{"id":1673,"date":"2018-04-03T09:34:13","date_gmt":"2018-04-03T14:34:13","guid":{"rendered":"http:\/\/blogs.luc.edu\/compliance\/?p=1673"},"modified":"2018-04-03T09:34:13","modified_gmt":"2018-04-03T14:34:13","slug":"what-googles-genericide-win-means-for-the-future-of-trademark-law","status":"publish","type":"post","link":"https:\/\/blogs.luc.edu\/compliance\/?p=1673","title":{"rendered":"What Google\u2019s Genericide Win Means for the Future of Trademark Law"},"content":{"rendered":"

Manisha Reddy
\n<\/em>Loyola University Chicago School of Law, J.D. 2019
\n<\/em>Associate Editor<\/em><\/p>\n

In 2014, in the District Court of Arizona, a judge ruled that \u201cGoogle\u201d was not a generic term and was eligible to receive trademark protection in Elliott<\/em> v. Google<\/em>. On appeal, the Ninth Circuit affirmed the district court\u2019s ruling. In 2011, Forbes<\/em> estimated that the \u201cGoogle\u201d trademark was worth $113 Billion; the trademark is worth more now in 2018 and the company\u2019s trademark is likely its most valuable asset. The suit first ensued when Elliott purchased over 700 domain names with the word \u201cGoogle\u201d and after the company had successfully won a name dispute, Elliott filed to cancel “Google” trademarks. Elliott claimed that Google was a generic term and should not receive trademark protection. The Ninth Circuit\u2019s ruling in this case will most definitely affect companies and entrepreneurs of all sizes, perhaps giving companies more protection than they were afforded in the past; what some are calling an unintended consequence.<\/p>\n

<\/p>\n

Genericide<\/strong><\/p>\n

USPTO trademark protection affords trademarks (\u201cmarks\u201d) such as different words and logos association with a product source. A trademark becomes generic when: \u201c1) its use has been discontinued for three years with intent not to resume such use; or (2) when the mark becomes the generic name<\/a> for the goods or services on or in connection with which it is used.\u201d A generic term is known as the antithesis of a mark. Once a mark is deemed generic it is considered to be in the public domain; it is available for use by anyone and any company without any consequences. When a product\u2019s name<\/a> or logo becomes associated with a \u201cclass of goods\u201d and not a specific product the trademark is considered to be generic and has lost trademark protection. Trademarks such as \u201caspirin\u201d, \u201cescalator\u201d, and \u201cyo-yo\u201d have all gone generic, while marks like \u201cXerox\u201d and \u201cKleenex\u201d are on the verge of becoming generic. Aspirin is a trademark of Bayer AG, but for most of the world Aspirin is synonymous with pain reliever, because of this societal transformation of the word “Aspirin” the mark has now become generic.<\/p>\n

Case<\/strong><\/p>\n

In the District Court of Arizona decision, the court defined \u201cGoogle\u201d to have four possible<\/a> meanings: \u201c (1) a trademark designating the Google search engine; (2) a verb referring to the act of searching on the internet using the Google search engine; (3) a verb referring to the act of searching on the internet using any search engine; and (4) a common descriptive term for search engines in general.\u201d While many thought Elliott\u2019s argument that Google has reached genericide status would mean that Google would no longer be afforded trademark protection, they were shocked when the court ruled in Google\u2019s favor and found that term was indeed not generic. The court reasoned that even if customers use the word \u201cGoogle\u201d to refer to any online search engine, Google the company still has the trademark \u201cif consumers associate the noun with just one search engine<\/a>.\u201d The District Court of Arizona\u2019s second reason for their decision was that Elliott\u2019s information about consumer knowledge and understanding of Google was incorrect and not well researched. The court found that Google\u2019s more extensive customer survey was more reliable than Elliotts\u2019; Google\u2019s survey indicated that 94% of customers identified Google with a search engine and only 5% of customers identified the mark as a common word. If the survey had shown that more customers identified the mark as a common word, then it is more likely that the court would have found the mark to be generic.\u00a0 The court ultimately concluded<\/a>, \u201cverb use does not automatically constitute generic use.\u201d This conclusion completely made Elliott\u2019s argument irrelevant; in his concurrence Judge Watford said that \u201cthe plaintiffs produced thousands of pages of largely irrelevant evidence showing merely that \u2018Google\u2019 is sometimes used as a verb.\u201d<\/p>\n

Implications<\/strong><\/p>\n

The Ninth Circuit Court of Appeals ruling has many companies and attorneys reeling; this decision could change the future of trademarks and ownership of marks. Many companies and business owners aspire for their mark to become generic; a generic mark means that they have made it big. Unfortunately, when a mark reaches generic status that also means that the company and owner lose control<\/a> over the name, and third-party competitors and developers can do as they please with the mark without consequence. Other big brands<\/a> like Google have reason to support and endorse this ruling because it means that their marks will likely be protected after a federal court supported one of the largest, if not the largest mark in the world. Some argue that this ruling is only temporary and as time goes on \u201cGoogle\u201d will indeed become a verb and that the future of their trademark protection for big companies is still uncertain.<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In 2014, in the District Court of Arizona, a judge ruled that \u201cGoogle\u201d was not a generic term and was eligible to receive trademark protection in Elliott v. Google. On appeal, the Ninth Circuit affirmed the district court\u2019s ruling. In 2011, Forbes estimated that the \u201cGoogle\u201d trademark was worth $113 Billion; the trademark is worth more now in 2018 and the company\u2019s trademark is likely its most valuable asset. The suit first ensued when Elliott purchased over 700 domain names with the word \u201cGoogle\u201d and after the company had successfully won a name dispute, Elliott filed to cancel “Google” trademarks. Elliott claimed that Google was a generic term and should not receive trademark protection. The Ninth Circuit\u2019s ruling in this case will most definitely affect companies and entrepreneurs of all sizes, perhaps giving companies more protection than they were afforded in the past; what some are calling an unintended consequence.<\/p>\n","protected":false},"author":14,"featured_media":0,"comment_status":"open","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[52],"tags":[943,945,963,1284,1994,2075],"class_list":["post-1673","post","type-post","status-publish","format-standard","hentry","category-the-marketplace","tag-generic","tag-genericide","tag-google","tag-mark","tag-trademarks","tag-uspto"],"_links":{"self":[{"href":"https:\/\/blogs.luc.edu\/compliance\/index.php?rest_route=\/wp\/v2\/posts\/1673","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/blogs.luc.edu\/compliance\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/blogs.luc.edu\/compliance\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/blogs.luc.edu\/compliance\/index.php?rest_route=\/wp\/v2\/users\/14"}],"replies":[{"embeddable":true,"href":"https:\/\/blogs.luc.edu\/compliance\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1673"}],"version-history":[{"count":0,"href":"https:\/\/blogs.luc.edu\/compliance\/index.php?rest_route=\/wp\/v2\/posts\/1673\/revisions"}],"wp:attachment":[{"href":"https:\/\/blogs.luc.edu\/compliance\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1673"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/blogs.luc.edu\/compliance\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1673"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/blogs.luc.edu\/compliance\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1673"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}