While many marketers admire the success of brands such as ‘google’ in becoming part of everyday speak, trademark practitioners routinely caution brand owners against using brand names as nouns or verbs for risk that they might become generic terms. As if to illustrate their point, Google is currently battling in the US Supreme Court to retain trademark protection.
Aspirin, escalator, hoover, sellotape, trampoline and videotape… these are just some examples of everyday words that were once valuable trademarks, but are now generic terms of no legal value to their former owners. The term ‘google’ may soon follow suit if its lawyers are unable to rebuff the arguments of a rival before the US Supreme Court that the term should no longer have trademark protection because the word has become synonymous with internet searching.
The dispute dates back to 2012 when the company bought a cybersquatting complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) against the registration of more than 700 domain names combining ‘google’ with other words and phrases, such as: ‘googledonaldtrump.com’. While Google succeeded in its complaint, the other party subsequently sued in a bid to invalidate the trademark, and it has now reached as high on the US Supreme Court on appeal.
As a general rule, once a brand name becomes accepted as a common description of the type of goods or services to which the mark is applied, then it will no longer function as a ‘guarantee of origin’, and may be liable to revocation.
In a 2014 ruling (Backaldrin Österreich The Kornspitz Company), the Court of Justice of the European Union (CJEU) clarified that it is the perception of the customer that is decisive when assessing whether a brand name has become generic. It is also necessary that the mark had become a generic term “by acts or inactivity of the proprietor”. Whether there are other names for the same product is irrelevant.
At what point then does our use of the term ‘google’ mean that the trademark Google is no longer capable of guaranteeing that ‘google’ searches take place only on the Google search engine? In theory, it would likely take overwhelming use of such a famous mark as a verb (or noun) for there to be any significant risk of it becoming sufficiently generic to be deemed to no longer function as a trademark.
It helps, of course, that Google is an established, well-known and readily identifiable mark. The more significant risk is for newer, lesser-known marks; brand names where the consumer is yet to be ‘educated’ that the term is intended to guarantee the origin of the relevant goods or services.
Until that is achieved, brand owners are encouraged to use their marks correctly (i.e. avoid using it as a verb or a noun) and to monitor use of their trademarks externally (e.g. ‘incorrect’ use in the formal marketing materials of other vendors, licensees and business partners). Companies that fail to do this could find that they have put their goodwill, trademarks and brand equity at risk.