Introduction

The term GOOGLE is one of the clearest examples of a trademark that has entered everyday language without, to date, losing its essential legal function. It is common to hear users say that they will “google” a person, a company, a product or a legal issue. For a trademark owner, this linguistic success may appear ambivalent: it reflects exceptional reputation, but it may also raise a risk of genericide.

In Elliott v. Google, the U.S. courts confirmed that the GOOGLE trademark had not become generic for internet search engine services. The case remains a key reference for distinguishing the popularity of a term from the loss of its legal distinctiveness.

Elliott v. Google: an attempt to cancel the GOOGLE trademark

The dispute arose after David Elliott and Chris Gillespie registered several hundred domain names incorporating the term “google”, often combined with trademarks, public figures or places.

Google first obtained the transfer of those domain names through UDRP proceedings. The domain name holders then sought to cancel the GOOGLE trademark, arguing that the term had become a generic verb meaning “to search the Internet”.

Under U.S. law, the analysis is based on the “ primary significance test ”. This consists in determining the main meaning of the sign for the relevant public. If the public still perceives the sign as an indication of commercial origin, the trademark may remain valid. In the Google case, the plaintiffs relied heavily on the verbal use of the term, but failed to prove that the public primarily understood GOOGLE as the generic name for search engines.

In a decision rendered on May 16, 2017, the U.S. Court of Appeals for the Ninth Circuit upheld the decision in favor of Google. The significance of the appellate decision may be summarized as follows:

  • The everyday use of a trademark in ordinary language is not sufficient, in itself, to cause its genericide.
  • The use of a trademark as a verb, for example “to google”, does not automatically mean that the trademark has become a common name.
  • The central criterion is the perception of the relevant public: it must be determined whether the sign primarily designates a commercial origin or a category of goods or services.
  • A very well-known trademark may therefore remain protected, even if it is widely used in everyday language.
  • The decision nevertheless reminds trademark owners of the importance of monitoring and controlling the use of their signs in order to prevent them from gradually becoming generic designations.

What is the approach under French law and European Union law?

French law and European Union law also recognize the mechanism of trademark genericide.

  • In France, Article L.714-6 of the French Intellectual Property Code provides that a trademark owner may be deprived of their rights where the trademark has become, through their own conduct, the usual designation in trade for the relevant product or service. In such a case, the trademark is no longer distinctive, as it no longer enables consumers to identify the commercial origin of the product or service concerned.
  • At European Union level, Article 58(1)(b) of Regulation (EU) 2017/1001 provides for revocation of an EU trademark where, because of acts or inactivity of the proprietor, the trademark has become the common name in the trade for a product or service for which it is registered.

What best practices should be adopted to protect a strong technology trademark against genericide?

The GOOGLE case is particularly useful for companies active in artificial intelligence, SaaS software, digital platforms, mobile applications, marketplaces and specialized search engines. In these sectors, a service may quickly become part of everyday vocabulary.

For trademarks known to a significant part of the public, it is essential to regularly remind users that they are not common names, but trademarks designating the products or services they cover, in order to prevent them from becoming generic. What form can this strategy take?

Companies may

  • Use the trademark as an adjective and associate it with a generic designation of the product or service;
  • Publish trademark usage guidelines;
  • Correct partners’ communications;
  • Monitor domain names and online content that present the trademark as a generic term.

  • To learn more about best practices for preventing the genericide of your trademark, we invite you to read our previously published article.

Conclusion

The GOOGLE trademark remains valid because it has not been shown that the public primarily understands it as the generic name for search engines. The use of a trademark as a verb may create a risk, but it is not sufficient, in itself, to establish genericide.

The broader lesson is that the more successful a trademark becomes, the more carefully it must be managed. Trademark owners must monitor uses, correct generic uses and preserve the sign’s function as an indication of commercial origin.

Dreyfus & Associés assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Q&A

Is trademark genericide irreversible?

Not necessarily, but it is difficult to reverse once it has taken hold. The more a sign is perceived by the public as a generic term, the harder it becomes to restore its distinctive function. This is why prevention is essential.

Can a trademark become generic only for certain goods or services?

Yes. Genericide is assessed in relation to the goods or services concerned. A trademark may lose distinctiveness for a specific category, while remaining protected for other activities if the public continues to perceive it as an indication of commercial origin in those areas.

Should a start-up be concerned about genericide from the launch of its trademark?

Yes. Even if the risk may seem remote at the beginning, good practices should be implemented from launch: choosing a distinctive trademark, ensuring consistent communication, using appropriate trademark notices, monitoring usage and educating marketing teams. It is easier to prevent banalization than to correct it once it has become established.

Can a company encourage the use of its trademark while avoiding banalization?

Yes, but it must strike the right balance. A company may naturally seek to make its trademark visible and memorable, but it must avoid encouraging its use as a common name. Communication campaigns should therefore strengthen the association between the sign and the company, rather than presenting the trademark as the generic name of the service.

Is a very famous trademark more exposed to the risk of becoming generic?

The more a trademark becomes dominant in its sector, the more likely it is to be used by the public to refer to an entire category of goods or services. Reputation is therefore a commercial asset, but it also requires increased vigilance to prevent the trademark from becoming the common name of the product or service concerned.