Intellectual Property Attorney

“To Google” Or Not “To Google”: The Battle Against Generic Trademark Usage

As reported by NBC News, Google, Inc. (“Google”) recently objected to the inclusion of the term “ungoogleable” on a list of new words published by the Swedish Language Council. “Ogooglebar” (translated as “ungoogleable”) was defined as something that one cannot find on the web using a search engine. Google objected, requesting a revised definition that specifically made reference to Google’s search engine. The Swedish Language Council “expressed its displeasure with Google’s attempts to control the language” but decided to remove the term from the list.

In popular parlance, the terms “google” and “googling” are often used as verbs to describe the act of searching the Internet. Phrases such as “google it” or “I googled her” are now ubiquitous, prompting comedian Ellen DeGeneres to note: “Ten years ago, if you said you were going to ‘Google’ someone, you got written up by Human Resources.” The popularity of these phrases is no doubt due to Google’s emergence as the leading Internet search engine. In fact, as of 2006, the term “Google” appeared in Merriam-Webster’s Collegiate Dictionary with the following definition: “to use the Google search engine to obtain information . . . on the World Wide Web.”

Google’s recent actions in Sweden no doubt stem from concerns over protecting its trademark rights. In order be protectable as a trademark, a mark must distinguish the goods or services of one provider versus the goods or services of others. If “google” became the universal term for conducting an Internet search via a search engine, it would cease to distinguish Google’s services from those of others and would therefore cease to function as a trademark. In that case, the term would be deemed to have become “generic.”

Registrations for trademarks that have become generic are subject to cancellation by the U.S. Patent and Trademark Office. Terms that were once trademarks but later became generic and hence not protectable include ASPIRIN for pain reliever, ESCALATOR for a moving stairway and ZIPPER for . . . zippers. These terms are now used to refer to classes of products as opposed to the source of a product.

Google is therefore well advised to take steps to persuade consumers and the media to use the mark to refer to Google’s search engine services as opposed to search engine services in general. However, as noted by McCarthy on Trademarks
and Unfair Competition, “no matter how hard the trademark owner may try, it may not be able to prevent the consuming public from adopting a certain term as a generic name for all products in a certain class. Thus, even though the trademark owner may not intend this result . . usage of the public may end the trademark significance [of the term].”

The fact that so many people use the term “google” generically is evidence of the extent to which Google dominates the marketplace for search engine services. From a trademark perspective, the difficult task is striking a balance between marketplace domination and having your trademark become synonymous with a particular service. In addition to policing the marketplace for infringement, trademark owners should be aware of the manner in which their marks are used by the media, in dictionaries and on the Internet, providing guidance regarding appropriate trademark usage when generic usage is discovered.

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