Google Trademark Survives Genericide Claim

Google Trademark Protected in Elliot v. Google Inc.

Many people use the phrase “Google it” to refer to the broader act of searching the Internet. Nonetheless, the Ninth Circuit Court of Appeals recently held in Elliot v. Google Inc. that the Google trademark should not be canceled on the ground that it has become generic for searching the web.

What Is Genericide?

Under the Lanham Act, generic terms may not be registered as trademarks because they do not identify a single source of a product or service. The term “genericide” refers to when the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of its source. For example, aspirin, thermos, escalator, dry ice, heroin and videotape were once trademarks before they became generic.

Under existing court precedent, a trademark becomes generic when the “primary significance of the registered mark to the relevant public” is the name for a particular type of good or service irrespective of its source. As explained by the Ninth Circuit in Elliot v. Google Inc., “If the relevant public primarily understands a mark as describing ‘who’ a particular good or service is, or where it comes from, then the mark is still valid. But if the relevant public primarily understands a mark as describing ‘what’ the particular good or service is, then the mark has become generic.”

Lawsuit Seeking to Cancel Google Trademark

Between February 29, 2012, and March 10, 2012, Chris Gillespie acquired 763 domain names that included the word “google,” such as “googledisney.com,” “googlebarackobama.net,” and “googlenewtvs.com.” Google, Inc. (Google) objected to these registrations and promptly filed a complaint with the National Arbitration Forum (NAF). Google argued that the registrations constituted domain name infringement, more commonly referred to as “cybersquatting,” because they are confusingly similar to the Google trademark. The arbitration panel agreed and transferred the domain names to Google on May 10, 2012.

Shortly thereafter, Chris Gillespie and David Elliott filed a federal lawsuit petitioning the district court to cancel the Google trademark under the Lanham Act, which allows cancellation of a registered trademark if it is primarily understood as a “generic name for the goods or services, or a portion thereof, for which it is registered.” The suit maintained that the word “google” is primarily understood as “a generic term universally used to describe the act[] of internet searching.”

On summary judgment, Google maintained that verb use (as in the phrase “I googled it) does not automatically constitute generic use and that the plaintiffs failed to create a triable issue of fact as to whether the Google trademark is generic for search engines. The trial court agreed, ruling in Google’s favor.

Ninth Circuit’s Decision

The Ninth Circuit affirmed. It agreed with the lower court that a claim of genericide must be made with regard to a particular type of good or service. In other words, use by the public of this word “google” as a verb does not mean that the public understands the word “google” to mean any and all search engines.

Applying this above legal framework, the Ninth Circuit concluded that the plaintiff failed to establish that the primary significance of the word “google” to the relevant public was a generic name for internet search engines, rather than as a mark identifying the Google search engine in particular.

Do you have any questions regarding the Google trademark? Would you like to discuss the matter further? If so, please contact me, David Einhorn, at 201-806-3364.