Two men that registered hundreds of domain names with the word “Google” in them sent a petition to the Supreme Court asking that it legally rescind the federal protections around the tech conglomerate’s proprietary name.
Chris Gillespie and David Elliott, the two plaintiffs, argue in their petition that Google has become so generic it’s essentially synonymous with the phrase “search the internet.” Google reportedly has a roughly 80 percent share of the desktop search engine market in the U.S.
Elliot sued Google in 2012 after the company filed a legal complaint against Gillespie for cybersquatting — an attempt to officially register web addresses of brand names to eventually resell for profit. In this case, it was domain names like “googledonaldtrump.com” and “googlegaycruises,” according to Silicon Beat. The judges at the time said the plaintiffs lacked the evidence to prove that people use the word “Google” to mean any general web search. Gillespie and Elliot were ordered to forfeit the domain names.
The case then went to the Ninth Circuit Court of Appeals, which agreed with the lower court’s decision to grant Google the right to protect its trademark.
“Verb use does not automatically constitute generic use,” wrote presiding Judge Richard Tallman.
“Google produced overwhelming evidence that the public primarily understands the word ‘Google’ as a trademark for its own search engine, not the name for search engines generally,” Judge Paul Watford wrote in a concurring opinion. “In Google’s consumer survey, 93% of respondents identified ‘Google’ as a brand name, rather than a common name for search engines.”
Josh Gerben, Esq. a prominent trademark lawyer in Washington D.C., agrees with the court’s decision.
“I do not believe that a court should find the Google trademark to be generic — at least for the moment,” Gerben told The Daily Caller News Foundation (TheDCNF). “The company has a well-known brand, however, the trademark has not become generic because consumers still appear to view the ‘Google’ trademark as identifying products and services that are provided by the large international company based in Mountain View California.”
There are generally four categories of terms regarding potential trademark protection: descriptive, suggestive, arbitrary, and generic.
“It is important for Google to retain the rights to its name because the name ‘Google’ is how consumers identify the goods and services which the company offers,” Gerben said. “If the word ‘Google’ were freely available for everyone to use (i.e. if a court found it were ‘generic’) then anyone could use the name to offer goods or services. This would lead to a situation where it may become nearly impossible to know what goods or services were genuinely offered by Google, Inc (the Mountain View based company).”
Gerben provides a telling example in which a person uses an accounting program called Google Finance, and entrusts the platform to secure sensitive financial information. If Google was to become a generic term, there would be no overt guarantee that the software the person is using was not made or distributed by an identity thief.
Such a debate over the genericness of a certain product or service is not unprecedented.
Xerox, the tech corporation, for example, has become so powerful and ubiquitous in the document solution industry, that when people hypothetically request someone copies a file for them, they ask “can you Xerox this for me?”
Xerox was evidently worried, even prescient, about its principal offerings falling victim to “genericide,” as it ran an advertising campaign that read: “You can’t Xerox a Xerox on a Xerox. But we don’t mind at all if you copy a copy on a Xerox® copier.”
Xerox ultimately lost its trademarked name, placing the word Xerox in broader classification of any photocopier or act of photocopying. Other once-patent protected names like band-aid, laundromat, trampoline and aspirin have also been “genericized.”
“When you use ‘Xerox’ the way you use ‘aspirin,’ we get a headache,” another advertisement from Xerox reportedly read.
When TheDCNF sent an inquiry to Google so it could elaborate on the case, the company declined to comment.
Gerben says it is not surprising Google wouldn’t comment on the case publicly because it “would not further Google’s goal of having the case resolved in its favor.”
“In fact,” Gerben added, “any public comment could potentially be used in litigation against Google, therefore, avoiding any comment is a good legal strategy.”
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