Our friend Professor Eric Goldman, over at his Technology and Marketing Law Blog, reported earlier this week that the Google trademark has survived a genericness attack by a fellow named David Elliot. Here is a link to Mr. Elliot’s complaint filed in Arizona federal court back in May of 2012, and here was Martha’s coverage. And, here is more coverage at the time labeling the challenge as being from the “land of slightly crazy lawsuits.” And, here is the Arizona federal court’s decision rejecting the genericness challenge. There.
Mr. Elliot’s focus in attempting to take down the Google trademark was primarily directed to the common verb meaning of the word to search the internet using any search engine, but the court wasn’t moved:
“The word google has four possible meanings in this case: (1) a trademark designating the Google search engine; (2) a verb referring to the act of searching on the internet using the Google search engine; (3) a verb referring to the act of searching on the internet using any search engine; and (4) a common descriptive term for search engines in general.”
The court noted that even if the third meaning was proven, the first meaning is the key meaning because the “undisputed evidence is that the consuming public overwhelmingly understands the word google to identify a particular search engine, not to describe search engines in general.”
Does this decision slam the door to all successful genericness challenges based on the verbing of your favorite brands? It would be a mistake to read it that broadly, in part, because the plaintiff was an individual, and the defendant was, well, Google — a brand reportedly worth more than $150 billion.
While you will recall that I have not been a nervous nellie when it comes to the risks of genericide based on the verbing of brands, if your opponent is not an individual and you’re not Google, this reading on the subject of trademark verbing and the risk of genericide is still highly useful and recommended:
- Just Verb It? A Legal Perspective on Using Brands As Verbs: Part I
- Just Verb It? Part II: A Legal Perspective on Using Brands As Verbs
- Just Verb It? Part III: Testing the “Slippery Slope” of Using Brands as Verbs
- Managing The Legal Risk of “Verbing Up” Brands and Trademarks
- How Realistic is the Risk of Trademark Genericide?
How concerned are you about genericide?