The case is different when it happens to trademarks.   Asprin, Thermos, Yo-Yo, Escalator, and Zipper are all examples of trademarks of successful products that over the course of years become so associated with the type of products they represent that their names became generic, and so lost their trademarked status.  At the tender age of 13, Google may very well have reached that dubious landmark.

In a federal lawsuit filed in Arizona, Plaintiff David Elliott argues that the term “Google” has become so associated with Internet searching that it is not entitled to legal protection.   By way of background, Google recently won a case against Mr. Elliott that compels him  to transfer to Google hundreds of Web site domain names he had registered that included the trademarked term “Google”, such as “googledonaldtrump.com.”

In his complaint, Mr. Elliott states that origin of the term “Google” is the word “Googol,” a mathematical term for 1 followed by 100 zeros. and argues that since the search engine company adopted the term “Google,” it “has become a world-wide generic term for internet searching.”  The plaintiff illustrated his argument by pointing to the Collins English Dictionary, dictionary.com, and Wikipedia, all of which recognize “Google” as a transitive verb, and also pointed out that the American Dialect Society voted “Google” as the word of the decade, and in so doing identified its meaning as “to search the Internet.”

The plaintiff complains that Google is attempting to exercise exclusive rights and control over the “generic” verb “Google” via its registered trademark. In so doing, the company allegedly seeks to become the “de facto regulator” for uses of the term “Google” for its own monetary benefit.  Mr. Elliott seeks cancellation of the company’s federal trademarks relating to the term “Google.” This way Mr. Elliott (and perhaps others) could freely use “Google” as a generic term without legal protection.

Regardless of how the case evolves, it serves as a powerful illustration of the potential cost of phenomenal success.



Author: Seth Heyman
Seth D. Heyman is a California attorney with extensive experience in advertising and marketing law, corporate law, contracts, governmental regulations, international business, and Internet law. He has counseled numerous successful companies, both public and private, and was responsible for regulatory compliance, contract management, corporate governance, and HR best practices for multiple organizations in many diverse industries, including marketing, telecommunications, energy, and technology development. He offers insight and guidance on federal and state direct mail, TV, radio, telemarketing, and Internet marketing laws, as well as online promotions, Internet privacy, data protection regulations, and similar matters.

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