Google Escapes Death by Genericide

Mock Google Search Browser

Has the term “Google” become so generic that it simply means using any search engine to look up information? That is exactly what Chris Gillespie, a man who has registered 763 domain names that combined “Google” with other words and phrases, tried to prove in his suit against the tech giant.¹ Unfortunately for Gillespie, the Supreme Court declined to review his petition arguing that the Google trademark should be cancelled.²

Initially, in 2012, Gillespie filed an action under the Lanham Act, asking an Arizona district court to cancel the Google trademark because it had become too generic.³ Gillespie argued that “Google” became synonymous with searching the internet and, in effect, that there is no other word except for “Google” to convey the action of using a search engine to look up information.⁴ Essentially, Gillespie claimed that Google fell victim to genericide, which is what happens when a trademark used to refer to a specific product becomes so colloquial that it starts to refer to the entire product category.⁵ For example, some previously trademarked products include now-common words like teleprompter, thermos, aspirin, escalator, cellophane, and videotape.⁶ These trademarks were destroyed because they became the exclusive descriptors of their product category to the point that sellers of competing brands could not compete effectively without using the trademark name.⁷ Likely for Google, the Ninth Circuit did not see it as an exclusive descriptor of all search engines.⁸ The appeals court said, “[e]ven 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.”⁹

So what can brands do to keep genericide at bay? For one thing, take all available preventative measures.¹⁰ For example, Google has published “Rules for Proper Usage” for its trademarks to prevent the public from using “Google” as a verb.¹¹ Following Google’s lead, other companies should actively campaign against misuse by constantly releasing informational materials to encourage consumers from abusing the brand name.¹² For example, Xerox releases advertisements stating that customers cannot “Xerox” a document, but they can “copy it.”¹³ Although actions such as those of Google and Xerox are not foolproof, they can at least be used as evidence against abandonment and to demonstrate that a company is taking an active role to preserve its trademark.

For now, the Google trademark is safe, since Gillespie fell short in presenting any evidence that the public is using “Google” as a general term which means to use internet search engines, as opposed to the mark specifically identifying the Google search engine.¹⁴ However, Google as well as other companies at risk of genericide should not take this lawsuit with a grain of salt, but should act to safeguard their trademarks.