Has google become a generic trademark?

A trademark is a mark used to designate the source of goods. It is intended to help consumers choose products from manufacturers they like without confusion. A company that owns a trademark must be careful to ensure that consumers the company’s trademark with products produced by the company and that the trademark does not become a generic term for the product. A trademark is considered generic when it no longer identifies the source of a product but rather the trademark is considered a synonym for the product. A company that produces a very popular product risks losing the trademark if the company does not diligently enforce its trademark rights.

Google’s internet search engine is an example of a popular product which is in danger of becoming generic. Google must diligently police the use of its trademark or risk losing the trademark.

Take for example a case involving the trademark for Google, which was recently appealed to the Supreme Court of the United States.

Between February 29, 2012, and March 10, 2012, Chris Gillespie used a domain name registrar to acquire 763 domain names that included the word “google.” Each of these domain names paired the word “google” with some other term identifying a specific brand, person, or product—for example, “googledisney.com,” “googlebarackobama. net,” and “googlenewtvs.com.”

Google requested arbitration and argued that the domain names violated the Uniform Domain Name Dispute Resolution Policy, and amounted to domain name infringement, also known as “cybersquatting.” Google won the arbitration and the domain names were transferred to Google on May 10, 2012.

David Elliot and Chris Gillespie then attempted to get the trademark Google canceled by filing a lawsuit in Arizona District Court. The Lanham Act allows cancellation of a registered trademark if it is primarily understood as a generic name for goods or services. Elliott petitioned for cancellation on the ground that the word “google” is primarily understood as a generic term universally used to describe the act of internet searching. Elliott requested that the trademark for Google be canceled because, he claimed, it is an indisputable fact that a majority of the relevant public uses the word google as a verb (for example by saying “I googled it”) and the use of the term google as a verb use constitutes generic use as a matter of law. Google maintained using a trademark as a verb does not automatically constitute generic use, and that Elliott failed to present enough evidence to support the claim that the relevant public primarily understands the word “google” as a generic name for internet search engines.

The district court sided with Google, and Elliot appealed that ruling. United States Court of Appeals, Ninth Circuit affirmed the district court’s ruling, and Elliot appealed that ruling. The United States Supreme Court refused to hear Elliot’s appeal which means that the lower court’s rulings are upheld. Google gets to keep its trademark.

Google successfully prevented its trademark from being canceled because the person that wanted to cancel the trademark could not produce enough evidence that google had become a generic verb which means to search the internet.

If you have questions about how to protect your trademark and how to prevent your trademark from being considered generic it is best to consult with an experienced trademark attorney.

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