How Brands Like Google Try to Avoid Trademark Genericide

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Jeffrey Johnson is a legal writer with a focus on personal injury. He has worked on personal injury and sovereign immunity litigation in addition to experience in family, estate, and criminal law. He earned a J.D. from the University of Baltimore and has worked in legal offices and non-profits in Maryland, Texas, and North Carolina. He has also earned an MFA in screenwriting from Chapman Univer...

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UPDATED: Sep 23, 2015

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Alphabet LettersGoogle had a potential trademark embarrassment recently when it turned out the mark ALPHABET is already in use by carmaker BMW.

As the New York Times reported, “Alphabet” is the name Google’s founders have chosen for a newly-created parent company that will encompass the Google search businesses as well as other businesses.

The company now has many other business ventures in addition to search, including ones dealing with:

  • Thermostats (Nest)
  • Longevity (Calico)
  • Drones
  • Pharmaceuticals
  • Venture capital

According to a blog post by Google CEO Larry Page,

We liked the name Alphabet because it means a collection of letters that represent language, one of humanity’s most important innovations, and is the core of how we index with Google search.

However, the domain name alphabet.com already belongs to BMW, and is used by a subsidiary that offers fleet management solutions. Quite a few other companies also use variations on the name.

Google is using the domain name abc.xyz for the new company. (I, for one, didn’t even know there WAS a .xyz domain!)

As the Times notes,

Just because one company uses a name does not mean another company cannot use it. Trademark infringement occurs if another company’s use could create confusion with consumers, according to the United States Patent and Trademark Office.

Like BMW, Google is involved in the auto industry, with its famous driverless car project – hence a potential for confusion.

Genericide

Some have suggested that Google adopted the Alphabet name with a view toward the day when “Google” loses its status as a trademark.

“Genericide” (or genericization) is the process of a former brand name or trademark becoming generic.

As the BBC puts it,

If consumers understand the trademark to be the name of the product itself, as opposed to identifying its exclusive source, that trademark loses its distinctiveness.

For example, the following words once referred to specific products from specific companies, but now are used to refer to general categories of things:

  • Aspirin
  • Cellophane
  • Thermos
  • Escalator
  • Dry ice
  • Trampoline
  • Yo-Yo
  • Heroin

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Fighting to Save the Mark

Some trademark owners are fighting to keep their marks from becoming generic. For example, Johnson & Johnson is trying to save “Band-Aid” and Kimberly-Clark is hoping to preserve “Kleenex.” Tiffany is fighting Costco over the latter’s “Tiffany”-style engagement rings.

Other endangered marks include FedEx, Photoshop, Skype, TiVo, and Xerox – all of which are commonly used as generic verbs (“I’ll Skype you later”) in addition to trademarks.

Twitter’s IPO filing reads:

There is a risk that the word ‘Tweet’ could become so commonly used that it becomes synonymous with any short comment posted publicly on the internet, and if this happens, we could lose protection of this trademark.

Some trademark owners have taken out ads in Writer’s Digest and other publications reminding writers not to use marks generically. For example, Xerox ran ads in 2003 that said “When you use ‘Xerox’ the way you use ‘aspirin,’ we get a headache.”

Companies also have their lawyers send out cease-and-desist letters when others misuse their marks.

According to the Times, Google is “in no imminent danger of losing its trademark protection. However,

given the popularity of Google’s brand, and how it has entered mainstream English usage as a verb (to google) and participle (googling), it may only be a matter of time.

 

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