Thermos. Yo-Yo. Escalator. Zipper.
All are examples of trademarks that have seen their legal protection disappear in the United States. These innovative terms have over time become so associated with products that the terms are deemed generic and thus not necessarily deserving of intellectual property protection.
Is Google there now?
David Elliott has argued in a federal complaint in Arizona that the term Google has become so associated with Internet searching that it is not entitled to legal protection. So, what exactly is Mr. Elliott’s beef?
Well, fairly recently Google won a case that compels Mr. Elliott to transfer to Google hundreds of Web site domain names he had registered that included the trademarked term “Google” within them, such as “googledonaldtrump.com.” He wants to use such domain names to support a business model that he has developed.
In his complaint, Mr. Elliott states that origin of the term “Google” is the word “Googol,” a mathematical term for 1 followed by 100 zeros.
He alleges that since the search engine company adopted the term “Google,” it “has become a world-wide generic term for internet searching.”
Mr. Elliott furthers his point by noting that the Collins English Dictionary, dictionary.com, and Wikipedia all recognize “Google” as a transitive verb.
He states that the American Dialect Society voted “Google” as the word of the decade, and in so doing identified its meaning as “to search the Internet.”
And Mr. Elliott argues that company co-founder Larry Page used “Google” as a verb when communicated to a mailing list “Have fun and keep googling!”
Mr. Elliott complains that Google is attempting to exercise exclusive rights and control over the “generic” verb “Google” via its registered trademark. In so doing, the company allegedly seeks to become the “de facto regulator” for uses of the term “Google” for its own monetary benefit.
At the end of the day, Mr. Elliott seeks cancellation of the company’s federal trademarks relating to the term “Google.” This way Mr. Elliott (and perhaps others) could freely use “Google” as a generic term without legal protection.
Obviously, Google cares about its federal trademarks and its branding around those marks. Accordingly, it is highly likely that Google will fight Mr. Elliott hard in court seeking to prove that it has done everything possible to protect its “Google” trademarks and that the term “Google” has not become generic.
Eric Sinrod is a partner in the San Francisco office of Duane Morris LLP (http://www.duanemorris.com) where he focuses on litigation matters of various types, including information technology and intellectual property disputes. His Web site is http://www.sinrodlaw.com and he can be reached at ejsinrod@duanemorris.com. To receive a weekly email link to Mr. Sinrod’s columns, please send an email to him with Subscribe in the Subject line. This column is prepared and published for informational purposes only and should not be construed as legal advice. The views expressed in this column are those of the author and do not necessarily reflect the views of the author’s law firm or its individual partners.