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Since Google.com’s inception in 1998, the search engine has quickly grown to become a part of the everyday vernacular.  A few years ago, both the Merriam-Webster and the Oxford English dictionaries added the term “google” to their official list of English words, as it had become clear that the world-famous brand name was more than just your garden variety “fanciful” trademark.  “Google” is widely used today as a verb, sometimes referring to use of the search engine itself — “Heyo, I googled that guy we met last night…Bad news…” — and other times simply a slang replacement for “to search for” — “I’ve googled all over the house for my shoes and can’t find them anywhere…” This use of “google” with a lowercase “g” has manifested a heap of issues for the company’s lawyers, as its induction into the realm of “generic” terms threatens to loosen their grip on the beloved trademark.

William Fisher’s “Overview of Trademark Law,” explains that “[a] word will be considered generic when, in the minds of a substantial majority of the public, the word denotes a broad genus or type of product and not a specific source or manufacturer.”  It is a phenomenon some have called “genericide,” whereby a trademarked term is legally demoted from “trademark” status.  Genericide has taken the corporate soul out of many former trademarks, most of which we don’t even recognize today as brand names: xerox, thermos, kleenex, rollerblade, band-aid, among countless others.

Many of these companies have taken action to prevent the demise of their trademarks, but to no avail.  An article from the LA Times points out that the lyrics of one of the most famous commercial jingles, the one created by Johnson & Johnson for their brand of sticky bandages known as “Band-Aids” — “I am stuck on Band-Aid brand ’cause Band-Aid’s stuck on me” — includes the word “brand” not just because it’s cute when little kids try to pronounce it: it was also a desperate effort to emphasize that “Band-Aid” is, in fact, a brand.  The same article points out that Xerox Corp. embarked on a similar campaign to reduce the frequency of their trademark “xerox” as used to refer to the act of photocopying.  Google, aware that it might soon fall into the same boat as the others, has begun shooting off C&D letters to websites like WordSpy who appear to be perpetuating Google’s non-brand-specific usage.  Here’s a screenshot of WordSpy’s official definition of the term:

Noteworthy is that this definition, unlike those located in the OED or Merriam-Webster, pushes the generic usage, adding the phrase “particularly by using the Google search engine” as a kind of afterthought.  Originally, no mention of Google (with a capital “G”) existed, until Google’s C&D letter requested that WordSpy remove or modify their definition “to make sure that when people use ‘Google,’ they are referring to the services our company provides and not to Internet searching in general.”  A special note now follows the WordSpy definition: “Note that Google™ is a trademark identifying the search technology and services of Google Technologies Inc.”  Despite their shout-out to the Google trademark, however, the site goes on to offer citations “illustrating the more general sense of the verb.”  What is more, WordSpy includes a slew of other new terms that have been inspired by “google as a verb.”  Some noteables:

“fridge Googling” – pp. Running an Internet search based on some or all of the contents of one’s fridge, looking for a recipe based on those contents.
—fridge Google v.

“googleability” - (goo.gul.uh.BIL.uh.tee) n. The ease with which information about a person can be found on an Internet search engine, particularly Google.  Also: Googleability, googlability, google-ability.
—googleable adj.

“googleverse” – n. 1. The products, services, and technologies belonging to or associated with Google Inc.  2. Web pages, newsgroups, images, and other content indexed by the Google search engine. [Blend of Google and universe]

and my personal favorite,

“googlejuice” – (GOO.gul.joos) n. The presumed quality inherent in a Web site that enables it to appear at or near the top of search engine results, particularly those of the Google search engine. Also: Google-juice, Google juice.

As with the definition of “google” itself, all of the above terms subtly push for genericness, clearly preferring to use the more general phrase “Internet search engine.”  Unfortunately for Google, in the face of this seemingly viral usage of its brand name in everyday speech, its lawyers really have no legal recourse.  Genericide is simply a social phenomenon with legal implications, manifested by a world where widespread communication leads to widespread notoriety.  I suppose today’s internet companies, if they wish to keep hold of their trademarks, ought to be careful what they wish for before dumping millions of dollars into becoming “a household name.”  Google must now struggle under the weight of its own astonishing popularity, or risk witnessing the end of legal protection for one of the world’s most recognizable trademarks.  One might argue that Facebook and Wikipedia are on the same course, though the terms so far have managed to refer only to their websites.  Still, the risk is in sight.  How many times have you said, “Dude, I got NO work done last night.  I couldn’t stop Facebooking,” or, “Seriously, Wikipedia that s***.”  The era of internet verbification has begun.  As a kind of ironic harbinger, Wikipedia itself even features a page devoted to the use of “google as a verb.”  I won’t link you, though.  Just google it.

In the first case, a French court “ruled that Google must refrain from using the trademarks of European resort chain Le Meridien Hotels and Resorts to trigger keyword ads.” The decided that Google was infringing on Le Meredien’s trademark by allowing its rivals to bid on the keywords “Le Meridien” for search results. In another case, “Louis Vuitton previously won a lawsuit… after [Google] allowed retailers selling fake LB wares to buy keywords like ‘Louis Vuitton replicas’ and ‘Louis Vuitton fakes.’”

The Internet has opened up unprecedented new business methods in many areas, but specifically in advertising. One of the primary benefits of online advertising is the ability to target advertisements to users based on specific characteristics. In general, this could be the user’s location or browser history. However, specifically for search engines, they can target advertisements next to the search results based on the search query. Google is famous amongst consumers for its products, such as Gmail or Google search or Google Earth, but its $116 billion market capitalization is based on its incredible ability to effectively operate its profitable advertising system. Through the aforementioned decisions, the French have shown that they are trying to apply outmoded regulatory models to the online world and that these models just aren’t translating well.

The purpose of trademarks is to avoid consumer confusion: use of a trademark “constitutes infringement if it is likely to cause consumer confusion as to the source of those goods or as to the sponsorship or approval of such goods.” If the advertisement used a trademark phrase, that would be trademark infringement. But if a knockoff manufacturer wants to show an advertisement when “Louis Vuitton” is search for, how is that possibly infringement? If I want to buy up all of the inventory for the keyword “Yale” with advertisements for another institution of higher learning 150 miles to the northeast, would that be trademark infringement (if I didn’t use its trademarked name)?

The problem is that courts and governments in general have the ability to restrict innovation without really understanding it. These cases remind me of when Senator Ted Stevens received an iPod as a gift from his daughter and changed his mind about legislation in front of him as chairman of the Senate Commerce Committee. If the French courts had advertised on Google, or at least were more Internet savvy, would they understand how their rulings were so out of touch with online advertising and modern technology? One would think that courts and government agencies like the USPTO would be able to turn to expert analysts, but maybe they aren’t doing so enough or effectively.

To be fair, it’s not just the French. I should really amend my first sentence to say that I feel sorry for governments around the world, but through a series of boneheaded decisions the French have led the charge in proving just how far governments are in over their heads. We’re seeing the same signals that we’ve seen before with other areas of intellectual property such as patents: the old ways of regulation don’t translate well to the online world. Is it reasonable to expect governments to become experts in all areas of technology? Maybe not, but if they’re going to continue to hold such power over progress, we should continue to seek solutions.