Lisa Larrimore Ouellette,
The Google Shortcut to Trademark Law,
102 Cal. L. Rev. 351
Available at: http://scholarship.law.berkeley.edu/californialawreview/vol102/iss2/2
Trademark distinctiveness—the extent to which consumers view a mark as identifying a particular source—is the key factual issue in assessing whether a mark is protectable and what the scope of that protection should be. But distinctiveness is difficult to evaluate in practice: assessments of “inherent distinctiveness” are highly subjective, survey evidence is expensive and unreliable, and other measures of “acquired distinctiveness” such as advertising spending are poor proxies for consumer perceptions. But there is now a simpler way to determine whether consumers associate a word or phrase with a certain product: Google. Through a study of trademark cases and contemporaneous search results, I argue that Google can generally capture both prongs of the test for trademark distinctiveness: If a mark is strong—either inherently distinctive or commercially strong—then many top search results for that mark relate to the source it identifies. The extent to which results overlap between searches for two different marks can also be relevant for assessing the likelihood of confusion between those marks. In the cases where Google and the court disagree, I argue that Google more accurately reflects how consumers view a given mark. Courts have generally given online search results little weight in offline trademark disputes. But the key factual questions in these cases depend on the wisdom of the crowds, making Google’s “algorithmic authority” highly probative.