San Diego, Calif. – May 23, 2012 – On Monday, May 21, 2012, New York businessman David Elliott filed a lawsuit in the United States District Court for the District of Arizona against Google Inc. to cancel the “google” trademark (CV-12-1072-PHX-NHB). In this classic David versus Goliath clash, Mr. Elliott claims that the word “google” has become generic. The complaint claims the word “google” is no longer exclusively used to identify the company’s product or services. Instead, the word “google” is now commonly used worldwide in most languages as a verb meaning “to search for something on the Internet.” The loss of trademark protections due to a mark losing its distinctiveness is called “generification” or “genericide.”
According to Mr. Elliott’s trial attorney, Richard M. Wirtz of Wirtz Law APC, “‘Google’ is not the first term to be ‘genericized.’ Other famous trademarks that were similarly genericized include ‘aspirin,’ ‘escalator,’ ‘zipper,’ ‘thermos,’ ‘kerosene’ and ‘yo-yo.’ Generification is a risk of great success.”
Although a handful of companies like Kleenex and Xerox have been able to reverse the genericide of their marks through aggressive and protracted ad campaigns, co-counsel for Mr. Elliott, Thomas Foster of TDFoster believes, “As a practical matter, it’s probably too late for the company to undo the generification process. In its own 2010 Annual Report to its shareholders, the company acknowledged that the word ‘google’ could become synonymous with ‘search,’ and stated, ‘If this happens, we could lose protection for this trademark.’”
The dispute began when Mr. Elliott registered several hundred domain names containing the generic verb “google.” The domains were intended to be used as part of a new Internet-based business that will promote commerce, community, relationships, personal health, charity and more. The suit alleges that although several hundred, if not thousands of other domains containing the verb “google” have been registered by others, Google Inc. singled out Mr. Elliott and obtained an order pursuant to ICANN on May 10, 2012, requiring that the domain names be transferred to Google Inc. He was forced to bring this action in order to protect his domain names from being taken by Google Inc.
“This is not a claim for damages,” said Mr. Elliott. “I am simply trying to protect my rights against a company that is attempting to unfairly control the use of a generic word: ‘google.’”
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