You don’t always ‘Google It’

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The word “google” is no more a brand name. It’s become quite popular as a synonym for search or look for information. Maggi, Xerox, and Aspirin have struggled with the problem of genericide. Will Google walk the same talk or will it battle it out? It was …(Featured image source is for representational purpose alone and has been sourced from https://www.flickr.com/photos/121483302@N02/14253849274

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The word “google” is no more a brand name. It’s become quite popular as a synonym for search or look for information. Maggi, Xerox, and Aspirin have struggled with the problem of genericide. Will Google walk the same talk or will it battle it out?

Featured image source: https://commons.wikimedia.org/wiki/File:We_miss_you,_Maggi!!.jpg

 

You may like reading about Maggi’s genericide story here >>

 

It was only recently that the search giant was subjected to a trademark lawsuit in the US [David Elliott & Chris Gillespie (Plaintiffs-Appellants) v. Google Inc. (No. 15-15809 D.C. No. 2:12-cv-01072- SMM)]. One of the plaintiffs, Chris Gillespie, acquired 763 domain names while combining the word “Google” with other terms.  The suit claimed that Google can no longer claim any exclusive rights over the mark ‘Google’ per se since this term is now used in common parlance and has become synonymous with searching the internet. Here’s what happened:

The lawsuit was initially filed by David Elliot who was later supported by Chris Gillespie. This was in response to Google enforcing its trademark rights against domain names that Gillespie had registered with the word “Google” in them. Gillespie had registered 763 domain names which contained the word Google. A few examples of such domain names are googledisney.com, googlebarackobama.net, and googlenewtvs.com. When Google learnt of this, it impelled Gillespie to surrender these domains. After arbitration proceedings, these domain names were transferred to Google. Thereafter, Eliot filed a lawsuit in the Arizona District Court seeking cancellation of registration of the trademark ‘Google’ claiming that the mark has become generic. Gillespie decided to join the suit filed by Elliot and brought the matter to court claiming that Google’s trademark and namesake had fallen victim to ‘genericide’. The argument implied that Google’s trademark had lost distinctive value and was now used as a synonym for internet searching by the general public. When the appeal was denied at the district level, Elliot-Gillespie decided to elevate it to the US Court of Appeals for the Ninth Circuit.

Before we dig deeper into the issue let’s try to get a hold of what ‘genericide’ of a trademark actually is

In this case, the first point of discontinuance is inapplicable since Google has been using its trademark profusely. Hence, the next point of discussion is if the mark “Google” has become generic.

Courts often define “generic” as “the genus of which the particular product or service is a species”. One of the key features of a trademark is distinctiveness i.e. a trademark defines the source of its underlying products or services and helps a consumer differentiate a particular product/service from those of others. However, unrestricted use of certain trademarks by public achieves a high level of dilution giving rise to a notion that such trademarks are not related to just one particular product, but to a pool of related products.

There are several examples wherein a trademark was used to such an extent that it eventually became generic. Some of them include:

  1. Cellophane: Cellophane is an invented trademark made from the combination of “cellulose” and “diaphane” (transparent). Even though the term Cellophane was trademarked in 1912 by Chemist Jacques E. Brandenberger, it is now a generic word in the USA and can be used by anyone to denote sticky paper like the plastic used for packaging.
  2. Escalator: Otis Elevator Co. trademarked the term in 1900 after buying it from inventor Charles Seeberger. “Escalator” became a generic term when the USPTO ruled that Otis itself used the term in a generic way in its own patents and advertisements.
  3. Aspirin: Aspirin is a pain relieving drug that contains acetylsalicylic acid. This trademark was registered in 1917 by German pharmaceutical firm Bayer. However, Bayer was forced to give up its rights to the Aspirin trademark in the Treaty of Versailles, in 1919 since the mark became too generic.
  4. Thermos: In the matter of King-Seeley Thermos Co v Aladdin (Ind, 1963) King-Seeley Thermos Co was found to have intentionally used “thermos” as a generic term to popularize the product.
  5. Linoleum: The trademark Linoleum was never trademarked by its inventor Frederick Walton when the mark was created in the year 1864. Pretty soon the mark fell prey to genericide and no one person can use this mark exclusively.

So now the question arises if Google can be considered in the same category as the marks mentioned above. When this same matter was at the United States Court of Appeals for the Ninth Circuit, the Court observed the below two points:

The entire opinion of the Ninth Circuit Court can be viewed here. An appeal was filed by Elliot and Chris at the Supreme Court. However, the Supreme Court declined on October 16, 2017, to review the petition thus putting a cap on the entire issue.

The US courts have come to a common understanding that a trademark will not be suggested generic because it is used by the public. The use of such marks should be with respect to an entire pool of some kind of goods or services. In addition to the above, it has to be proved infallibly that there is no substitute whatsoever to the trademark which is being claimed to be generic. Even though the above matter was adjudged in favor of Google, Corporate houses must tread carefully, as even the most popular of their trademarks may fall prey to genericide if not protected.

(Featured image source is for representational purpose alone and has been sourced from https://www.flickr.com/photos/121483302@N02/14253849274

Sarthak Sinha
Sarthak Sinha

Sarthak's job as a trademark lawyer incites him to follow up on the latest development in the trademarks domain. Being a fitness enthusiast he loves to kickstart his mornings with a refreshing jog.


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