Just as The Coca-Cola Company is currently fighting in federal court over whether the term “Zero” has become generic, technology giant Google is also fighting claims of trademark genericide.
Trademark genericide refers to the phenomenon where a trademark or brand name loses its uniqueness as a source identifier or brand name, and is instead considered to be synonymous with the product or service itself. Popular examples of trademarks that have become generic include: escalator, aspirin, videotape, and thermos. Brands like Kleenex and Xerox were also on the verge of genericide and waged mass-marketing campaigns to combat genericide that have been widely documented in case law and law school for such reasons.
Rumors of the possibility of the Google trademark becoming generic has long plagued the technology company. As Google’s search engine has gained dominance among its competitors, many experts warned that the trademark was vulnerable to genericide unless Google educated the public against misuse of the mark. At the same time, the legal landscape for trademarks has been under particular scrutiny as the Supreme Court has been asked to weigh in on several trademark issues recently.
In the case at hand, Google’s legal troubles over the trademark began in 2012 when an individual named Chris Gillespie registered over 700 domains using a combination of “Google” with other terms or phrases. To fight back, Google utilized the Uniform Domain Name Dispute Resolution Policy and alleged that Gillespie had committed trademark infringement in registering the domains. Google was successful in these actions, and Gillespie was ordered to forfeit the domains in question.
In response, Gillespie sued to invalidate Google’s trademark in federal court. The U.S. 9th Circuit Court of Appeals ruled against Gillespie, however, holding that Google rightfully maintained rights in the mark “Google” because the company, Google, was not merely a search engine. The court specifically noted that there was no clear evidence of how the general public has come to regard or use the term “Google.” Specifically, even if the general public has begun to use the term “Google” as a verb, this usage was not enough to demonstrate that the mark had lost its uniqueness. The court went onto to clarify that genericide only truly occurs when competitors are unable to compete and offer their own goods and service without incorporation of the mark in question.
Although Gillespie lost his appeal before the U.S. Court of Appeals, he has already petitioned the Supreme Court to hear the case. As the petition was filed recently, it may be many months before the United States Supreme Court will hear arguments regarding the trademark, but it would behoove intellectual property attorneys to pay close attention to the development of this lawsuit as it will have significant impact on a technology giant as well provide important guidance regarding genericide and similar trademark legal issues by the Supreme Court.
Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm located in Dallas, TX. The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights. The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution. Additional information about the IP law firm and its IP law attorneys may be found at www.klemchuk.com.
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Also published on Medium.