Trampoline, Thermos, Sellotape, and Escalator are just a few examples of words that used to be protected by trademark laws in the US – until they became synonymous with the respective product or service they provided, persuading courts to term them as generic, and stripping away their legal protection.
A petition was filed last week with the US Supreme Court on behalf of David Elliot and Christopher Gillespie, asking the apical court to review the ruling made by the 9th US Circuit Court of Appeals in the case of Elliot v. Google.
The case goes back all the way to 2012 when Gillespie registered 763 domains names with the word ‘google,' including names such as “GoogleDisney.com,” “GoogleBarackObama.com,” and “GoogleDonaldTrump.com.” Google, of course, claimed that the domain names were infringing upon its trademark, and won the case with an arbitration panel ordering the forfeiture of said domains.
In an attempt to invalidate Google’s trademark over its name, Gillespie then sued the company in the US Court of Appeals for the 9th Circuit, arguing that the word "google" was commonly used as a verb by referring to examples such as T-Pain’s Bottlez where the rapper asks listeners to “google” his name; the court, however, stated:
“We will not assume that T-Pain is using the word “google” in a generic sense simply because he tells listeners to ‘google [his] name.’ T-Pain, Bottlez, on rEVOLVEr (RCA Records 2011). Without further evidence regarding T-Pain’s inner thought process, we cannot tell whether he is using 'google' in a discriminate or indiscriminate sense. In this way, many of Elliott’s admissible examples do not even support the favorable inference that a majority of the relevant public uses the verb 'google' in a generic sense.”
The court further referred to an older case, quoting that a trademark isn’t termed as generic “until the trademark has gone so far toward becoming the exclusive descriptor of the product that sellers of competing brands cannot compete effectively without using the name,” and stated that the word “google” was not how people referred to other search engines:
“Elliott must show that there is no way to describe ‘internet search engines’ without calling them ‘googles.’ Because not a single competitor calls its search engine ‘a google,’ and because members of the consuming public recognize and refer to different ‘internet search engines,’ Elliott has not shown that there is no available substitute for the word ‘google’ as a generic term.”
In the end, the court ruled in favor of Google, stating that “verb use does not automatically constitute generic use”:
“A claim of genericide must relate to a particular type of good. Even if we assume that the public uses the verb 'google' in a generic and indiscriminate sense, this tells us nothing about how the public primarily understands the word itself, irrespective of its grammatical function, with regard to internet search engines.”
In their petition to the US Supreme Court filed last week, Elliot and Gillespie claim that the lower court’s decision is based on an outdated precedent as “verbing” of words – and therefore trademarks – is now a common practice:
“We now refer to magazine cover photos as “photoshopped”; we 'windex' our windows to remove streaks; we 'xerox' exhibits; we 'rollerblade' down the street on our inline skates; we 'wite-out' the mistakes in a term paper; and we read a news article about the police 'tasering' a resistant suspect. This appropriation by the public is not something to be prevented; rather, it is something to be encouraged. It fills holes in the language created by the rapid progress of our species, allowing for more efficient and effective communication.”
Unlike the lower courts, the US Supreme Court holds almost complete discretion over what appeals it chooses to hear; the apex court typically only accepts cases when there are major conflicts in decisions made by the lower appeals courts, or if there is a precedent to be set. It will be months before it decides whether to accept the appeal.
Jet Ski, Bubble Wrap, Breathalyzer, and Band-aids, are just a few brands that still hold their trademark and yet are used as generic terms; ‘Google’ may become one such – or may not – but whatever the ruling may be, it might just be significant enough to set a precedent.