Google Trademark Infringement

Google trademark infringement, or the right for the company's name to be protected from use by others, was challenged in a recent lawsuit on the grounds that "google" is now a generic term for internet searching. However, the Supreme Court rejected this petition without comment. While Google was able to keep its trademark in this legal challenge, other companies have lost trademarks when the words fall into generic usage. Some examples include thermos, aspirin, and videotape — all words that were once trademarked.

The legal petition, claiming that no word better epitomizes the ideal of searching the internet than "google," was filed by an individual named Chris Gillespie. Gillespie registered more than 750 domain names, all using some variation of the word Google. The man had to give up these domains in response to a Google claim of trademark infringement, and he filed the petition to invalidate the company's trademark in response. 

A federal appeals court ruled that Google's trademark should remain valid since it refers to more than just a search engine. The 9th U.S. Circuit Court of Appeals noted that even if the public does use google as a generic term, this does not indicate anything about how they primarily understand the term. A trademark will only be lost to generic usage, according to the court, when it is an exclusive descriptor that other companies must use in order to describe their product. 

The legal protection given by a trademark includes the right to sue those who infringe on the trademark, preventing others in the industry from using a similar mark that may confuse the public.

Is Trademark Use in Google AdWords Trademark Infringement?

Google AdWords is a service offered by the company in which businesses can pay for their ads and links to appear prominently in searches for specific keywords. Many companies have litigated over the use of registered trademarks in Google AdWords, arguing whether doing so constitutes fraudulently selling, marketing, promoting, or advertising a trademarked product. In May 2017, a company known as Tipsy Elves, LLC sued Ugly Christmas Sweater Inc. because the latter company's products appeared as ads on a Google search of the words "tipsy elves." 

Tipsy Elves alleges that this infringes on their trademark and constitutes unfair competition and false designation of origin. The lawsuit claims that the words "Tipsy Elves" have been trademarked since the company began using the term to sell online holiday clothing and accessories in 2001. The plaintiff also claims that their mark has goodwill through their media popularity and an appearance on the television show Shark Tank. They state that the deceptive Google AdWords tactics used by Ugly Christmas Sweater Inc. would lead to customer confusion and were designed to redirect internet traffic to the defendant's site. 

This is just one of more than 50 lawsuits regarding Google AdWords trademark infringement in the last decade; most of these have been found in favor of the defendant. In another high-profile case in which Rosetta Stone Ltd. sued Google, the Fourth Circuit found that Google AdWords could violate the Lanham Act. However, the parties ultimately settled out of court. The Tipsy Elves case is unique in that the plaintiff is suing the infringer directly rather than suing Google. When this case is settled, it will likely provide more guidance about what actions on Google AdWords constitute infringement.

Google's Approach to Trademarks

Google's policies state that they are cognizant of the importance of trademarks and prohibit trademark and copyright infringement in the AdWords terms and conditions that every advertiser must sign. They note that advertisers are responsible for their own ad content and keywords and that all valid complaints by trademark owners are thoroughly investigated. However, Google does not mediate trademark disputes, although they may enforce certain restrictions. Many factors are used to determine whether or not a trademark can be used in an ad when a trademark owner has submitted a valid infringement complaint.

Trademarks in Ad Text

When Google restricts the use of certain trademarks in ad text, ads that use these words will be banned from running internationally. The exception is when ad campaigns using these words are following Google's informational site policy and are targeting consumers in the following countries:

  • Ireland
  • Canada
  • Australia
  • New Zealand
  • United States
  • United Kingdom

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