Escalator…aspirin…yo-yo… do you know there was a time when these names referred to a specific product within a class. That is, escalators referred to a particular type of moving stairs not all moving stairs. Asprin referred to a particular type of painkiller instead of being a short hand way of referring to any over-the-counter pain drug. So what happened? Well, the trademark for the respective companies became “generic”.
As we discussed in our intellectual property cheat sheet, a trademark allows you to legally protect your products, service marks or trade names. As such, it allows customers to differentiate between your business and those of your competitor in the same field. That is why, once you receive a trademark, it becomes unlawful for another business to use a slogan, a logo or name in connection with a good or service that is confusingly similar to yours. Once the public starts using your trademark name to refer to the entire class of goods or service (not yours in particular but also those of your competitors) then your trademark has become generic. As Eric Goldman points out, though that may mean you’ve hit the,
“big-time, where everyone knows the service’s name and thinks of that name first. The reality is that trademark genericide means…[you lose] control over the name; [you] can’t suppress spammers, third party developers or competitors from doing whatever they want with the name.”
And, this is the claim made by the plaintiff in a recent case against Google. Per Goldman, they,
“contended that ‘the GOOGLE mark has become generic because a majority of the public understands the word google, when used as a verb, to mean the indiscriminate act of searching on the internet without regard to the search engine used.’”
The court found in favor of Google because:
“even if Google’s opponents proved that a majority of consumers understand…Google as a verb for Internet searching… ‘undisputed evidence is that the consuming public overwhelmingly understands the word google to identify a particular search engine, not to describe search engines in general.’”
So, in essence, even if consumers use your trademark as a verb, so long as they think of this trademark as a noun representing your good and/or service only, your trademark is secure.
But what can we learn from Google about protecting our own trademark? First and foremost we have to make efforts to proactively monitor and defend our mark. Google takes active steps to ensure that its mark does not become generic. One approach is to convince “dictionary authors to treat the term “Google” as a trademark, not a generic noun or verb”. Second, as Quittner shows, we can also learn from companies like Ikea who are vigilant about monitoring and stopping other entities from using their name (even Ikeahackers.net, a blog mostly devoted to the adulation of the Swedish furniture maker's products, got a cease-and-desist letter).
In essence, when it comes to trademarks, it is a case of taking care of it or losing it. Because Google treated its trademark with care, the company was able to protect a valuable asset worth up to $113B in court.
