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Stachler Harmon Attorneys at Law July 7, 2017

Few words can match “Google” in terms of prominence in the public venue. When it comes to internet searches, the term is truly the parlance of our times. So much so, that it runs the risk of succumbing to “genericide.”

The seeds of genericide are planted when the public appropriates a trademark and uses it as a generic name for similar goods or services, regardless of their source.

Think Kleenex or Jell-O.

It can also lead to the cancellation of a trademark, ironically over their overwhelming popularity and prominence. Failure to police the mark that leads to widespread usage by competitors can lead to a public perception of “genericness” and loss of the trademark.

Think aspirin or thermos, trademarks once protected but lost in judicial decisions.

The Google trademark dispute started in early 2012. Chris Gillespie and Dave Elliot registered 763 domain names coupling “google” with another term identifying a specific brand, person or product.

Google filed a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP), arguing that the two registered those names in bad faith and committed cybersquatting. The arbitrator agreed and transferred the domain names to Google.

After filing another action in the Arizona District Court where a judge granted summary judgment in Google’s favor, Gillespie and Elliot appealed before the Ninth Circuit Court. Justices rejected the petition and affirmed the district court’s decision.

The outcome hinged on plaintiff’s claiming that “google” had become a verb synonymous with “search the internet. The court held that the public using “google” as a verb is a generic application of general interest searches that may include Google. Simply put, the possibility of googling using Google as the source of the search protects the trademark.

Google and other famous brand owners benefit from the Ninth Circuit's decision. While verb use does not equal trademark genericide, brands still need to work to protect themselves against the accusation by opposing trademark misuse and educating the public to ensure proper usage.