Law Review: Google trademark generic; no longer protected?
June 2, 2017
Has the trademark GOOGLE or GOOGLING gone the way of ASPIRIN, CELLOPHANE and THERMOS, a "victim of genericide" and no longer protectable under trademark laws?
Our protagonist, Chris Gillespie, used a domain name registrar to acquire 763 domain names that included the word "google," such as "googledisney.com," "googlebarackobama.net," and "googlenewtvs.com."
Google did what I would do if someone attempted to acquire 763 domain names of "Little Jimmy Porter," "Llewellyn Porter," "James the Lesser Porter" and " JLP Jr." Google filed a complaint — claiming a bad faith violation of the Uniform Domain Name Dispute Resolution Policy — as confusingly similar to the GOOGLE trademark. The National Arbitration Forum agreed with Google and transferred the domain names back to Google.
Our man Gillespie then petitioned for cancellation of the word "google" because it is understood as "a generic term universally used to describe the act of internet searching." On the google is now a "generic-name" argument, the federal trial court ruled for Google. Gillespie appealed.
Victim of Genericide
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The Court of Appeals wrote that over time, the holder of a valid trademark may become a victim of "genericide." For example, ASPIRIN, CELLOPHANE and THERMOS were once protectable as arbitrary or fanciful marks because they were primarily understood as identifying the source of certain goods. The public appropriated those marks over time and ultimately understands aspirin, cellphone and thermos as generic names for those same goods. The original holders of those trademarks are victims of genericide. I always thought KLEENEX was likewise a victim but, according to a footnote in this case, not so.
The question in any case alleging genericide is whether a trademark has taken the "fateful step" along the path to genericness. The mere fact that the public sometimes uses a trademark as a name for a unique product does not immediately render the mark generic. Instead, a trademark only becomes generic when the "primary significance of the registered mark to the relevant public" is the name of a particular type of good or service irrespective of its source.
The courts use the "who-are-you/what-are-you" test. If the public primarily understands a mark is now the product and not the producer, the trademark becomes generic and is lost. Genericided.
Google's Teflon Survey
Google conducted what it called a Teflon survey regarding brand names. Most respondents classified "Google," "Coke," "Jello," "Amazon," and "Yahoo!" as brand names and classified "Refrigerator," "Margarine," "Browser," and "Website" as common names.
Has "Google" Become a Generic Name?
The question in our Google case became whether the work "google" has become a generic name for "the act" of searching the internet, especially because of the broad use of the verb "googling" or "google."
The Court of Appeals analogized an earlier survey where customers order "a coke" in an indiscriminate sense with no particular cola beverage in mind, yet that alone did not deprive "Coca-Cola" of its trademark.
Gillespie's consultant conducted his own survey asking 251 individuals: "If you were going to ask a friend to search for something on the Internet, what word or phrase would you use to tell him/her what you want him/her to do?" Over half of the 251 people answered "google."
Again the Court of Appeals concluded that using "google" as a verb alone does not automatically constitute generic use.
As you would expect, GOOGLE gets to keep its name. If you don't believe me, google Elliott v. Google, Inc.
Jim Porter is an attorney with Porter Simon licensed in California and Nevada, with offices in Truckee and Tahoe City, California, and Reno, Nevada. His practice areas include: real estate, development, construction, business, HOA's, contracts, personal injury, accidents, mediation and other transactional matters. He may be reached at email@example.com or http://www.portersimon.com.
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