There are situations in the intellectual property world when popularity works against you. Genericide has happened to the likes of hoover, selloptape, trampoline, aspirin and many more: becoming a generic word for that product means brands can no longer use it as a tradmeark and other brands can make money from it.
However, this week Google have won their lawsuit to keep their tradmark – a victory for them and future trademark owners alike. The US Federal Appeals Court’s decision on rejected the argument that Google has become so popular as a verb that it should lose its status as a protected trademark.
In 2012 Chris Gillespie acquired 763 internet domain names that included the word “google.” Google, of course, objected that the domain names in due course and asked the court to retract the domains as they included their trademark. It looked for a while as though this would backfire on Google when Gillespie and one other took to the courts claiming that Google was a “generic term universally used to describe the act of internet searching”, thus suggesting they should be allowed the domains. It is Google’s worse nightmare as it would be, in the words of their 2005 report, “diminishing our brand”.
However, Google won the case this week, with an Arizona Judge siding with the search engine alongside the US Court of Appeals in San Francisco. US Circuit Judge Richard Tallman wrote that “the mere fact that the public sometimes uses a trademark as the name for a unique product does not immediately render the mark generic”.
Overall, the case was put down to insufficient evidence from Gillspie and dismissed.
Jason Kravitz, a Boston-based trademark lawyer, said the appeals court’s decision reinforces how difficult it is for challengers to have brand names declared generic.
“These kinds of challenges are par for the course when a company has been successful enough to establish market dominance,” he said.
The case is Elliott v. Google Inc., 15-15809, US Circuit Court of Appeals for the Ninth Circuit (San Francisco)