What do the words “aspirin,” “thermos,” and “escalator” have in common? They all used to be trademarked brand names, but have become so generic that they can no longer be legally trademarked. A trademark exists to protect a business’ goodwill and reputation by letting it protect a word or image that denotes who it is, but if a brand name becomes commonly used to refer to similar products then it is said to be “generic.” The tech giant Google recently went to court to fight for its own identity against the forces of normalcy.
In the case Elliot v. Google, Inc. (856 F.3d 1225 (9th Cir. 2017), a cybersquatter registered hundreds of domain names that contained the word “Google” and other famous brands (e.g. googlecartier.com). The goal was to direct unwitting internet users to its own sites, which were unrelated to Google. Elliot sued after the National Arbitration Forum transferred his domain names to Google. Elliot argued that Google’s trademark was no longer legally protectable because the word “google” was now commonly used to mean “look something up on the internet.” The term “to google” is in common usage in media, and even defined in the Oxford dictionary (go ahead, google it).
However, the Court was not moved. The test for determining whether a mark is generic is if the common usage stops referring to “who” holds the mark, but rather any iteration of the product itself. The Court stated that the Google mark had not devolved to point of becoming generic because it still referred to the search engine itself rather than simply the action of searching the internet on one of any number of search engines. The fact that it had become a verb by itself was not enough to render the Google mark generic. The Plaintiff did not present evidence that the term “googling” had reached the same level of generality as other ubiquitous trademarks. For example, when someone asks for an aspirin they could be referring to any painkiller and not specifically acetylsalicylic acid, but when someone suggests that a reader google a fact the reader is more inclined to imagine the website Google.com (even the Oxford definition refers to using the search engine Google to search for information on the internet).
This victory was a big win for Google. This case ensures that Google’s trademark will likely be protected for many years to come.
