You are the Google of what...?

Try as we do, trademark law inevitably seems to lag behind the diversity of uses of a mark. The recurring issue is whether to expand the legal scope of marks to include uses that go beyond the source identification function and the protection of a well-known mark. While it is perhaps banal to observe that not every third-party use of a trademark is a violation, it is far from trivial to try and articulate the metes and bounds of such permissible uses.

Consider an article that appeared on July 5th in The New York Times. The piece discussed the entrepreneurial activities of Ms. Alexandra Van Houtte, who seeks to create the world’s first fashion search engine. Called Tagwalk, the article claims that “…by using more than 2,800 key words, users can search by brand, season, city, trend, color, fabric or style through 128,000 pictures.” With no subscription fee, there are meant to be four sources of income: a consulting service; a shopping component via sponsored links; inclusion of smaller design houses in the database by payment of a monthly fee; and selling fashion-related data analytics, including accelerated information on trends and preferences.

So far, it would seem, there is nothing notable, trademark-wise, regarding the Tagwalk platform as reported. But consider the headline of the article—“Tagwalk Wants to Be the Google of Fashion.” In effect, the Tagwalk mark is being used by reference to Google, rather than to any good or service. (The tagline in the article continues—“”You may not have heard of it, but this French start-up says it has created fashion’s first search engine.”). The article refers to the Le Figaro and Financial Times newspapers, both of which called Tagwalk "the Google of fashion".

So how do we understand this use of the word Google? (We disregard that it appeared in a newspaper headline and refer to the phrase itself separate from this particular context.) First, the obvious: the Google mark identifies a wildly successful search engine that enables a user to search for on-line contents and information. Used in connection with the search engine, the mark has become among the most-recognized words on the planet. The mark is a take-off the word “googol”, which means a number that is equal to 1 followed by 100 zeros. Use of the word “googol” was, and still is, limited to a narrow group of the quantitatively oriented. But when altered to the form Google and used in connection with the omnipresent search engine, recognition of the mark Google is immediate and wide-spread.

Under such a scenario, is there anything untoward, in a trademark sense, in referring to Tagwalk as the “Google of fashion?” A claim of fair use does not seem in place. In particular, there is no nominative fair use within the meaning of the term under U.S. law, because the Tagwalk search engine can be readily identified without using the Google mark (how about simply—“Tagwalk Wants to Be the Leading Search Engine for the Fashion Industry”).The fact is that Tagwalk is not the name of an automobile tyre nor fast-food restaurant, but of a search engine. And so, of course, is Google.

So what about a claim that the use suggests sponsorship or endorsement of Tagwalk by Google? It is recognized that in order to acquire functionality, Google acquires companies with existing trademarks. As such, could not the headline be understood as suggesting some connection between Tagwalk and Google in this vein? Or, to the contrary, perhaps Google does not want to be mentioned in the same breath with Tagwalk? Either way, a trademark connection between Google and Tagwalk might be suggested.

Trademarks are, fundamentally, a short-hand way to identify the source of goods or services. We use the mark “Disney”, rather than refer to “entertainment studios located in Burbank, California and reaching back to entertainment products such as Mickey Mouse”. Using Google as a trademark is also a form of communications shorthand. The question is, how far does it extend? The New York Times headline puts the question into bas relief.

By Neil Wilkof

Photo by Adrian 777 and is licensed under the terms of the Creative Commons Attribution-Share Alike 3.0 Unported license.