WE MAY ALL GOOGLE, BUT IT IS STILL A TRADE MARK

Yes we may all use ‘google’ as a verb, and say that we’re going to ‘google’ something when we simply mean that we’re going to search for it using whatever search engine we happen to favour. Yet Google is, for most people, still the name or trade mark of a specific search engine. Which means that the name has not become generic, and the trade mark registrations are valid.

So said a US court in Arizona, which had to deal with an attack on Google trade mark registrations brought by two individuals who were miffed by the fact that Google had successfully attacked domain name registrations that they had obtained for names comprising the word ‘google’. The US court seems to have been influenced by the fact that a survey submitted by Google showed that 94% of people regard Google as a brand name rather than a common word. The court’s reasoning is set out in this quote: ‘It is contrary to both the letter and spirit of trademark law to strip a mark of legal protection solely because the mark – cultivated by diligent marketing, enforcement and quality control – has become so strong and widespread that the public adopts the mark to describe that act of using the class of products or services to which the mark belongs. As one scholar has stated, “top-of-mind use of a trademark in its verb form, far from indicating the mark’s generic status, may well indicate the enduring fame of the brand”’.

Interesting! Because normally verb usage of a trade mark – which is something that smart companies avoid themselves and try to discourage in others – is seen as the kiss of death, a significant first step on the way to genericism. But perhaps it is unfair to punish a company for its success, especially one that has, I understand, tried very hard to look after its trade mark – it’s reported that Google is assiduous when it comes to making sure that dictionaries don’t list ‘google’ as a verb for internet searching. That is, of course, because Google doesn’t want its most valuable asset to go the way of escalator, aspirin, nylon and many others – trade marks that were lost and became generic words that anyone can now use.

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