The Google Decision: A [Brand Name Redacted] Bandage for Genericide

Aspirin. Escalator. Trampoline. Three generic words with seemingly nothing in common. Those words, along with many others, were once legally protected trademarks. When a company’s mark becomes the generic name for its product or service, it can lose its trademark registration which can be extremely damaging to the company. A recent 9th Circuit decision upholding Google’s trademark may help other trademark owner’s avoid suffering a generic fate. Genericide Under Section 14 of the Lanham Act registration of a mark can be canceled if it “becomes the generic name for the goods or services for which it is registered.”  A key purpose of trademark law is to enable consumers to identify the source of a good or service. If a mark has become the generic term for the good or service, it no longer serves as a source identifier and may no longer be protectable as a trademark. As Jacqueline Stern stated, “The traditional standard for determining genericness is based on how the public perceives the contested mark—whether consumers understand the mark to mean only a type of product, or whether they recognize the name as being source indicative.” At first glance, it may seem that genericide is largely in the hands of consumers as companies only have so much control over how the public uses their brand. However, the Google decision indicates that there is more that companies can do. Elliott v. Google In 2012, the Plaintiffs registered over 700 domain names containing the word google prompting Google to file a complaint in compliance with the Uniform Domain Name Dispute Resolution Policy. The Plaintiffs in turn argued that “Google”...