Trademark violating domainer finds novel way to fight back :)

[Clinton]

What do you do when you've violated Google's trademark and Google takes you to court?

Put forth an argument as to why Google shouldn't have the trademark for the term Google!

Arizona man David Elliott wants a court to declare that “google” is a word that means “search on the internet” and to cancel Google’s trademarks for the term.

Elliott filed the complaint after Google won a ruling this month that forced him to hand over more than 750 website names such as “googlegaycruises.com” and “googledonaldtrump.com.” He claims he needs the names to start a business based on “commerce.. charity, and more.”

Man sues to have Google's trademark on the term overturned!

Legally, the position is this:

Brands can lose their trademarks if consumers start treating them interchangeably with an everyday word. Famous example includes “zipper,” “yo-yo” and “aspirin.”

[grynge]

I wonder if other companies will join in the suit?

Though would it be worth their while to open up a can of worms if Google lost the fight?

[akirk]

little chance

a) they have more lawyers
b) his logic is flawed...

If a company can show that they take every effort to maintain their trademark, then they won't lose it - the fat that others are using it widely will only cause loss if that public are using it with no understanding that it refers to a specific company / product - it is all to do with the fact reference confusion of trade in the eye of the public which is one of the underlying markers for violation... when Company A (TM holder) is clearly known as the TM owner then Company B's use is a violation as they cause confusion in the eye of the public who might believe them to be Company A... when Company A is no longer clearly known as the TM holder then Company B's use is no longer confusing (or no more confusing than not using it!) as the public are unaware of Company A's ownership of the TM... Therefore it is important for the TM holder to make clear and public that they are the TM holder, and to pursue violations... (there is also the fact that in not pursuing violations that are accepting use and in effect licensing the TM by default)...

so, little chance of this happening as Google even though used widely is known to be Google's TM...

he would have more chance if it was being used generically elsewhere - i.e. 'to google' when using Bing / etc. - but that will be very difficult to prove and most people who don't use the Google search engine will possibly not use that expression - therefore it will be difficult to show that it is being used generically!

will be interesting to watch though - American courts can do all sorts of strange things!

Alasdair

[crabfoot]

“zipper,” “yo-yo” and “aspirin” - strange examples.

The man who invented the zip didn't invent the word "zipper" - Goodrich did that when they used zip fasteners on gum-boots. Goodrich could have TM'd the word, but they would have been in trouble trying to enforce it against people using a third-party product in other applications.

"yo-yo" is said to be a Filipino word for an "apparatus of war". There's been discussion about whether the toy was modelled on that, and whether the statement is true. Whatever, since there is a late 18th century French reference to "yo-yo", I'd say it would be hard to trademark unless you had a letter from King Louis before he lost his head ...

Aspirin was a trade mark of Beyer, a German chemical manufacturer, from the early 1900s. They lost the right to use it as a TM in countries that were on the winning side in the World Wars, but, peculiarly, retained it in some places, which led to a singular note in the British Pharmacopoeia 1968 monograph for Aspirin stating that Aspirin is a trade mark in certain countries ...

There are trade marks which have passed into language, but I cannot think of a genuine example of a TM being lost because it passed into common usage. Hoover have come close, but they still have their TM on their name.

You can bet your shirt and cotton socks Beyer would have been defending AspirinTM if they had been allowed to do so.

[Nidec]

The word 'Google' only appeared in dictionaries years after the formation of the company as people began substituting it for the phrase 'search on the internet', so I would expect any court to uphold Googles argument. IP law has changed a lot since the 1960's and, as akirk says, Google have lots of lawyers and bucketloads of money with which to fight this.
As a side point I cant help but wonder if there is any value at all in Mr Elliotts domain names anyway, 'googledonaldtrump' doesnt strike me as a great name and it wouldnt take much effort on Googles part to bury it way down the SERPS, probably assisted by Bing & Yahoo pre-empting 'bingdonaldtrump' etc