To Google something has come to mean looking it up online. As the saying goes, “Google is a verb.” However, that usage hasn’t yet become common or “generic” enough to justify stripping the company name of its trademark protection.
That finding was recently made by a federal court in Arizona (see opinion below). The court ruled in Google’s favor on a motion for summary judgment to end the case. The losing parties were two individuals who had registered more than 750 domains containing the word “Google,” such as “googledisney.com,” “googlebarackobama.net” and so on.
Google discovered this and sought transfer of the domains under the Uniform Domain Name Dispute Resolution Policy. Plaintiffs lost in arbitration and Google’s transfer request was grated. The plaintiffs responded by suing in federal court and arguing that the Google trademark had become “generic” and that the company was no longer entitled to trademark protection for its name.
Plaintiffs claimed that “Google” was now a verb and used broadly to refer to any search activity not just that occurring on Google itself. The Arizona federal district court disagreed. Here’s a relevant excerpt from the court’s opinion:
It is [ ] contrary to both the letter and spirit of trademark law to strip a mark of legal protection solely because the mark—cultivated by diligent marketing, enforcement, and quality control—has become so strong and widespread that the public adopts the mark to describe that act of using the class of products or services to which the mark belongs. As one scholar has stated, “top-of-mind use of a trademark in its verb form, far from indicating the mark’s generic status, may well indicate the enduring fame of the brand.”
One of the functions of trademark law is to prevent consumer confusion. The Arizona court found that allowing plaintiffs to use “GoogleXYZ.com” would have contributed to consumer confusion.
However, if consumers are commonly using a term to refer to a product category instead of a single brand (e.g., Aspirin), it’s very likely that there will be a loss of protection. There are steps companies can take to prevent this from happening.
Below are some examples of trademarked terms that are now “generic” and have lost protection (or are in danger) because they became common names for the category:
App (Apple trademark that has been cancelled) and App Store (successfully used by Amazon)
Aspirin (still a Bayer trademark in many countries outside the US)
Cellophane (still a Dupont trademark outside the US)
Escalator (originally an Otis Elevator trademark)
Thermos (a former trademark of German company Thermos GmbH)
Kleenex (still technically a trademarked brand term but used as a generic by the public)
Scotch Tape (still a protected term in the US but used as a generic term by consumers)
Photoshop (still a trademark but in danger of eventually becoming generic)
Google has been very diligent about trying to prevent its brand from becoming a category-wide product name for search. Its action against the plaintiffs in this case is part of that larger effort to prevent its name from becoming “generic.”
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