• “I Googled it”: Generic Words and Trademark Rights
  • July 19, 2017 | Author: Richard Stobbe
  • Law Firm: Field Law - Calgary Office
  • A registered trademark can suffer "genericide" if it becomes so commonly used that it transforms from a unique brand name into a generic word which is synonymous with a product or service.

    In a very interesting decision from the US Ninth Circuit Court Court of Appeals in Elliott and Gillespie v. Google Inc., the trademark GOOGLE was challenged on the basis that it had become a word describing "searching on the internet" in a general sense, rather than a being distinctive of search services provided through the GOOGLE-brand search engine.

    "Genericide,” the U.S. court explained, “occurs when the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of its source. 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. But the public appropriated those marks and now primarily understands aspirin, cellophane, and thermos as generic names for those same goods."

    This case arose due to an underlying domain name complaint. Google asserted its trademark rights against Elliott and Gillespie based on their registration of hundreds of domain names that included the word “google” (for example, “googledisney.com,” “googlebarackobama. net,” and “googlenewtvs.com.”) As part of their defense, Elliott and Gillespie petitioned to cancel the trademark registrations for GOOGLE, which would in turn eliminate the basis for Google's domain name complaint.

    Elliott and Gillespie argued the "indisputable fact that a majority of the relevant public uses the word 'google' as a verb—i.e., by saying 'I googled it,' and ... verb use constitutes generic use."

    The court reviewed the history of genericide under trademark law and applied a test of whether the relevant public understands a mark as describing where a product comes from, or what a product is. Put another way, if a word still describes where the product comes from, then the term is still valid as a trademark. But if consuming public understands the word to have become the product itself (as opposed to the producer of the product) then the mark slips into genericness. Escalator is another example. It became synonymous with a moving staircase product, rather than distinctive of the Otis Elevator Company as the producer of that product.

    In Google's case, the court asserted that verb use (the use of the mark as a verb instead of an adjective) does not automatically result in a finding of genericness. The court also noted that a claim of genericide must relate to a particular type of product or service. "In order to show that there is no efficient alternative for the word “google” as a generic term," the court argued, "Elliott must show that there is no way to describe 'internet search engines' without calling them 'googles.' Because not a single competitor calls its search engine 'a google,' and because members of the consuming public recognize and refer to different 'internet search engines,' Elliott has not shown that there is no available substitute for the word 'google' as a generic term."

    Compare this to the case of Q-TIPS which concluded that "medical swab" and "cotton-tipped applicator" are efficient alternatives for the brand Q-TIPS, whereas a US case involving the ASPIRIN mark concluded that, at the time, there was no efficient substitute for the term “aspirin” because consumers did not know the term “acetylsalicylic acid,” so they used "aspirin" in a generic sense. Interestingly, the brand, ASPIRIN, remains a registered mark in Canada, although Bayer lost its trademark rights to genericide in the U.S.

    Google survived the genericide test this time.