The Ninth Circuit Court of Appeals ruled on May 16, 2017, that Google has not become a victim of its own success – that is, its Google trademark is still an enforceable brand for an online search engine and has not become generic.
Xerox, dumpster, Kleenex, thermos. All are infamous examples of company’s trademarks nearly becoming a victim of their own widespread success. When a trademark becomes so ubiquitous and so widely used by the general public as a noun or verb instead of as a brand (adjective) of goods or services, it becomes a generic term. When that happens, the term ceases to be a source identifier and is just another word in the English lexicon.
Many experts believed that Google may be the next famous term to lose its trademark protection, simply by becoming too popular a term. All too often, consumers use the mark generically, for example by saying they “Google something” or “check Google.” Such references are against the intentions of a brand owner and can have a devastating effect on a brand.
This becomes a problem for companies trying to protect their trademark rights because marks which are merely generic are not subject to trademark protection. Generic terms are those which include “[w]ords which embrace an entire class of products or services, not all of which necessarily emanate from the same source ….” Team Cent. Inc. v. Xerox Corp., 606 F. Supp. 1408, 1413 (D. Minn. 1985) (internal citations omitted).
This follows from the “spectrum” of the strength of one’s trademark, which is divided into five levels of decreasing strength:
- Arbitrary marks, which have no meaning as to the nature of the product
- “Fanciful” or “coined” marks, which are original and have little if any reference to the nature of the product or service
- “Suggestive” marks, which have a primary trademark significance but with suggestion as to nature of product
- “Descriptive” marks, which are not just suggesting, but actually describing the product or service yet still understood as indicating source
- And “Merely descriptive” marks, which have almost entirely reference to the product or service but capable of becoming “distinctive”.
See Abercrombie & Fitch Co. v. Hunting World, 537 F.2d 4 (2nd Cir. 1976); see also Alchemy II, Inc. v. Yes! Entm’t Corp., 844 F. Supp. 560, 569 (C.D. Cal. 1994). Companies, essentially, do not want their marks to ever become “merely descriptive.”
A common source of evidence on genericness is the dictionary. Gimix, Inc. v. JS & A Group, Inc., 699 F.2d 901 (7th Cir.1983). For instance, the court in Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75 (7th Cir.1977), cert. denied, 434 U.S. 1025, 98 S.Ct. 751, 54 L.Ed.2d 772 (1978), relied heavily upon the dictionary to find that “light” or “lite”, was a generic term in relation to low-calorie beer. See 561 F.2d at 80–81. The Miller court also noted that the court is entitled to take judicial notice of common usage of the English language to determine whether a use is generic. Id.
Where a trademark is used generically, a trademark owner may need to take aggressive measures to retain exclusive rights to the trademark. Xerox corporation attempted to prevent the genericization of its core trademark through an extensive public relations campaign advising consumers to “photocopy” instead of “xerox” documents.
Google seemed to recognize this dilemma instinctively, and attempted, long ago, to take preliminary steps to ensure its success would not be its undoing. Google has gone to lengths to prevent this process, discouraging publications from using the term ‘googling’ in reference to Web searches, and going so far as to send cease and desist letters on the same as far back as 2003. See Google calls in the ‘language police’ on BBC News.
These early actions have paid dividends. In 2006, both the Oxford English Dictionary and the Merriam-Webster Collegiate Dictionary made efforts to strike out the difference between the noun “google” and the verb “to google” by defining google (all lower case, with -le ending) as a verb meaning “use the Google search engine to obtain information on the Internet”. The company, however, continued to have the proper noun treatment of capital “G” for “Google.”
This has proven helpful, as one district court in Elliot v. Google Inc., (“Elliot”) 45 F. Supp. 3d 1156 (D. Ariz. 2014), closely examined the dictionary usage of the various terms for “google”:
As to dictionary usage, Plaintiffs are unable to cite to a single dictionary whose definition of the word “google” neglects to mention the trademark significance of the term. Plaintiffs accuse Defendant of “intimidat[ing] [dictionaries] into submission”, because Defendant enforces its mark.
Elliot, 45 F. Supp. 3d at 1171 (internal citations omitted). The court further held that verb use of a trademark “is not fundamentally incapable of identifying a producer or denoting source. A mark can be used as a verb in a discriminate sense so as to refer to an activity with a particular product or service,” using Adobe Photoshop as an example, e.g., to “PHOTOSHOP” an image. Id.
The lower Court’s decision was upheld last week. Judge Tallman wrote in his decision that:
[The case] has failed to present sufficient evidence to support a jury finding that the relevant public primarily understands the word ‘google’ as a generic name for internet search engines and not as a mark identifying the Google search engine in particular.
Thus, Google successfully argued, for now, that it owns a trademark for the search engine itself, not the act of searching. The fact that people might offer “to FedEx a package” doesn’t mean consumers can’t understand the difference between Federal Express and UPS, Google said, and the same is true for search engines.
Aside from working directly with dictionaries, another common practice among trademark owners is to follow their trademark with the generic product or service word (e.g., referring to the “Google search engine”) to help define the word as a trademark.
Yet, it remains to be seen whether mere public relations programs or discussions with dictionaries can stop the evolution of the public’s use of language. Continued efforts are needed for Google, otherwise one day, “googling” oneself may refer to any old look-up of information, rather than specifically typing one’s name into a Google search bar on a web browser.