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Google, Zippers, and Quirky Trademark Law

Trademark SymbolGoogle is no stranger to litigation, but it now faces an unusual claim to cancel its trademark registration. The aptly named plaintiff David Elliott squares off against the Google Goliath with an argument based on dictionary definitions and case law– that the word “Google” is now used so ubiquitously as a verb meaning “to search the internet” that Google’s trademark should be canceled. Mr. Elliott hopes to cash in on an unspecified business venture that involves the use of over 750 domain names, including such gems as www.googledonaldtrump.com.

While this case might seem a little silly at first glance, it’s worth noting that numerous big trademarks have been “genericized” over the years; these include some very recognizable products that most people don’t realize were ever trademarks in the first place: zipper, aspirin, escalator, and the ever popular videotape. In each of these cases, and many others, the biggest deciding factor was the trademark in question’s listing in dictionaries as a commonly used word not directly associated with only a specific brand or trademark. Our upstart plaintiff has indeed compiled a list of several dictionaries listing “google” as a verb meaning “to search the internet,” as well as pointing to the American Dialect Society’s 2010 selection of “google” as the word of the decade. Mr. Elliott also points out a research report that claims there are 218 forms of the word “google” in 19 languages, including an impressive 34 forms in German alone.

Google’s lawyers note that they have consistently worked to ensure dictionaries including the word “google” write the definition as “to search the internet using the Google search engine.” Not all of the case law is against Google either– for every zipper, escalator, and aspirin there is also a Band-Aid®, Xerox® , and Chapstick® successfully defending its trademark against ever-encroaching generic usage. For now, the intrepid plaintiff has been forced to turn over his domain names to Google, but his long-shot case may actually end up having big repercussions for the search giant.

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