Its #IPThursday again good people!!
The following thread is about the story of the Google trade mark and how becoming very very famous can actually make you lose your trade mark.
The following thread is about the story of the Google trade mark and how becoming very very famous can actually make you lose your trade mark.
Our story begins in 1997, 3 PhD students at Stanford University, namely, Larry Page, Sergey Brin and Scott Hassan (not in pic) were working on a project together. Their idea was to write code for a search engine that would be different from what already existed.
Hassan wrote most of the code, however, he left before the company was actually formed. The search engine was initially called “PageRub” and it would rank the search results in order of importance and the manner in which sites linked back to the original site.
Other search engines at the time ranked the results in order of how many times the searched word appeared on a site.
After Hassan left, Brin and Page named the search engine “Google”. The name originates from the misspelling of the word "googol", which is the number 1 followed by 100 zeros (computer geeks probably know what this means, I’m just a legal nerd 😂).
Many people were impressed by their search engine and they got some funding from a few investors who gave it a thumbs up, including Jeff Bezos. This allowed them to grow their business, get offices and push he Google brand.
Google grew to become to the most popular search engine and the most visited website in the world. They went public in 2004, selling their shares at an auction. The money was now really coming.
Over the years they would acquire a lot of companies which are held under its conglomerate Alphabet Inc. These now include YouTube, most of Motorola’s patents and a few others.
It was during this period that the word Google, a registered trade mark made it into everyday language. Oxford Dictionary and Merriam Webster provided a definition of the word “google” as a verb “to search the Internet”. This will be very important later in this story.
Alphabet Inc is now one of the richest corporations in the world. Forbes describes the Google trade mark as 'Google's single most valuable asset,' its value is in the order of US$113 billion. This brings us to our actual dispute....
In 2012, a man named Chris Gillespie registered 763 domain (website) names incorporating the term “google” with other brands, persons, and products.
This did not sit well with Google at all. They filed a complaint with the National Arbitration Forum. They argued that the registration of the domain names was a form of cybersquatting.
Cybersquatting is when you register a domain name which happens to be someone else’s trade mark in bad faith and with the intention of directing traffic to your site and profiting from it yourself. It is not allowed.
The NAF agreed with Google and held that the domain names should be transferred to Google.
Gillespie was not going to take this lying down. Him and a friend of his named David Elliot decided to go after Google in court. Elliot took lead in pursuing the case.
Gillespie was not going to take this lying down. Him and a friend of his named David Elliot decided to go after Google in court. Elliot took lead in pursuing the case.
Elliot argued that the word Google was now generic and no longer qualified to be a trade mark. I should probably take this chance to explain the definition of a trade mark....
A trade mark is a sign that is capable of distinguishing your goods/services from those of others. (ie.) Coca-Cola serves to distinguish it from other Sodas. In this case, the google name serves to distinguish their search engine from others.
The first commandment of trade mark law is that words that are descriptive, common in that trade, geographical or generic, amongst other things are NOT registrable as trade marks. (Side-note: its tempting, but avoid words that are descriptive when choosing your business names).
Once a trade mark becomes generic and non-distinctive, it no longer fits the definition of a trade mark and ultimately loses its protection under trade mark law. We call this process “Genericide”. Remember the word, Genericide.
Anyways, Elliot and Gillespie took the matter to a district court. They pointed out that many dictionaries now recognize the word google as a verb (to conduct an internet search) and so they should be allowed to use it. People will say “google it”, which means its now a verb.
The District Court ruled in favour of Google and Elliot took the matter to the US Supreme Court on Appeal. He really wanted Google to lose its trade mark.
In the Supreme Court, Elliot argued that the Google trade mark is now a generic word and that the ultimate test should be whether the public uses the word Google as a verb to describe searching the internet or as a brand belonging to someone.
Next, he presented more evidence to support his claim. This included instances where people used words like “googling” and “googled”. For example, Zulu people say “Hambo Googlisha”. I’m sure that would have helped as evidence too😂. Think about how you’d say it in your language!
Google admitted that the word is now used as a verb. However they argued that it does not mean its become generic. Basically, people have the choice of many search engines, but they choose google for the results order and their trade mark is important for that.
The court agreed with Google and held that that it is contrary to the spirit of trademark law to strip a mark of protection because it has become so strong and widespread that the public adopts the mark to describe that act. The Google trade mark survived death by genericide.
My opinion (feel free to disagree with me) Google should have lost their trade mark. The word google has become synonymous with searching the Internet, regardless of the search engine you’re using. Very few people actually say “do an Internet search” its simply “google it”.
All over the world, in different languages. It’s unfortunate, but I do think this is consistent with trade mark law. Generic terms, simply cant have protection. I have an example, although slightly different, that backs me up...
“Century City” is the name given to the developing area surrounding Canal Walk Mall in Cape Town. The neighborhood itself is actually Montague Gardens. The name Century City was a registered trade mark by its developers.
However, over time it grew, people opened shops, offices, garages and many started using the name Century City as a geographical description. After a court case, their trade mark was expunged as it was no longer distinctive in the eyes of the public. Anyone could now use it.
Other examples of trade matks that died: ESCALATOR was a trade mark, it is now generic. TRAMPOLINE too, now anyone selling that item can use it. YO-YO was the name of a brand, its now the name of a toy. Gideon Sundback invented a fastener and called it a ZIPPER, now everyone does
The above companies have all lost their trade marks to genericide. The following are actually well on their way there. JACUZZI is a trade mark owned by a company, not for every heated pool. Jeep is not a type of car, it is a brand. Vaseline is a type of Petroleum jelly Africans!!
A company called Velcro created the hook and loop fastener (that hard/soft strap that make the “shaa” sound when you pull it. Over the years people started calling every “hook and loop” fastener a Velcro, the company’s trade mark.
So their lawyers made this video begging people not to call it Velcro or else they’ll lose the TM. Once people start using a term descriptively, the trade mark ceases to function in accordance to the definition I mentioned earlier in this thread.
Every country has trade marks that have now become synonymous with a product, especially in Africa. Durawall is a trade mark belonging someone , so not every wall is a Durawall Zimbabweans. South Africans, not every chewing gum is a Chappies. Nor, every fabric softener Sta-Soft.
So I think Google has fallen victim to genericide and is now a verb that is no longer distinctive. This case has made us ask a very important question, Mzwakhe Mbuli alredy asked it, but What is Google?
Fun exercise, @ me drop a comment with popular brands that have become associated with a product! Be it from your home country or anywhere!
Big Lesson: There is a heavy price to too much fame when it comes to trade marks. Google almost (should have) lost their trade mark. Companies should do what Velcro did, tell the public to use your trade mark properly. Stay Safe Good People!!! ❤️💛💚
