You may have read that a court ruled that Google has not lost trademark protection for its GOOGLE trademark despite the frequent use of “google” as a verb that means to search the internet.
So does this mean it’s okay for you to use your trademark as a verb or a noun?
No. Doing so would be risky, because when people use the trademark as a verb or a noun, they might start to think your trademark is a “generic” term that describes all similar products or services rather than a term that identifies the source of a particular product or service.
ASPIRIN, for instance, used to be a trademark, but has lost its protection because the public began using it to describe acetylsalicylic acid, no matter who manufactures or distributes it.
This is contrast to BAYER, which consumers recognize as a source of acetylsalicylic acid.
Similarly, ESCALATOR used to be a particular brand of moving stairway but is now considered to mean any moving stairway.
Why, then, did the court rule that Google gets to keep its trademark rights?
The Ninth Circuit Court of Appeals held that GOOGLE still has trademark protection because consumers don’t use the word as a generic term for search engines. In other words, other search engines don’t call themselves “googles,” and consumers don’t refer to search engines together as “googles.”
The individuals who petitioned to cancel the GOOGLE trademark registration argued that the public’s use of “google” as a verb automatically renders GOOGLE generic.
The court disagreed, stating, “The mere fact that the public sometimes uses a trademark as the name for a unique product does not immediately render the mark generic.”
The question, the court said, is whether “the relevant public primarily understands a mark as describing ‘what’ the particular good or service is” or whether “the relevant public primarily understands a mark as describing ‘who’ a particular good or service is, or where it comes from.”
How can you protect your marks from becoming generic? First, despite the GOOGLE case, you should use your mark as an adjective modifying the product or service your mark covers instead of using it as a noun or a verb.
Also, you should always use the ™ or ® designation with your mark.
Please feel free to contact us if you have any questions about registering or protecting your trademarks.
