Is the term “google” too generic and therefore unworthy of its trademark protection? That’s the question before the US Supreme Court.
Words like teleprompter, thermos, hoover, aspirin, and videotape were once trademarked. They lost the status after their names became too generic and fell victim to what is known as “genericide.”
What’s before the Supreme Court is a trademark lawsuit that Google already defeated in a lower court. The lawsuit claims that Google should no longer be trademarked because the word “google” is synonymous to the public with the term “search the Internet.”
“There is no single word other than google that conveys the action of searching the Internet using any search engine,” according to the petition to the Supreme Court.
It’s perhaps one of the most consequential trademark case before the justices since they ruled in June that offensive trademarks must be allowed.
The Google trademark dispute dates to 2012 when a man named Chris Gillespie registered 763 domain names that combined “google” with other words and phrase, including “googledonaldtrump.com.” Google filed a cybersquatting complaint under the Uniform Domain Name Dispute Resolution Policy and claimed trademark infringement. Google won, and an arbitration panel ordered the forfeiture of the domains.
Gillespie then sued in a bid to invalidate the trademark. The 9th US Circuit Court of Appeals ruled last year that the search giant gets to keep its trademark even if the term “google” has become known for searching the Internet. One reason is because Google isn’t just a search engine.
“Even if we assume that the public uses the verb ‘google’ in a generic and indiscriminate sense, this tells us nothing about how the public primarily understands the word itself, irrespective of its grammatical function, with regard to Internet search engines,” the San Francisco-based appeals court ruled.
The appeals panel said trademark loss to genericide occurs when the name has become an “exclusive descriptor” that makes it difficult for competitors to compete unless they use that name.
Why does any of this matter? The American Bar Association says a trademark “grants the right to use the registered trademark symbol: ®,” allows a rights holder to sue for trademark infringement, and “acts as a bar to the registration of another confusingly similar mark.”
Gillespie has now appealed his appellate court loss to the US high court. The petition for the Supreme Court to review the lower court’s ruling was filed days ago. It may take months before the justices decide whether to take up the dispute.