E-Commerce Law: The Genericide of Google

Lawyers at Google are probably not jumping for joy over news this week that the term "google" has been added to the latest edition of Merriam-Webster's Collegiate Dictionary.

Certainly, the word was added to the dictionary in recognition of the ubiquity of the Internet search giant and the adoption of the term as a verb by the consuming public. It is now commonplace to hear one’s acquaintances, and characters in television shows and movies, describe "googling" a person or thing.

Unfortunately, the public’s adoption of the term "google" as a verb may destroy the value of "Google" as a trademark. Trademarks serve as a designator of the source or sponsorship of goods or services. The greatest protection is afforded to trademarks which are highly distinctive and, therefore, highly effective at serving that purpose.

Though "Google" may have begun as a highly distinctive trademark, having been registered as a result of a misspelling of the word "googol" by the company’s founders, it may be losing its distinctiveness. As the United States Court of Appeals for the Fourth Circuit said in America Online, Inc. v. AT&T Corp., 243 F.3d 812 (2001):

"[E]ven when created words for new products have become strong marks, the public’s pervasive use of these marks sometimes creates a real risk that their distinctiveness will disappear, a process Professor [J. Thomas] McCarthy terms ‘genericide’ . . . ."

Earlier trademarks "Thermos," "Aspirin," "Cellophane," "Escalator," "FedEx," and "Xerox" have all succumbed to genericide and, if the new dictionary entry is any indication, "Google" may be following suit.

It appears that Merriam-Webster's Collegiate Dictionary has attempted to provide the "Google" trademark some protection by making the entry for "google" lowercase and defining the term as "to use the Google search engine" to find information on the Internet. If the public’s adoption of the term is truly limited to usage in the context of searches through the Google site, it may not represent the genericide of the trademark. The "Google" trademark would be most at risk where the term "google" was adopted as a generic verb for the act of searching using any Internet search engine (i.e. "I googled him at yahoo.com.").

We’ll only know for certain if a court is asked to opine as to the "Google" trademark but, as Professor Goldman suggested on his Technology & Marketing Law Blog, it certainly must be of some concern to Google.

Next week, we’ll post some ideas on how companies can preserve the trademark significance of their marks and avoid succumbing to genericide.

For more on the addition of the term "google" to the latest edition of Merriam-Webster's Collegiate Dictionary, see Brin, Page See 'Google' Take Its Place in Dictionary on forbes.com and 'Google,' 'Unibrow' Added to Dictionary and goo·gle (goo'-gul) on washingtonpost.com.