October 13, 2014
The global success of Google’s online search services has moved the Google name into the daily vocabulary of Internet users around the world. Although this status is a marketer’s dream, it is a curse from a trademark rights enforcement perspective. Google’s great success has forced the company to engage in continuing legal actions in order to protect its trademarks. In the recent case, Elliott v. Google in federal district court in Arizona, the company successfully defended the Google name from a claim that it had become a generic mark.
In the Elliott case, Google’s widespread popularity was used against the company. Evidence was raised illustrating broad global recognition by consumers of the term, “googling”, as a synonym for the process of conducting an online search.
A key argument in the Elliott case was based on the extensive public recognition of the Google mark as a verb. Because a majority of consumers recognized “google” as a verb, the claim was raised that “google” had been transformed from a trademark to a generic word, synonymous for online searching.
When a trademark becomes viewed by the consuming public as a generic word, it loses its trademark status and associated legal protections. A generic word is not the property of any one party. All can use it freely. A trademark that becomes generic effectively loses its legal status and is no longer proprietary.
Google responded by arguing that the vast majority of consumers continued to recognize “Google” as a proprietary mark representing the Google search engine and the company. Google presented evidence that more than 90 percent of consumers were able to identify “Google” as a mark representing the world’s leading online search engine and the company that provides it.
The court ultimately sided with Google. It asserted that, although the verb “googling” is widely used as a synonym for online search, that fact did not demonstrate that the Google mark had evolved into a generic word. Google’s evidence that a vast majority of consumers continue to recognize the Google mark as a commercial identified for the company and its search products apparently persuaded the court that the trademark remains viable.
This case illustrates an important aspect of trademark rights enforcement in the online context. Google’s success at leading the creation of an essentially new consumer marketplace, online search, made the company one of the most successful in the world. That pioneering status and associated great success also, however, subjected the company to trademark challenges that are faced by very few other companies.
When a business essentially creates an entirely new consumer market and set of products, the associated success can, as was the case with Google, make that company’s name and other trademarks synonymous with the new market. This situation is ideal, from a commercial perspective, but it also raises substantial continuing challenges as the company tries to protect and preserve its trademark rights.