Is Google at risk to become the next Aspirin?

Is there such a thing as too much brand recognition and market dominance for a product? A marketing department might tell you no, but the legal answer is yes.  Over the years trademarks ranging from “trampoline” to “yo-yo” have suffered “genericide,” or having a court cancel a trademark registration on the grounds that it has become the generic name for the product. When a trademark becomes the identifier for an entire product category, then it is at risk of cancellation. Just this year Google had to go through a costly lawsuit to stave off potential genericide.   

In early 2012, Chris Gillespie registered hundreds of domain names containing the word “google,” including such domains as “googlebarakobama.com” or “googlenewtvs.com.”  Google was not amused, and filed a complaint with the National Arbitration forum against him, claiming that the domains he registered were confusingly similar to its trademark and had been registered in bad faith.  Google won, and the domain names were transferred to Google in May 2012.

Shortly after, David Elliott joined Gillespie in a lawsuit filed in Arizona district court that petitioned for the cancellation of the “GOOGLE” trademark under the Lanham Act. Elliott and Gillespie argued that the public primarily understood the term “GOOGLE” to mean “a generic term universally used to describe the act of internet searching.” Elliot even moved for summary judgment on the basis that a majority of the public uses the word “google” as a verb and that such use constitutes generic use. Google argued Elliot did not present sufficient evidence to support his case. Google won on summary judgment and the Court of Appeals for the Ninth Circuit affirmed the decision on appeal.

This ruling is a win for trademark holders, but should serve as a reminder to be careful how you market a product. As a general proposition, a trademark is an adjective, rather than a noun or verb . For example, you can always find Kimberly-Clark using the phrase “Kleenex® brand tissues” on its tissue boxes rather than just “Kleenex” alone.   Smart marketing teams will include a noun with a trademark in advertising materials or on a product tag, in order to give the consumer something else to call the product rather than the trademark by itself – Band-Aid® brand adhesive bandages, Rollerblade® in-line skates, Weed Eater® brand grass cutter, or Jell-O® brand flavored gelatin.  Don’t let your trademark become the victim of your own success!

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About the Author

Virginia S. Pleasants

Virginia Pleasants focuses her practice on estate planning and administration, general business law, long-term care facilities and intellectual property. 
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