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Do you "google?" That is the essence of the question
before the Federal District Court in Arizona in a Complaint filed
on May 21, 2012 by David Elliott against Internet search engine
giant Google, Inc. In Elliot v Google, Inc., CV-12-1072-PHX-MHB,
Elliot claims that Google's once distinctive mark GOOGLE®
has become generic and lacks trademark significance due to its
common use as a transitive verb. After losing to Google in UDRP
proceedings involving many "Google-related" domain name
registrations that he owns, Elliott now seeks a declaratory
judgment that his domain names are rightfully his, that they do not
infringe any trademark rights Google may own, and that all
Google's registered GOOGLE® marks should be cancelled since
"google" is now a common generic word worldwide that
means "to search the Internet."
Under trademark law, a trademark is an identifier of a source of
a product or service. It is a unique brand identifier that
distinguishes one person's products or services from
another's. If a trademark becomes "generic," meaning
the common name for a product or service, all trademark rights are
lost. Marks can become generic without any fault of the trademark
owner, and often can become generic as a consequence of the
trademark owner's own success. It is through misuse either by
the public or the trademark owner or both that a once famous
trademark can fall into the general vernacular of the public and be
stripped of its trademark status. Some formerly protected
trademarks, which are no longer protected because they were the
subject of public "genericide," are aspirin, cellophane,
linoleum, heroin, zipper, thermos, videotape, and escalator. Current marks that are actively fighting the
good fight to try to prevent genericide include XEROX®,
KLEENEX®, ROLLERBLADE®, CHAPSTICK®, BAND-AID®, and
BUBBLE WRAP®.
The kiss of death for a trademark can occur when the trademark
is included in a dictionary as the common commercial name for a
product or a service. Currently, several
dictionaries online list two entries for "google":
(1) as a noun identifying "Google" as a trademark or a
brand name for an Internet search engine, and (2) as a verb to mean
"to search for (something on the Internet) using a search
engine," "to check (the credentials of someone) by
searching for web sites containing his or her name," and
"to search the Internet for information about (a person,
topic, etc.). In his Complaint, Elliott identifies many other
sources for generic definitions of "google," including a
research report that claims to have located verbal forms of the
word "google" in, at least, 19 languages. This is not
good news for Google.
So if you are a trademark owner, what can you do to try to
ensure that your mark does not fall into the public domain? First,
always use your own trademark as an adjective modifying the product
on which or service with which it is used (e.g., BAND-AID®
adhesive bandages). If you own a federal registration, use the
® registration symbol with your mark. If your mark is not
registered, use the unregistered " designation with your mark.
Never use your own mark as a noun or as a verb. This can sometimes
be very difficult to do depending on your marketing strategy.
Marketing specialists do not like (and often ignore) this rule of
trademark law in creating advertising for clients. It is up to the
trademark owner to vet its advertising materials and keep a tight
rein on its marketing staff and outside consultants to be sure it
does not destroy the very trademark rights the trademark owner is
trying to create and protect.
The second thing trademark owners need to do is to monitor the
use of trademarks by third parties, such as the media, customers,
competitors, etc. Mistakes in the proper use of a trademark can
mushroom over night if they catch on with the public. As a
trademark owner, your job is to nip those mistakes in the bud as
soon as possible. Contact media sources and advise them on, for
example, the erroneous reference or use of your mark in an article
and educate them on the proper use of your mark. Correct customers,
suppliers, distributors, or dictionary publishers if a mark is used
or listed improperly. Xerox, for example, for years has undertaken
a very public campaign, taking out full page ads in major
newspapers for this very purpose, asking the public not to misuse
its XEROX® trademark as a verb – "xeroxing"
– or as a noun – "xerox machine." You
have to be your own keeper on this and police your mark at regular
intervals, not only for this purpose but to ensure other
unauthorized and infringing uses are not taking place.
It will be interesting to see if Mr. Elliott (whose name
coincidentally is "David") takes his case against the
Goliath Google to the mat. Stay tuned for further updates.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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