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GOOGLE: Still a trademark

Looking for the city’s most popular restaurant? Google it! Need to confirm a historical fact? Google it! Doubt as to directions? Google it! The act of “googling” has become common place and common parlance when we refer to conducting an online search. The pervasive use of “google” as a verb, rather than strictly as a brand name has raised questions as to whether it remains an enforceable trademark or has, through everyday usage, become a generic word in which no one may claim exclusive rights. A recent decision from the U.S. on this very issue provides some clarity around when trademarks such as GOOGLE will fall victim to their own success.

 If operating properly, trademarks are like an arrow for the consumer creating a pointed link between a good or service and its source. Occasionally, trademarks become so well known that in the mind of the consumer the trademark begins to identify the goods and services they are marked on, rather than the source of those goods and services. In other words, over time, the holder of a valid trademark may become the victim of “genericide” i.e., the mark becomes so common it loses its meaning as a brand name.

We have seen this happen before - marks which were once protectable as arbitrary or fanciful marks because they were primarily understood as identifying the source of certain goods or services have fallen into generic use. “Thermos”, which was registered as a trademark in Canada in 1907 now identifies containers that keep drinks or other fluids hot or cold by means of a double wall enclosing a vacuum. “Hula-Hoop” which was registered as a trademark in Canada in 1958 to a company known as Wham-O now commonly describes a toy hoop that twirls around the waist and limbs. Countless other marks have fallen into generic use as well (aspirin, cellophane, rollerblade, zipper, zamboni just to name a few).

The United States Court of Appeal for the Ninth Circuit was recently confronted with the newest case of potential “genericide”.  In Elliott v Google, Inc. (9th Cir. May 16, 2017) the plaintiff sought to cancel the trademark registration for GOOGLE on the ground that it had become generic. The plaintiff/appellant argued that the primary significance of the word “google” to the relevant public was as a common name for Internet search engines rather than as a trademark identifying the GOOGLE search engine and that the registration should, therefore, be canceled.

The Court of Appeal affirmed the District Court’s conclusion that GOOGLE had not become generic. The Court held that a term will only become generic when in the minds of the consuming public the term is now the product and not the producer. The Court found that the plaintiff’s evidence did not establish that GOOGLE had become synonymous with all search engines. It remained an identifier of Google’s search engine, in particular.

The Court also held that using a trademark in verb form does not automatically constitute generic use. Just because we all say I “googled” it doesn’t mean that the trademark is no longer distinctive. However, the Court qualified this finding by emphasizing that pervasive use of a trademark in verb form is not “categorically irrelevant” to a generic-ness determination.

In coming to this conclusion, the Court of Appeal embraced what appears to be a new classification system for assessing whether verb use has rendered a trademark generic: (1) “discriminate” verbs, used with a particular brand in mind (like saying I “googled it” and going to google.ca to look something up), and (2) “indiscriminate” verbs, used without a particular brand in mind (like saying I “googled it” meaning using any search engine to look something up). The Court of Appeal endorsed the use of these terms in the genericide analysis to express whether a consumer, in fact, had a particular source in mind when using a trademark as a verb. A helpful framework indeed. (It will be interesting to see whether this framework is integrated into Canadian practice).

This case confirms that persistent use of a trademark as a noun or a verb does not necessarily render a mark generic. It also confirms that in the U.S., what really matters in a generic-ness assessment is what the relevant public is thinking when using the mark as a verb or a noun. Thus, the case highlights the importance and potential power of survey evidence in such a case and that the dangers of falling victim to genericide is really in mind of the consumer (/ “googler”).

The case also demonstrates the potential power of a generic trademark, and not just for big businesses with well-known brands. Small businesses with an innovative product that is not patentable or protectable by industrial design may be able to ward off competition by getting consumers to associate their product exclusively with their trademark. But, to the extent that a small business can do this, they will need a carefully devised trademark strategy to ensure that their mark continues to distinguish them as a source in the long-term.

Google has managed to do exactly that. For now, at least, GOOGLE seems to be resting safely on the trademark’s database having defended its position as a distinctive mark. Whether the public’s perception of the term “Google” changes over time is yet to be seen - Stay tuned and if you want to know more – “Google it”.

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Toba Cooper was called to the Ontario Bar in June of 2015. She obtained her J.D., with honours, from the University of Ottawa, Faculty of Law. Before entering the profession, Toba worked in the commercial arts sphere. She articled at a major Bay Street Law firm where she focused her work on intellectual property and intellectual property litigation.