Google & Escalators; How to avoid trademark “genericide”

What does Google and an escalator have in common?  Both were at risk of losing their trademark.  How are they different?  Escalators fell victim to “genericide.”

A trademark is an important asset to a company, as it helps to define your company’s image.  But, no matter how strong your trademark is, it can still be at risk of becoming “generic” and losing is trademark protection. 

A generic term cannot be protected as a trademark.  For example, you cannot have a brand of soda pop called “Soda Pop.”  Since the term “soda pop” describes an entire type of product and does not refer to a specific brand, you cannot prevent other people from using that term.  But, what some people forget, is that a term which was once unique and protectable can eventually be considered a generic term.

One classic example is the trademark “escalator.”  When it was first invented, “Escalator” was a made-up term for a brand or making of “moving staircases.”  However, over time the term became associated with all moving staircases and not just that brand.  In fact, the escalator’s trademark owner even used the term in a generic way in some of its internal documents.  With that, the term has become generic and cannot be a protected trademark for anyone.  Something similar happened with “cellophane” and “aspirin.”

In the past several years, a lawsuit was brought to have the term “Google” be considered a generic trademark and lose its trademark protections.  After a long battle, the 9^th Circuit Court of Appeals ruled that “Google” had not become generic and was still a protected trademark.[1] 

It is common for people to say they will “google” something, referring to searching the internet.  However, the court made a distinction between using “google” as a verb and using “Google” to refer to all internet search engines.  In order for a term to become generic, the public must use that term as a generic name for all goods or services of a particular type.  The court held that people in general still though of the term “Google” as referring to a particular search engine, and not search engines in general.  Thus, it is safe for now.

If you own a business, it is important to take steps to ensure your trademark does not become too common place or generic.  Speak with an experienced attorney with the Goosmann Law Firm, PLC, in our Omaha, Sioux City, or Sioux Falls offices to discuss the steps you can take to protect your value intellectual property.

[1] Elliott v. Google, Inc., 860 F.3d 1151 (9^th Cir 2017)