Is Google A Generic Name?

What do you think when you hear the name - Google? A search engine and the popular trademarked brand, right? Today, the name Google is also often used as a verb in regular conversation to describe the action of performing a search on the internet. The use of google as a verb can ultimately lead to the trademark becoming generic, particularly if people "googling" are not using the Google search engine. Since generic names cannot qualify as trademarks, does this use of the term Google snatch away its trademark rights?

As of now, the name Google is not a generic name, at least according to the recent US Ninth Circuit Court of Appeals Judgment. In a recent case of Elliot and Gillespie v. Google Inc., the name Google was challenged on the basis of genericide. And, the court ruled in favor of Google. Let us look at it in detail.

Describing Genericide

Genericide is one such thing that every trademark owner fears. Trademarks can suffer genericide over a period of time as they gain popularity. Genericide occurs when the trademark becomes synonymous with the product or service and is no longer associated with the source or the brand. When the public starts using the mark as a generic name for particular goods or services irrespective of its source, it is genericide.

Several popular trademarks like ASPIRIN, CELLOPHANE and ESCALATOR have suffered genericide. Although they started as unique product names, the public eventually started using it in a generic sense. For example, ESCALATOR was a trademark of Otis Elevator Company, but started being used as a name for a moving stairway irrespective of the source brand.

Since generic names do not qualify as trademarks, registrations can be cancelled and rights lost. Under Federal Law, anyone can petition to cancel a trademark registration if they can prove that the mark is now a common word for particular goods and services in the mind of the public. Something similar was faced by Google.

The Case of Elliot And Gillespie v. Google Inc.

The case of Elliot and Gillespie v. Google Inc. arose due to a domain name complaint by Google. Google enforced their trademark rights against Elliot and Gillespie because they had registered hundreds of domain names that included the trademark Google. Elliot and Gillespie fought back by petitioning to cancel the trademark registration for Google. This strategic step was done with the purpose of eliminating the base of Google’s complaint. They argued that a majority of the public uses the word Google as a verb that constitutes a generic use. Considering this, the Court put the name Google to a genericide test to identify whether or not the public still identifies the name with the source.

In spite of being used in a generic sense at times, if any word describes where the product comes from, it is still a valid trademark. Based on the test, the Court found that the public recognises different search engines and associates it with the respective sources. Also, Elliot had given no substitute to describe internet search engines apart from Google that could render the name generic. The court ruled in favour of Google, retaining it as a valid trademark.

Comparing this to the case of ASPIRIN, a registered trademark in Canada, where no efficient substitute was found but its registration was cancelled in the US. While Google survived the genericide challenge, there is no surety that every brand can. Since court judgments are highly unpredictable, it is best to work with a trademark attorney when enforcing rights or facing challenges.