When someone is looking for information, we frequently tell them to “google it,” meaning look it up using the Internet. But has the word become so synonymous with search that Google could lose its trademark protection?
The plaintiff in a lawsuit pending in Arizona is seeking to cancel the trademark registration for Google contending that “[t]he term ‘GOOGLE’ is, or has become, a generic term universally used to describe the action of internet search with any search engine.” As reported by Paid Content, David Elliott commenced the suit after a court ordered him to turn over more than 750 website names such as “googlegaycruises.com” and “googledonaldtrump.com.”
While the Google trademark has likely not yet reached generic status, the lawsuit does illustrate that success can have its downsides, particularly when it comes to trademarks.
As we have previously mentioned on this blog, trademarks are not guaranteed to last forever. In fact, a mark owner can lose its trademark if the mark in question loses its distinctiveness and becomes synonymous with a generic product or service. For instance, the following have lost their trademark significance under U.S. law because they have become generic:
- Escalator, originally a trademark of Otis Elevator Company
- Thermos, originally a trademark of Thermos GmbH
- Yo-Yo, originally a trademark of Duncan Yo-Yo Company
- Zipper, originally a trademark of B.F. Goodrich
In order to make sure it does not end up on the list of extinct marks, Google has actively taken steps to maintain the distinctiveness of its mark. It specifically discourages the use of the term “googling” in reference to web searches. In 2006, Google took to its own blog to protect its brand.
The blog post stated: “While we’re pleased that so many people think of us when they think of searching the web, let’s face it, we do have a brand to protect, so we’d like to make clear that you should please only use ‘Google’ when you’re actually referring to Google Inc. and our services.”