You may know that “aspirin,” the word commonly used to describe acetylsalicylic acid, was once a trademark – i.e., brand name – for the acetylsalicylic acid made by one company: Bayer. The word “aspirin” lost its trademark status because the public came to use the word to mean acetylsalicylic acid made by anyone, not just Bayer. In trademark-speak, “aspirin” became “generic,” and Bayer’s “aspirin” trademark fell victim to “genericide.” Other familiar victims of genericide are “cellophane,” “thermos,” and “xerox” (though “xerox” was resurrected through the efforts of the brand owner, Xerox Corporation).
Is “Google” the latest victim of genericide? Two individuals in a lawsuit in federal court in Arizona claimed it is. They argued that the public uses “google” as a generic word for the act of searching on the internet (as in, “I googled it”). They sought to cancel Google’s trademark registration in an effort to defend their registration of hundreds of domain names containing the word “google.”
In Elliott v. Google, No. 15-15809 (9th Cir. May 16, 2017), the Arizona district court rejected the argument that “google” had become generic, and the Ninth Circuit Court of Appeals affirmed. According to the court, the question is not whether the public sometimes uses “google” generically to refer to an Internet search. The question is whether the primary significance in the public mind of the word “google” is to identify the act of searching on the Internet or a particular search engine provider. As long as the primary significance is to identify “who” is providing the service – for example, to distinguish Google from Microsoft (which offers the “Bing” search service) – the mark is safe from genericide. The court held that the plaintiffs had failed to prove that “google” had become generic and rejected the effort to cancel Google’s trademark registration.
Proving genericide is difficult. This case is a reminder, however, that trademark owners – especially those whose product or services become well-known – should be vigilant to ensure the public understands that their trademarks indicate the “who” that provides product or service rather than the product or service itself.