Google Loses a Trademark Case in France

Back in 2004, Louis Vuitton sued Google in France for improperly using its trademarks in advertising.

Recently, Google has lost its appeal in the case. The lawsuit claimed that Google's use of "Louis Vuitton" in its AdWords program (in which companies bid on keyword advertising on various websites) resulted in "trademark counterfeiting, unfair competition and misleading advertising."

Louis Vuitton applauded the ruling (of course). "It was absolutely unthinkable that a company like Google be authorized, in the scope of its advertising business, to sell the Louis Vuitton trademark to third parties, specifically to Web sites selling counterfeits," a company representative said in a statement. (Personally, I'm having a hard time substantiating Louis Vuitton's claim that Google WAS sending consumers to counterfeit goods. Any article talking about the suit seems to only say that was a fear of Louis Vuitton.)

Louis Vuitton should be glad they sued in a French court. Why? Google recently won a smiliar lawsuit in the U.S. brought by Geico.

Either way, Google seems to not care much, especially since their AdWords policies have changed to remove trademarks from the AdWords program.

This case brings us to a topic in American trademark law that can be overlooked. It's called "nominative (fair) use." There are times when it is permissible to use another mark. The purpose of the nominative fair use defense is to allow a third party fairly to describe another's product. If someone types "Louis Vuitton" into Google, shouldn't advertisers selling Louis Vuitton bags be shown, even if they are paid advertisements? How else can "Louis Vuitton" bags be described? "Overpriced fabric boxes that hold clothing that will be damaged on the flight to the vacation"?

You can't google it. You also can't xerox a xerox. Still.

Do you remember the ad campaign that said "You can't Xerox a Xerox on a Xerox?" You can briefly hear me talk about this (warning: link to MP3 file) on The Rollye James Show a few months ago.

Google is now beginning to take steps to protect its trademark. Google has been sending letters to media organizations to state that its trademark is not a verb. So, someone cannot say "Google it for me" or "I googled it and here's what I found."

Those of us who are fans of sports commentator and new (reluctant) Monday Night Football announcer Tony Kornheiser used to hear him say to use "The Google Key" in searching for something on the Internet. My friend Vicki jokes that she gets help from "Professor Google" in searching. Both of those are good uses of the word "Google" to search the Internet.

Why?

In trademark law, the trademark must NOT be a generic word. You cannot register "ball" as a trademark for a ball. It's generic. There is no Beer-brand beer. Even to your eyes and ears, it is somewhat silly to say that. If a trademark turns into a generic word, then the owner loses all rights.

(And now, a boring legal citation on the topic. A mark is deemed to be abandoned when "any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark." This is USC Section 1127.)

Turning "Google" into a verb meaning "to search the Internet" which Merriam-Webster has accepted into the language means that there is no longer a unique link between the trademark and the services provided. That is why marks are registered in the first place. A company wants to protect not only the names it has chosen, but also the quality of the product. A generic word strips that connection that ordinarily would not be there.

And don't forget, you may make a photocopy of your document on your Xerox-brand copier.