Three Years On, Google’s Trademark Usage Letters Become News Again

How long does it take the wheel to spin full circle on the internet?
Apparently three years, judging from the outcry over Google’s "new" move to send
out trademark protection letters asking people to be careful about how they use
the word Google.

We mentioned
briefly
about the Washington Post getting one of these letters last week.
Since then, the Independent came out with its
To
google or not to google? It’s a legal question
article, stating:

But the California-based company is becoming concerned about trademark
violation. A spokesman confirmed that it had sent the letters. "We think it’s
important to make the distinction between using the word Google to describe
using Google to search the internet, and using the word Google to describe
searching the internet. It has some serious trademark issues."

Is becoming? Change that to "has long been concerned," and it’s accurate.
Let’s flashback to March 2003, and my
Google Acts To
Protect Trademark
from that time:

Now Google’s first publicized
action to protect its trademark from being transformed into a generic word has
occurred. The company sent what’s now become a

well-cited letter
to Word Spy editor Paul McFedries asking him to identify
Google as a trademark, after McFedries featured Google as a
word of the day on his
web site.

That letter to WordSpy produced the same type of discussion you now see
breaking out in the blogosphere. Big bad Google, beating up on the little guy.
Says
Steve Rubel, for one:

Beyond the sheer legal issues, one of the places where this of course gets
fuzzy is in the definition of "media." How in the world do they expect to
enforce this when every blogger under the sun uses the phrase on his/her own
sites? It’s part of the pop culture.

This has to go down as one of the worst PR moves in history. They’re
getting all this free publicity and it’s right on message. Google sounds like
a big arrogant company that has forgotten its roots. That’s too bad.

Reality check. Google’s doing what it has to do as a trademark holder. The
letters aren’t legal threats. They are advice, requests, guidance — which
authors can generally ignore. Google’s not expecting to "enforce" anything. It’s
acting to prove it has tried to protect its trademark from becoming a generic
term.

As for the letters being one of the "worst PR moves in history," wow. If
that’s the case, then it’s been a three-year long bad PR move that doesn’t seem
to have slowed down Google’s popularity (Doug Edwards over at Xooglers
talks
about
how the earlier furor on the letters passed back in 2003). Somehow, I
think things like heavily censoring Chinese search results pose a larger PR
problem than these letters for Google.

To underscore how long this has been going on, let’s return to the famed
WordSpy incident of 2003. WordSpy was sent this


letter
:

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.

WordSpy made note of Google as a trademark, and the situation was resolved.
What if they hadn’t have done that? Probably nothing. Since WordSpy wasn’t using
the word Google in a trademark sense (IE, trying to pass off a product or
service as if it was from Google), trademark issues didn’t apply to it.

The Washington Post mentioned it received not just a letter but usage
guidance including the eyebrow raising (for some) use of the word "hottie:"

Appropriate: He ego-surfs on the Google search engine to see if he’s listed
in the results.

Inappropriate: He googles himself.

Appropriate: I ran a Google search to check out that guy from the party.

Inappropriate: I googled that hottie.

WordSpy back in 2003 appears to have received this same guide. A
comment
at Google Morning Silicon Valley guided me to a New York Times
article
written in July of this year, where it cites Paul McFedries of WordSpy:

In his book "Word Spy," Paul McFedries writes that Google’s attorneys send
journalists who use google as a verb a stern letter that cites examples of
appropriate ("I used Google to check out that guy I met at the party") and
inappropriate ("I googled that hottie") uses.

So enough, please. Google hasn’t gone on some new rampage. In fact, they
reconfirmed for me they’ve been sending the same note since 2003. It’s also
something a large corporation has to do to protect their trademark, as Out-Law
describes here.

Advising about usage is a completely different thing than launching lawsuits
or sending actual cease-and-desist letters for making use of the word "pod" in a
name (as Apple is currently doing)
or putting "Mc" in front of things, as McDonalds
has done. In
fact, it’s worth noting that in the three years since Google has sent such
letters, it has never to my knowledge actually sued anyone for saying that
something was googled.

What about the fact that Google was recently added as a verb to two more
dictionaries, the Oxford English Dictionary (in
June
) and Merriam-Webster (in
July
). Shouldn’t Google be upset with them?

Google’s not, because neither definition defines Google as a generic term.
Here’s the Oxford one:

To use the Google search engine to find information on the Internet. trans.
To search for information about (a person or thing) using the Google search
engine.

Here’s Merriam-Webster:

To use the Google search engine to obtain information about (as a person)
on the World Wide Web

In both cases, the definitions are specifically about using Google itself to
do a search. That keeps Google happy, as Google told me:

When we were asked our view about being included, we said that because both
dictionaries were defining ‘Google’ as using the Google search engine, not
just searching generally on the internet, both were appropriate. We believe
that the note is consistent with the dictionary definitions.

I disagree with the last part, however. The "note" of advice isn’t consistent
with the definitions. Let’s go back to some of those inappropriate remarks:

Inappropriate: He googles himself.

Inappropriate: I googled that hottie.

They’re appropriate if you inherently understand or mean these were done on
Google — and I think many people would indeed assume that to be the case. So
maybe the guidance sheet needs some updating.

Overall, I think everyone knows that Google’s trademark police face an uphill
battle in having to send these types of letters out. But sadly, that’s what the
laws seems to require. I guess every three years, we can all get worked up into
a state over them, despite the fact that people will keep on saying google as
they please.

In the end, the letters will go out and the authors will continue to ignore
them and write whatever they want to, as is their right.

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