Benjamin Appelbaum, Attorney at Law

Supreme Court urged to rule on trademarks as verbs

Many New Jersey residents are familiar with using terms like Google or Xerox as verbs rather than the trademarked names they represent. A pair of entrepreneurs have been challenging these trademarks in court, arguing that the trademarks should be taken away. Although lower courts have ruled against the two entrepreneurs, they are continuing to pursue their lawsuit, filing a petition to take their case to the Supreme Court.

The trademark argument began in 2012 when the entrepreneurs sought to invalidate Google's trademark. They argued that many people used the word Google as a verb meaning 'the act of an online search" and that this usage made the word generic and thus not able to be protected as a trademark. The entrepreneurs had purchased a variety of domain names using the trademarked word, so they had a vested business interest in overturning the trademark.

A federal district court as well as the U.S. Court of Appeals for the 9th Circuit upheld the current trademark. They indicated in statements that using a trademarked word as a verb did not constitute generic usage. Trademarked words could remain as trademarks regardless of the public's use of the word, such using Google to mean any online search. The court rulings also indicated that the public's use of Google as a verb could mean to conduct an online search specifically on Google's search engine, which would support its use as a trademark rather than detract from it.

Trademarks are extremely important for businesses because they help identify with customers and create a brand image. Cases such as this may set an important precedent for the future of trademark law. There are many times when companies need legal assistance to protect themselves from trademark infringement or the improper use of their trademark.

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Benjamin Appelbaum, Attorney at Law - Intellectual Property

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