As Google seems to be acutely aware, a trademark owner can lose its federal registration if the mark loses its distinctiveness and becomes synonymous with a generic product or service. For instance, the Otis Elevator Company lost its trademark registration for “elevator” after the term become generic. Zipper, originally a trademark of B.F. Goodrich, suffered a similar fate.
To maintain the distinctiveness of its mark, Google also discourages the use of the term “googling” in reference to web searches. In a 2006 blog post, the company wrote: “While we’re pleased that so many people think of us when they think of searching the web, let’s face it, we do have a brand to protect, so we’d like to make clear that you should please only use ‘Google’ when you’re actually referring to Google Inc. and our services.”
Google’s response to the Swedish Language Council is a similar attempt to protect its brand. In its letter, Google specifically requested changes to the definition of “ogooglebar” and a disclaimer highlighting that Google is a registered trademark. The Swedish Language Council ultimately decided to remove the word altogether.
As Google highlights, simply registering a trademark is not enough to protect a brand. During the life of the mark, companies must often take further actions to enforce and protect their rights. For additional information, we encourage you to contact our experienced trademark attorneys for a free 30-minute consultation.