The worst thing that can happen to a trademark is losing its distinctive quality and Google is facing a big problem with this. However, the Ninth Circuit Court of Appeals ruled that “google” was not yet generic and the company could enforce against others using its trademark improperly but how long will this non-genericness last?
When your idiot friend claims that Benjamin Franklin was a POTUS, you tell the history buff to go “google” the truth. We rarely say “go do an internet search” and we never say go “bing” the truth. This is the trademark problem that google is facing. When a trademark becomes generic it loses its distinctiveness and may no longer be provided protection as a trademark; this is occurrence actually has a quite catchy name “genericide.”
In 2012, Chris Gillespie purchased a whopping 763 domain names containing the term “google”; he must have been voted the GoDaddy customer of the month, at least. Gillespie combined “google” with some other person/brands like “googledisney.com” and “googlebarackobama;” sounds like one hell of a business plan there, Chris. Google called this cyberquatting, registering and using a domain containing a trademark in bad faith, and had several of the domains taken away from Gillespie.Gillespie, seeing his business plan being burnt to the ground, filed a lawsuit against Google claiming the term “google” had become generic and should not be afforded protection as a trademark.
Google was victorious on the first round of this fight and Gillespie appealed, and lost again. The Ninth Circuit Court of Appeals held because a claim of genericide must relate to a particular type of good or service and because verb use does not necessarily constitute generic use, the district court did not err when it refused to frame its inquiry as whether the relevant public primarily uses the word “google” as a verb.
Genericide is a real and dangerous thing. For example, ASPIRIN, CELLOPHANE, and THERMOS were once protectable as arbitrary or fanciful marks because they were primarily understood as identifying the source of certain goods; they are not anymore. Over the years such marks as KLEENEX and XEROX have walked the line in becoming generic. GOOGLE may still be protected…but for now. The terms is definitely becoming more and more used as a generic verb and less like a mark. Prediction, genericide will eventually strike down the GOOGLE mark.