The technology company Google managed to avoid the materialisation of a serious nightmare. On the 16th of May 2017, the American 9th Circuit Court of Appeals has decided in Elliot v. Google, Inc. that Google shall remain a valid trademark and not a generic name for search engine services.
To qualify for registration and therefore protection, a trademark must be distinctive. Some trademarks are distinctive to begin with, while others acquire this based on intensive use. In such cases, this is known as secondary meaning.
An example of secondary meaning is the iPhone trademark. The iPhone trademark consists from the elements i and Phone, in other words, interactive phone. After Apple announced its new phone would be called iPhone, almost everyone knew immediately that the Apple phone would be called iPhone. This term, which was initially a descriptive term, obtained secondary meaning in an extremely short period and that way became a valid trademark. Based on this secondary meaning, the trademark could be registered.
However, trademarks can also lose their secondary meaning. We also call this degeneration to a generic name. This occurs when a trademark was initially distinctive, but lost it in the course of time. In such cases, the trademark holder has undertaken insufficient action to prevent the public from turning the trademark into a generic name. Examples of such cases are aspirin for painkillers, kerosene for fuel and trampolines for bouncy castles. Originally, these were all trademarks but they have disintegrated in many countries and are by now considered generic names.
Most people think of painkillers when they hear the term aspirin, while few people still think of the painkillers produced by the Bayer pharmaceutical company. Consequently, Bayer has lost its trademark registration for aspirin in many countries, including the United States of America. The fact is that the American consumer no longer considers aspirin a trademark but a generic name for painkillers. In Europe, Bayer still has various trademark registrations for aspirin.
In the case in question, someone in the USA had created several domain names, including GoogleDisney.com and GoogleBarackObama.com. The web search engine company was naturally unhappy with this and sued the domain holder. The domain holder’s defence claimed that Google had become a generic name and that the public no longer considers it as a trademark for search engines. Among other things, the defense referred to a text by a rapper in which Google was used as a verb.
The judge did not agree with the defense of the domain holder and decided that Google was definitely still a valid trademark for web search engine services. The judge ruled that not a single competitor calls its web search engine Google and that consumers don’t speak of various Googles, but of various web search engines. Consequently, consumers still consider Google a trademark for web search engines and not as a generic name for these services.
Usage as a trademark
Obviously, it’s a drama for trademark holders when their trademark becomes a generic name. After all, they invest a lot in a trademark and they definitely do not want competitors to use this name for free.
The are consequently lots of big companies that fight relentlessly to prevent their trademark from turning into a generic name. For instance, several years ago, the photocopier company Xerox published an advertisement with the catch phrase When you use “Xerox” the way you use “aspirin”, we get a headache. Portable players for cassettes and CDs were launched onto the market by various brands, but at the time, Sony did everything in its power to prevent Walkman and Discman from becoming generic names.
As a trademark holder it is therefore important to use your trademark appropriately in communications to the public. Once a trademark has been registered, it is wise to use the ® symbol to indicate that it concerns a registered trademark. In addition, it is important to always use the trademark as an adjective and not as a verb or noun. This means that you preferably use the trademark name followed by the generic name of the product. Finally, trademark holders are advised to represent the trademark name in a different way than the rest of the text, for example in capital letters or italics.