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“Google” Still Not (Yet) Generic

Posted in Domain Names, Famous Marks, Genericide, Law Suits, Trademarks, USPTO

Last week the U.S. Court of Appeals for the Ninth Circuit issued a significant opinion on the topic of genericness, Elliott v. Google, Inc., No. 15-15809. The opinion affirmed a federal district court’s grant of summary judgment that “GOOGLE” trademark registrations (Reg. Nos. 2884502, 2806075) are not subject to cancellation for genericness.

Genericness a.k.a. “genericide” occurs when the public appropriates a trademark and uses it as a generic name for a particular type of goods or services, irrespective of the source of those goods or services.  Once a mark becomes generic, it is no longer subject to trademark protection. Examples of trademarks that became generic include aspirin, thermos, cellophane, and escalator.

This case arose out of a domain name dispute back in 2012, when the plaintiffs Chris Gillespie and David Elliott had attempted to register hundreds of web domains with the word “Google” such as “googlebarackobama.net” and “googledisney.com” Unsurprisingly, Google was not pleased, and filed a complaint with the National Arbitration Forum, requesting that the men transfer the domain names to Google pursuant to the Uniform Domain-Name Dispute-Resolution Policy (UDRP).  Google prevailed in the UDRP proceeding, and Gillespie and Elliot were ordered to transfer the domain names to Google. Shortly thereafter, Gillespie and Elliot (collectively “Elliot”) filed a complaint in federal court in Arizona, seeking cancellation of the GOOGLE trademark registrations.  The district court granted Google’s motion for summary judgment that its trademark registrations were not subject to cancellation for genericness.

Elliot argued, both at the district court and on appeal, that “google” had become a generic word for searching on the internet.  In particular, Elliot argued that a majority of the public understands the word “google,” when used as a verb, to mean the indiscriminate act of searching the internet without regard to the search engine used. Further, Elliot argued that verb use constitutes generic use as a matter of law.

The Ninth Circuit firmly rejected Elliot’s arguments on two grounds: “First, Elliott fails to recognize that a claim of genericide must always relate to a particular type of good or service. Second, he erroneously assumes that verb use automatically constitutes generic use.”

First, the court firmly rejected Elliot’s argument that the genericness inquiry must be framed as whether the relevant public primarily uses the word “google” as a verb for the indiscriminate act of searching the internet.  Instead, the court held, the claim of genericness of the word “google” must be made with regard to a particular type of good or service, i.e., a generic word for internet search engines generally.  Specifically, the court explained the following:

[W]e take this opportunity to clarify that a claim of genericide or genericness must be made with regard to a particular type of good or service. . . . But here, Elliott claims that the word “google” has become a generic name for “the act” of searching the internet, and argues that the district court erred when it focused on internet search engines. We reject Elliott’s criticism and conclude that the district court properly recognized the necessary and inherent link between a claim of genericide and a particular type of good or service. . . . [T]he Lanham Act specifies that the relevant question under the primary significance test is “whether the registered mark has become the generic name of [certain] goods or services.” In this way, the Lanham Act plainly requires that a claim of genericide relate to a particular type of good or service. . . .

If there were no requirement that a claim of genericide relate to a particular type of good, then a mark like IVORY, which is “arbitrary as applied to soap,” could be cancelled outright because it is “generic when used to describe a product made from the tusks of elephants.” This is not how trademark law operates: Trademark law recognizes that  a term may be unprotectable with regard to one type of good, and protectable with regard to another type of good.

Second, although Elliot presented evidence that the mark GOOGLE is used as a verb among the general public, the court held that “verb use does not automatically constitute generic use.”  The court held that even if the general public uses the word “google” as a verb, it is only a generic use if the public is referring to an internet search generally.  If the general public uses the word “google” primarily to identify a search on the Google search engine, the GOOGLE mark still serves a source-identifying function and its use as a verb is not generic.  The court also set forth a “discriminate” / “indiscriminate” distinction to evaluate verb usage of trademarks, stating that “an internet user might use the verb “google” in an indiscriminate sense, with no particular search engine in mind; or in a discriminate sense, with the Google search engine in mind.”   The court explained that much of Elliot’s admissible evidence were only examples of verb usage–which is not automatically generic use–without showing whether that verb use was discriminate or indiscriminate.  For example:

Elliott purports to offer an example of generic use by T-Pain, a popular rap music artist. But we will not assume that T-Pain is using the word “google” in a generic sense simply because he tells listeners to “google [his] name.” T-Pain, Bottlez, on rEVOLVEr (RCA Records 2011). Without further evidence regarding T-Pain’s inner thought process, we cannot tell whether he is using “google” in a discriminate or indiscriminate sense. In this way, many of Elliott’s admissible examples do not even support the favorable inference that a majority of the relevant public uses the verb “google” in a generic sense.

The court also tied in an oft-used Kleenex example to further emphasize that the type of semantic usage of a mark by the public is not dispositive of genericness:

We acknowledge that if a trademark is used as an adjective, it will typically be easier to prove that the trademark is performing a source-identifying function. If a speaker asks for “a Kleenex tissue,” it is quite clear that the speaker has a particular brand in mind. But we will not assume that a speaker has no brand in mind simply because he or she uses the trademark as a noun and asks for “a Kleenex.” Instead, the party bearing the burden of proof must offer evidence to support a finding of generic use.

What do you think about this decision?  Google, Inc., is likely celebrating a big win for its GOOGLE mark–one of the most valuable marks in the world.  It’s also a helpful decision for many famous brand owners, who, as an ironic consequence of their own success and ubiquitous use by the public, are also put at risk by genericness challenges (e.g., Kleenex® facial tissues, Band-Aid® adhesive bandages, Xerox® photocopiers, etc.).