As I’ve discussed previously, one way for trademark owners to protect the rights in their brands is to file UDRP domain name enforcement actions to acquire third-party domains that incorporate their trademarks. Big companies do this against cybersquatters all the time, and it’s really just basic good business and legal policy to take an active approach to protecting your brands online.
Google, Inc., of course, is no different. In fact, it recently filed a UDRP action against a U.S.-based individual who registered several domain names incorporating the company’s famous trademark. Apparently the individual has plans to launch a search-based Internet empire using domains that contain “Google” followed by a possible search term—the idea being that “Google” is a verb meaning “to search the Internet,” so www.googleunder30ceo.com for example would be a place to search for information about Under30CEO.
Interestingly, however, instead of going quietly into the night, the domain name registrant filed a lawsuit against Google, Inc., claiming that the search giant has lost exclusive rights in the Google® trademark.
The basic premise for the lawsuit is simple (though not as simple as some people make it out to be): Trademark owners can lose their exclusive rights if their trademark becomes a “generic” term. In other words, if you don’t do a good job protecting your trademark and everyone in the world starts using as something other than a source-identifier for your business, eventually you will be deemed to have lost the battle – and to have lost your rights in your trademark.
This is why companies like Xerox Corp. actually take out ads that are intended specifically to curb improper use of their trademarks. For example, one famous (at least among trademark circles) Xerox ad states:
“You can’t Xerox a Xerox on a Xerox. But we don’t mind at all if you copy a copy on a Xerox® copier.”
The message here is clear: Don’t let people start using your trademark as a verb or substitute for a common noun—that’s not what trademarks do, and that’s not what trademark protection is about.
Perhaps as a result of its trailblazing, ubiquity and industry, Google, Inc. has been uniquely susceptible to this issue. Although I counsel my clients against it, I don’t know how many times I’ve heard “just google it” in mainstream media. While I suspect the lawsuit is a long shot, it should probably serve as a warning shot to Google, Inc.’s trademark counsel – particularly in light of the widespread misuse of the Google® mark.
Of course, becoming famous is the main point of building a strong trademark. But, development efforts should be accompanied by a measure of restraint and long-term strategy. Imagine if anyone and everyone could advertise a “Google” business. Now, imagine if everyone could advertise under your name. What are your thoughts on that?
Jeff Fabian helps business owners protect their intellectual property so that they can stay focused on running their businesses.
This article is provided for informational purposes only, and does not constitute legal advice.
