David Elliot, from Arizona, owned 750 websites with domains like ‘googlegaycruises.com’ and ‘googledonaldtrump.com’ among many others. His argument was that he needed to use the word ‘google’ because he was developing an internet based business that will promote charity, commerce, community, relationships, personal health etc. He further stated that he did not register the domain names in the hope of attracting internet users who are seeking to avail the company Google’s specific search engine service. In fact, the users who wanted to search for a topic, typed the word ‘google’ and came across Elliot’s websites. He had even spelt the word ‘google’ correctly in all the domain names, when he could have misspelt the same in order to create confusion among the users.
Google applied for its first trademark in 1997 and since then it has received a number of certificates covering its mark. On July 8, 1998, one of the co-founders of Google, Larry Page himself used the word ‘Google’ as a transitive verb when he wrote on a mailing list- ‘Have fun and keep googling!’
The District Court of Arizona ruled the case in favour of Google, forcing Elliot to hand over all the domain names to Google.
Elliot, now has sued Google, claiming that they should not be allowed to use the word ‘Google’ as its trademark anymore since ‘google’ means ‘search on the internet’, which made it a common transitive verb. His complaint states that the American Dialect Society declared it to be the ‘word of the decade’. He further claims that in 2010, Google itself had claimed that it would lose its trademark if the word ‘google’ was used synonymously for any search.
If consumers start using a trademark as a common word, then it becomes a generic term. A trademark or service mark that becomes generic in a particular country, is no longer entitled to protection since it is freely available to use.
There are many well known cases where certain brands could not hold on to their trademark. In Bayer Co., Inc. v. United Drug Co., 272 F. 505, ‘aspirin’ was held generic (in the United States) for acetylsalicylic acid pain reliever. But it was still protected in about 80 countries. Bayer also lost its case to protect its Trade Mark ‘Heroin’. Other brands like Kleenex and Xerox tried to save their marks, but in vain, since people commonly ask for a Kleenex instead of a tissue and for a xerox when they want to photocopy something. Band-aid did the same with bandages. In Haughton Elevator Co. v. Seeberger (Otis Elevator Co.), 85 U.S.P.Q. 80, ‘escalator’ was held as a generic term for ‘moving staircase’. In King-Seely Thermos Co. v. Aladdin Indus Inc., 321 F.2d 577, ‘thermos’ was held to be a generic word for vacuum-insulated bottles. In DuPont Cellophance Co. v. Waxed Prods. Co., 85 F.2d 75, ‘cellophane’ was held generic for transparent cellulose sheets. In Pilates, Inc. v. Current Concepts, Inc., 120 F. Supp. 2d 286, ‘pilates’ was held generic for a form of exercise.
Now, Google needs to prove that users associate the word ‘google’ with the company and not as a transitive verb in itself.
About the Author: Ms. Madhuri Iyer, Trade Mark Associate at Khurana & Khurana and can be reached at: Madhuri@khuranaandkhurana.com