There have been several articles recently discussing the strong possibility that the term “Google” will make it into the 11th edition of the Merriam-Webster Collegiate Dictionary as a verb. In June 2006, the term “Google” appeared for the first time in a dictionary; the Oxford English Dictionary included the word in its web site dictionary. It is a common experience to walk down the street or walk into a room and hear someone state, “why don’t you Google this or that”? In many cases the person is not even referring to the search engine Google, but rather any search engine or web directory, such as MSN, Yahoo, or Ask. The use of the term seems to dilute the trademark that Google has federally registered and has been granted protection under the trademark laws. The Google trademark can be found on the United States Patent and Trademark Office’s web site at: http://tess2.uspto.gov/bin/showfield?f=doc&state=27f2e7.2.9. The use of the term infers that Google is the only search engine that matter any longer. This is certainly not true where MSN and Yahoo hold a combined 36% share in the market place.

The proposed definition of the term in Webster’s dictionary is: “to use the Google search engine to obtain information on the Internet”. Has the term “Google” become so commonly used in our everyday vernacular that it should appear in the dictionary. There is a potential legal issue at stake if such a word, which is protected as a word mark under trademark law, is allowed into the dictionary. There is a strong likelihood that the use of the term may cause a probable detrimental effect on the Google Inc’s trademark protection. If the term is accepted as a verb it could result in businesses using the word “Google” to market their own products, thus potentially diminishing the Google brand name.

Based on the trademark, Google is defined as a word mark for the as applied to the following goods and services: Telecommunication services; data transmission and reception services via telecommunication means; electronic exchange of voice, data, and graphics accessible via computer and telecommunication networks; providing multiple-user access to a global computer information network; internet cafe services, namely, providing telecommunications connections to the internet in a cafe environment; bulletin board and discussion group services; electronic mail services; workgroup communications services over computer networks; instant messaging services; voice over ip services; computer communication services; wireless communication services; mobile phone communication services. The first use of the term in commerce was on February 12th, 2001.

The legal significance of a trademark:

The reason that trademark protection is so important is to prevent others from using creative and distinct words, logos or slogans in the use of selling a product or service, which the creator has worked hard to attach an immediate connection in a consumer’s mind between the word mark and the company’s product. For all intense and purposes, this gives a monopoly to the trademark holder on the exclusive use of the word mark as it applies to the industry that is associated with the mark. In this case, there are hundreds if not thousands of search engines on the Internet, and many of these, such as Yahoo have similarly distinctive names, yet those names are not used in everyday speech. There is the chance that when someone hears the term “Google this product”, they will start to think of the suggestion as going to any search engine, and not associate the highly relevant search results that are associated with Google, but simply any search engine, regardless of popularity. Moreover, Google has national and even international recognition for its online service; any use of the term can diminish the power of that brand recognition.

This is a case their will very likely be some form of trademark dilution. Google may fall short of having a case for trademark infringement. However, Google’s may be able to bring an action for trademark dilution under either federal or state law. Under federal law, a dilution claim can be brought only if the mark is “famous.” In deciding whether a mark is famous, the courts will look to the following factors: (1) the degree of inherent or acquired distinctiveness; (2) the duration and extent of use; (3) the amount of advertising and publicity; (4) the geographic extent of the market; (5) the channels of trade; (6) the degree of recognition in trading areas; (7) any use of similar marks by third parties; (8) whether the mark is registered. 15 U.S.C. § 1125(c). Kodak, Exxon, and Xerox are all examples of famous marks. There can be no doubt that the term “Google is famous, for it were not famous than there would be no reason to add the term to the dictionary. It seems likely that Google would not want it’s brand, which it has worked so hard to build and maintain.

This article was written by Michael Goldstein, Esq. of the Law Office of  Goldstein and Clegg. Attorney Goldstein concentrates his practice on trademark, copyright and Internet Law GoldsteinandCleggLaw.com

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