The GOOGLE trademark is still firmly in the grip of its owner Alphabet Inc. even though 'to google' is the ubiquitous vernacular for 'to conduct an online search', but a QUT data scientist says this familiarity could more negatively affect consumers than other trademarks in the same position.
- Google promotes itself as THE search engine eg a multi-billion dollar deal with Apple makes Google the default search engine on Apple devices
- Who knew? Jet Ski is not a generic term but just a brand of personal watercraft.
- The GOOGLE trademark functions as a generic term for internet search for some people but not enough to lose its trademark under current law
- Consumers who mistake GOOGLE for the generic term for internet search may have their search for all categories of goods and services affected – not just one
- 'Super-generic' trademarks such as Google should have a lower bar to 'genericide' – the cancelling of trademark protection when a brand name becomes generic
Working in collaboration with the School of Information Systems, QUT Momentum visiting fellow Dr Cameron Shackell said the world was operating under trademark laws written before the internet came along when no one envisioned trademarked services that provided search at a global level.
"Trademarks such as GOOGLE have the potential to be 'super-generic' because they are involved in search – the very function trademarks themselves are meant to help us with," he said.
"The bar should be lowered to make it easier for 'super-generic' trademarks to be cancelled via 'genericide' – a term used for losing trademark protection when a trademark becomes a generic term in everyday language.
"For example, an original name for a trampoline was a rebound tumbler and people used to indulge in the sport of rebound tumbling until TRAMPOLINE became the trademarked name for a particular brand of, well, trampolines.
"The name caught on and so trampoline became a generic term for that type of goods."
Dr Shackell said most people knew there were multiple ways to search the internet.
"They might search an item through Google and then through Bing and might find something cheaper on Bing and buy it through Bing. But not everyone knows there are alternatives," he said.
"In fact, Google, to some extent, promotes a generic perception of its trademark.
"The Wall Street Journal and other media have reported that Google pays Apple billions of dollars every year to ensure it remains the default search engine on iPhone, and Apple devices.
"This arrangement delivers desirable customers to GOOGLE to grow its traffic and revenue. But with Google everywhere, it's understandable some people think it's the generic word for internet search. Just not enough people to make it generic as currently defined.
"However, the unprecedented danger for consumers is that if GOOGLE is generic to even just 10 per cent of people, it may be causing much more harm in the economy than any other trademark in history.
"For those unlucky 10 per cent, Google is the only way to search the internet. Their entire search for goods in a large range of categories – not just one – is owned by Google. The harm of genericness is multiplied because the company dominates search.
"The GOOGLE trademark survived a genericness challenge that ran from 2012 to 2017 and is considered by many to be already 'somewhat generic'.
Dr Shackell said if there were any intentional distortions in GOOGLE's algorithms it would make the problem even worse.
"Just last month Google lost an appeal against a 2017 decision by the European Commission to fine it €2.4 billion for promoting its own shopping comparison service over those of rivals."
He said a test for proving genericness under the current system in the US might be a survey which resulted in at least 51 per cent of people effectively saying that another search engine like Bing was a 'google'.
"Obviously, only a small percentage of people would say that. What's more, the test can only be applied to the type of goods the trademark is registered for, so it's restricted to search engines rather than the act of searching itself.
"Despite its potential to really take over a consumer's entire search behaviour, the GOOGLE trademark is unlikely to be cancelled as generic under current US law.
"My recommendation is to amend trademark law so that genericness can be judged relative to the trademark's involvement with consumer search."
Dr Shackell said a surprising number of words in every day usage started out as trademarks.
"Words like videotape and escalator were once trademarks," he said.
"Jet Ski is still a trademark but means any 'personal watercraft' to a lot of people, and Band-Aid is often used to mean any 'adhesive bandage'. Of course, the status of these terms as trademarks or generic terms varies from country to country."
Dr Shackell said free use of generic words such as coffee or cheese was needed to optimise search for consumers - so they could recognise a wide choice of products in a category.
"Distinctive trademarks such as Subaru or John West, on the other hand, also optimise search for consumers – but only if they clearly mean a vehicle comes from Subaru or a can of tuna comes from John West," he said.
"Having a trademark like GOOGLE for a service that dominates search globally is unprecedented. It doesn't fit the current model for genericide and the dangers haven't been recognised.
Is genericness still adequately defined? Internet search firms and the economic rationale for trademarks was published in Science, Technology, & Human Values.
