Google – Generic or not?
Be honest now, how often do you say “I’ll google it” instead of ”I’ll search for it on the internet”? And do you refer to specific use of Google’s search engine or just any search engine?
Unfortunately for Google Inc., the usage of “google” as a verb might get them to lose the rights to their trademark protected name and join the long list of other well-known brands that became too generic.
The dispute started in 2012 when Google filed a complaint and won against Chris Gillespie under the Uniform Domain Name Dispute Resolution Policy. Gillespie had registered 763 domain names that consisted of “google” paired with other words, phrases and names such as “Disney”, “BarackObama” and “DonaldTrump”.
Gillespie was not ready to give up the fight and joined David Elliott on a petition to invalidate the google trademark, claiming that it had become synonymous with “search”.
The lawsuit was rejected by the 9th U.S. Circuit Court of Appeals, based on the grounds that Google is more than just a search engine. The Court stated that trademark loss can only occur if the word has become so exclusive to a single meaning that competitors cannot compete without also using that word.
Still not pleased with the outcome, Gillespie and Elliott petitioned to the US Supreme Court, stating, “There is no single word other than google that conveys the action of searching the Internet using any search engine”.
The Court has not yet come to a final decision and it might take a few more months before we know if they will move forward with the appeal or not.
No matter how well put together your trademark portfolio might be, a company can never take the rights to their brand name for granted. Disputes can be avoided with proactive measures, yet obstacles can potentially arise at any time.
Do you want to know more about trademarks, need advice on how to apply or assistance with protecting the trademarks you already own? Contact Otmore