FW: Google trademark concerns

[Frank Abate]

Dear lexos and others:

Paul McFedries gives us (see below) a classic instance of what happens when
the growth of the language cuts across someone's proprietary interest.

Of course google is used as a verb.  And why not?  It only makes sense, it
is short, it is fun, it works.  And what the Google (TM) lawyer knows, but
does not say, is that the company he represents cannot do anything about its
use as a verb, legally.  They cannot sue, as one cannot claim proprietary
rights to a verb.  Jesse Sheidlower recently pointed this out to me;
apparently it is an explicit part of US law re trademarks.

So the lawyer is really merely trying to get Paul McF to do something that
he need not do, but hopes he will be scared into it by having received a
letter from a corporate attorney -- enough to get anyone's attention.  I'll
bet it was sent certified mail with a return receipt requested -- that
always impresses (and scares) people.

The bottom line on this is the following:

1. The English language has a verb, google.  It is new, but it is in
widespread use, and this can be documented.

2. It is perfectly right and legal for dictionaries to cover this new verb,
or any new usage for that matter.

3. The company Google apparently has a trademark interest in the use of the
term "Google" (whether capital or not), but legally, by statute, can only
protect that use as anything other than a verb.  So, if someone were to come
along and set up a similar service to what Google does and use the word
google on that service, then Google could sue to stop that.  They could
even, conceivably, get a cease-and-desist order from a judge to stop that
use instantly, during the waiting period for a trial on the matter.  This is
within their legal rights as trademark holder, assuming that they have filed
for a trademark for the exclusive use of the word commercially.

4. Paul McF -- or any lexicographer or dictionary publisher -- can and
should cover the language as they see fit.  They should not feel restricted
by trademark issues, as regards whether they report on actual, documentable
usage.  That sort of reporting is the same as what journalists do, and so,
in a sense, if not in actual, legal fact, is protected by the First
Amendment as a matter of free speech.  Reporting on usage is not a violation
of another's commercial interests, at least not unless the circumstances are
VERY unusual.

5. The best policy to follow in cases like this, as regards how a dictionary
should handle these sorts of things, is to report on the usage and have the
evidence ready to back up what the entry says.  If a term is a trademark
item or may be a trademark item, it is good practice to acknowledge this
explicitly in the entry, in a note or in the etymology.  Having done that,
the entry should report on the usage.

6. Finally, it is good practice to put a general note in the front matter of
a dictionary (or equivalent place for an e-dict) saying that the mention of
"trademark" (or similar words) in any of the entries does not affect the
actual legal status of the term, but is merely an acknowledgment that the
lexicographers have found in their research that there may be a trademark
(or similar) claim with regard to certain terms in the dictionary.

In short, Usage trumps Legality, in this instance, at least.

Frank Abate

************************


My Word Spy site includes an entry for "google" as a verb:

http://www.wordspy.com/words/google.asp

Earlier this evening I received the following note from a Google lawyer:

==============================
Dear Mr. McFedries:

I am trademark counsel for Google.  I have recently become aware of a
definition of "google" on your website, www.wordspy.com.   This definition
implies that "google" is a verb synonymous with "search."  Please note that
Google is a trademark of Google Technology Inc.   Our brand is very
important to us, and as I'm sure you'll understand, we want to make sure
that when people use "Google," they are referring to the services our
company provides and not to Internet searching in general.  I attach a copy
of a short, informative piece regarding the proper use of "Google" for your
reference.

We ask that you help us to protect our brand by deleting the definition of
"google" found at wordspy.com or revising it to take into account the
trademark status of Google.
==============================

I understand what's involved in trademark protection, but "google" is an
important new verb, so I certainly don't want to delete it from the site. I
also don't want any legal hassles. Is there a response I can send to this
lawyer that will allow me to keep this entry? What if I just acknowledge
that Google(tm) is a trademark of Google Technologies Inc.? Would that be
good enough?

When is a word deemed to have become generic? Search Lexis-Nexis for
"googled or googling or (google w/7 verb)" and you'll get nearly 400
citations. Surely this cat's out of the trademark bag.

Paul

P.S. I expect the ADS will soon receive a similar letter for selecting the
verb "google" as "Most useful" and runner-up for WOTY, and for having the
temerity to post this on the ADS Web site.