A distinctive trademark has unlimited potential for commercial exploitation. The key to optimizing that value is making the right decisions at every step in the trademark lifecycle. The Life cycle of a trademark involves the planning, creation, registration, protection, maintenance and exploitation of the mark. Genericization occurs when their trademark becomes obsolete as a result of their very popularity and omnipresence. Neglect at any stage leads to genericization of any valuable and established brand. The phenomenon of genericization has been faced by many brands like aspirin (Bayer AG) and escalator (Otis Elevator Company) etc in past.

In case of trade mark “Google” the first reference found to “googling” as verb occurs within something posted online by google itself on 8 July 1998, back when Google was a still a search engine on the Stanford University website by Google co-founder Larry Page, who wrote on a mailing list: “Have fun and keep googling!”. Now, the Google Inc. is fighting a significant and strategic war to save the brand “Google” from genericization.

Google is one of the most valuable brands in the world. The company watchfully defends its trademark, both in and out of court. However, there is no imminent danger of losing its trademark protection. The popularity of Google’s brand, and how it has entered mainstream English usage as a verb (to google) and participle (googling), it may only be a matter of time it attains the genericization i.e the process of becoming generic, or “not sold or made under a particular brand name,” according to Webster’s dictionary. Google, however, is racing toward genericization with unprecedented speed, according to linguistics experts.

(An extract from New York Times of August 14, 2015, on page B1)

 

Googles Inc. strategic action:

  1. David Elliot and Chris Gillespie filed during a two-week period ending on March 10, 2012, by using a domain name registrar to acquire 763 domain names that combined the word “google” with another brand, e.g., googledisney.com, a person, e.g., googlebarackobama.net etc. Google Inc. promptly filed a complaint requesting transfer of the Domain Names pursuant to the Uniform Domain Name Dispute Resolution Policy (“UDRP”) incorporated into the domain name registrar’s Terms of Use. Responding to Google Inc. arbitration complaint, Gillespie asserted, inter alia, that the GOOGLE mark has become generic and that he should be permitted to use the Domain Names incorporating the GOOGLE mark in furtherance of his business plans. The UDRP panel ordered the Domain Names be transferred to Google Inc. Elliot then instituted the action before district court of Arizona by filing a complaint seeking cancellation of both the ‘502 and ‘075 marks and a declaration of the same. Gillespie also filed a petition with the U.S. Trademark Trial and Appeal Board (“TTAB”) requesting cancellation of the ‘502 Mark and the ‘075 Mark contending that the GOOGLE mark has become generic, The TTAB proceedings have been stayed pending resolution of case before district court of Arizona.

The district court of Arizona held following:

Accepting Plaintiffs’ evidence as true and drawing all justifiable inferences therefrom in Plaintiffs’ favor, a majority of the public uses the word google as a verb to refer to searching on the internet without regard to search engine used. Giving Plaintiffs every reasonable benefit, majority of the public uses google-as-verb to refer to the act of searching on the internet and uses GOOGLE-as-mark to refer to Defendant’s search engine. However, there is no genuine dispute about whether, with respect to searching on the internet, the primary significance of the word google to a majority of the public who utilize internet search engines is a designation of the Google search engine. Therefore, Defendant is entitled to judgment as a matter of law that the ‘075 and ‘502 Marks are not generic.

  1. Google’s Rules for Proper Usage of its trademarks include, among many others, the following requirements:
  • Use the trademark only as an adjective, never as a noun or verb, and never in the plural or possessive form.
  • Use a generic term following the trademark, for example: GOOGLE search engine, Google search, GOOGLE web search.
  • Don’t use Google trademarks in a way that suggests a common, descriptive, or generic meaning.

 

  1. Google announced on 10 August, 2015 that it was creating an umbrella organisation called Alphabet Inc., encompassing Google itself and its many satellite companies. It appears the unexpected move is Google’s effort to protect its valuable brand and keep its name from becoming a generic term for searching the internet.

Google in a press release said the “newer Google is a bit slimmed down,” and focused on its main internet products. The other interests of former Google, such as life sciences, are to be managed by “a strong CEO who runs each business,” while Google Inc., still the heavyweight, “will become a wholly-owned subsidiary of Alphabet.”

  1. Google’s strategy and focus on how its name is used even extends to Sweden, where the country’s Language Council wanted to add the word “ungoogleable” to a list of new words as meaning something that can’t be found on the Web using a search engine. Note: a search engine — not necessarily Google’s.

Google objected and asked for changes showing the expression specifically refers to Google searches and a disclaimer saying Google is a registered trademark.

  1. The first recorded Cease-and-Desist letters from Google Inc was to Paul McFedries, who runs the lexicography site Word Spy, received a firmly worded letter after he added “google” to his online lexicon. The Google Inc. asked him to delete the definition or revise it to take account of the “trade mark status of Google”. He opted for the latter and it specifically cites that google is trademark of Google Inc.

Frank Fuchs, a regular reader and tip provider created a rather innocent page titled “Guide On How To Get Your Business Listed On Major Local Search Engines”. On it, he mentions local search engines like Yahoo Local, Ask City or Google Maps, as well as yellow pages services such as GoYellow.de. He was served with Cease-and-Desist letters from Google Inc.

 

  1. The google has been capitalising the first letter of the mark, “Google” to avoid its use as noun or verb.

Google is trying hard to tame the demon of genericization by actively considering the issue and educate the customer about the usage of the term.

Rajni Sinha

Advocate Bombay High Court

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