On May 16, 2017, internet search engine and content provider Google Inc. was handed a win by the United States Court of Appeals for the Ninth Circuit in Elliot v. Google Inc. The court ruled that the GOOGLE trademark had not become a victim of genericide, unlike other now generic terms such as ASPIRIN, CELLOPHANE and THERMOS. A copy of the court’s decision can be found here.
The case was filed by David Elliot and Chris Gillespie, who had registered 763 domain names that combined the word “google” with other specific brand, person or product names. After Google successfully challenged those registrations through the National Arbitration Forum for violations of the Uniform Domain Name Dispute Resolution Policy, Elliot and Gillespie filed a lawsuit seeking cancellation of two GOOGLE trademark registrations (U.S. Reg. Nos. 2884502 and 2806075) before the United States District Court for the District of Arizona. The district court refused cancellation and granted summary judgment in Google’s favor.
Elliot and Gillespie appealed, arguing that because of the frequent use of “google” as a verb the GOOGLE mark had become “a generic term universally used to describe the act of internet searching.” The Ninth Circuit rejected this argument, holding that the district court properly focused on the internet search engine rather than on the act of searching the internet. Despite the fact that many of us use the terms “google,” “google it,” “google something,” “google this,” “google search” or “bring up google,” the “verb use does not necessarily constitute generic use.” Instead, the proper inquiry was for the court to determine whether “google” had become a generic name used by consumers for internet search engines.
As the court explained, “a claim of genericide must always relate to a particular type of good or service.” A trademark is a brand name that can include a word, name, symbol, device, or any combination, used or intended to be used as a source identifier for goods or services. Once established, a trademark can later become generic when the public appropriates the mark and uses it as a generic name for particular types of goods or services irrespective of its source.
Here, the appellants failed to show that the relevant public’s primary understanding of “google” was as a generic name for internet search engines rather than as the brand name of a specific search engine.