SEPTEMBER 2017 DEVOTED TO LEADERS IN THE INTELLECTUAL PROPERTY AND ENTERTAINMENT COMMUNITY VOLUME 37 NUMBER 8 THE LicensingJournal Edited by Gregory J. Battersby and Charles W. Grimes The Trouble with “Googling It:” Google’s Fight to Maintain Trademark Rights in Its Famous Name Jed Ferdinand and Olivia Ferdinand Jed Ferdinand is the founding member of also served as strong and enforceable trademarks Ferdinand IP, LLC, an intellectual property and for their owners. Over time, those terms became so licensing boutique law firm with offices in New popular and so synonymous with an entire category York, San Diego, Silicon Valley and Westport, CT, of products that they morphed into generic terms that and is part of the 24IP Law Group with offices in lost all legal protection. To place it into proper context Germany, France, and the United Kingdom. in terms of grammar usage, once a mark stops being Olivia Ferdinand is a student at Harvard used as an adjective by the general public to describe University who interns at the firm. a branded product, and is instead used as a noun or verb to describe an entire product or service category, the mark is susceptible to a declaration of genericide Trademarks are valuable property rights in today’s and concomitant loss of legal protection. global marketplace. Companies spend vast sums on Aspirin is perhaps the most famous example of marketing and advertising to build brand awareness genericide. Aspirin brand pain reliever was once the with the goal of increasing market share and, for some “Google” of its day. It was a thriving, protectable trade- of the most popular brands, developing licensing pro- mark for a product that dominated the pain reliever grams that generate substantial revenue worldwide. market. Bayer, the trademark owner, had the exclusive From a legal perspective, companies are encour- right to call the drug, acetylsalicylic acid, by its brand aged to invest in marketing and advertising to develop name, “Aspirin.” However, when Aspirin gained explo- trademarks that are both commercially strong and sive popularity as a pain reliever during World War I, legally enforceable. Indeed, famous trademarks typi- its acclaim was both a blessing and a curse. Bayer lost cally are entitled to the broadest scope of legal protec- its trademark in 1918 and lost a subsequent appeal in tion against competing brands and counterfeits. 1921. The court ruled that the public as a whole under- But is there a downside to fame? Can a trademark stood “Aspirin” to name the category of acetylsalicylic ever become too famous? The answer, surprisingly, is acid rather than its singular brand name.1 Since then, yes. Trademarks that lose a source-identifying func- Bayer has continued to sell Aspirin products, but a tion and over time become common terms that may wide variety of companies have also used the “Aspirin” describe an entire category of goods or services no name in branding their own pain reliever products. longer function as trademarks at all. They become The case of Aspirin demonstrates that when a generic terms that are no longer entitled to legal pro- trademark falls victim to genericide, the trademark tection. This phenomenon, known as “genericide,” owner loses all legal protections and the mark falls has important ramifications for trademark owners into the public domain. This is a nightmare scenario such as Google that face the paradox of their valu- for the trademark owner, as competitors are now free able trademarks becoming too famous. This article to use the term and the trademark owner is virtually discusses the history of genericide, a recent legal powerless to stop them. Sales of the generic product decision favorable to Google and the overall practical often fall as a result. impact of genericide on the licensing industry. Actions of Trademark Holders The History of Genericide to Prevent Genericide Long ago, brands such as Aspirin, Escalator, Trademark holders often implement strategies to Thermos, and Dumpster were household names that prevent the devastating occurrence of genericide. SEPTEMBER 2017 The Licensing Journal 1 First, companies develop “trademark awareness” including “cybersquatting” (which is the legal claim advertising campaigns to make the public aware of for domain piracy) and infringement.4 Google pre- the proper manner to depict the company’s valuable vailed in the domain arbitration and, as a result, the trademark. For example, Chrysler ran a targeted ad arbitration panel ordered Elliott to transfer all of his campaign when it was concerned that its famous domains to Google. “Jeep” brand may become generic. Chrysler’s ads Unfortunately for Google, the case did not end stated: “They invented “SUV” because they can’t call there. Elliott then took his fight with Google to them Jeep®.”2 This successfully shifted the Jeep brand Federal District Court in Arizona. He filed claims from labeling a category of cars to solely identifying to cancel Google’s trademarks under the Federal its own brand. Lanham Act on the ground that they had become In addition, virtually every company has some generic. In support of his claim, Elliott argued that variation of a “Trademark Usage Policy” in place to “google” is understood as a “generic term universally provide strict guidelines over the manner that the used to describe the act of internet searching.”5 public may use the company’s valuable trademarks. Elliott and Google both conducted marketplace For example, Google lists “Rules for Proper Usage” surveys to demonstrate how consumers understand of its trademarks on its Web site. The policy specifi- “Google” as a brand name and its usage in everyday cally outlines proper consumer usage of the “Google” conversation. Elliott conducted a “Thermos” survey mark: which put consumers in an imaginary situation by asking them: “If you were going to ask a friend to Use the trademark only as an adjective, never search for something on the Internet, what word as a noun or verb, and never in the plural or or phrase would you use to tell him/her what you possessive form. Use the generic term for the want him/her to do?” Fifty-one percent of people product following the trademark, for exam- responded by using the word “google” as a verb mean- ple: GOOGLE search engine, Google search, ing to search the Internet.6 Elliott interpreted this as GOOGLE web search. Don’t use Google trade- evidence that “Google” was used by consumers as a marks in a way that suggests a common, generic term rather than as a brand name. descriptive, or generic meaning.3 Google, in turn, conducted a “Teflon” survey that tested consumers understanding of Google as a brand Through these guidelines, Google hopes to prevent name or generic name. In this survey, 94 percent of consumers and the media from using the mark people identified Google as a brand name rather than “Google” in a generic fashion, such as “to google” or a common name.7 “googling it.” These rules of usage are critical from Based on the survey evidence, the Federal District a legal standpoint for companies to maintain legally Court ruled in favor of Google, confirming that even enforceable trademark protection. though the public may use “google” as a verb, it does not constitute generic use. The Court found that Google continues to serve a brand-identifying func- The Case of Elliott v. Google Inc. tion and is not understood by the public as a generic term for Internet search engines. Google has become a victim of its own commercial Elliott did not stop there. He then appealed the success and worldwide popularity. The company is adverse decision to the US Circuit Court of Appeals not immune to attempts by competitors and trade- for the Ninth Circuit in San Francisco. Elliott argued mark pirates to cancel Google’s trademarks on the on appeal that the lower court incorrectly applied ground that they have become generic of an entire the primary significance test and did not properly category of search engines. weigh the importance of “Google’s” usage as a verb. Google’s most recent legal challenge on this issue Under the primary significance test, for Google to be came in the case of Elliott v. Google Inc. The case generic, Google must be understood by the relevant began in 2012 when a man named Chris Gillespie public to describe “what” the particular service is (a acquired 763 domain names that included the term search engine) rather than “who” the service is (the “google” in some manner. Examples included “google- Google search engine).8 newtvs.com.” Google Inc. filed a domain name arbi- In a decisive victory for Google, the Ninth Circuit tration complaint to the National Arbitration Forum, ruled against Elliott and upheld the ruling of the one of the organizations that have been established district court. The Ninth Circuit found that there in the United States to handle domain name dis- were four possible ways to use the term “google”: putes. Google accused Gillespie of multiple claims, (1) a trademark labeling the Google search engine, 2 The Licensing Journal SEPTEMBER 2017 (2) a verb describing searching on the Google search internationally as well. Because all trademark rights engine, (3) a verb meaning searching on any Internet are territory-specific, decisions about genericide will search engine, or (4) a generic term for any search be made on a country-by-country basis. Xerox devel- engine. Because there was no indication that the oped advertising and marketing campaigns to edu- fourth meaning was the primary way that the public cate consumers about proper trademark usage of understood the word google, the court ruled that their brand all over the world. One Xerox campaign Google continued to serve a source-identifying func- instructed consumers to use Xerox as an adjective, tion and was not a generic trademark.