Google’s fate yo-yos over genericide case

NO MATTER how often you invoke a certain inter net search engine’s name when doing online research, Alphabet still owns the brand.

That’s the upshot of a US court’s decision this week rejecting the argument Google had become so popular as a verb it should lose its status as a protected trademark.

Genericide, as it’s known, is the curse of companies whose brands gain such strong currency in the marketplace they morph into product categories. Think of aspirin, escalator or yo-yo – but not Coke.

The fight over whether one of the world’s most valuable brands should be declared generic started when Chris Gillespie in 2012 acquired 763 internet domain names that included the word “google”.

After Google filed an objection with the board that referees domain-name disputes and accused Gillespie of “cybersquatting”, he and another man asked an Arizona court to cancel Google’s trademark on the grounds it’s a “generic term universally used to describe the act of internet searching”.

The judge didn’t buy the argument and on Tuesday, nei- ther did the US Court of Appeals in San Francisco.

The men hadn’t presented sufficient evidence the public thought of the word “google” primarily as a generic name for internet search engines, rather than as the brand of the Google search engine in particular, the judges said.

“The mere fact the public sometimes uses a trademark as the name for a unique product does not immediately render the mark generic,” Judge Richard Tallman said.

Tallman noted other household names, including CocaCola, had beaten back efforts to have their brands declared generic. Coca-Cola won a 1982 trademark-infringement case against a local restaurant that surreptitiously replaced customer orders for “a coke” with a non-Coca-Cola beverage. The restaurant unsuccessfully argued “coke” covered a generic category of softdrinks.

Jason Kravitz, a Boston trademark lawyer, said the appeals court’s decision reinforced how difficult it was for challengers to have brand names declared generic.

“These kinds of challenges are par for the course when a company has been successful enough to establish market dominance.” – Bloomberg.