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Google Escapes Genericide Claim in Ninth Circuit Decision

On May 16, 2017, the Ninth Circuit rejected a petition for cancellation of the GOOGLE trademark based on a “genericide” theory that claimed Google should lose its trademark protection because the word “google” has become synonymous to the public with the term “search the internet.” (See Elliott v. Google, Inc., 2017 WL 2112311 (9th Cir. May 16, 2017)).

Genericide, or a claim of genericness that would allow for cancellation of a trademark, occurs when the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of source. The accusation of genericide is ironic: that because brands have become so popular, consumers simply use their names generically for a type of product, and thus brands should no longer be trademarked.  Such genericide can occur due to a trademark owner’s failure to police the mark, resulting in widespread usage by competitors leading to a perception of genericness among the public.

Google is not the first brand to tackle a genericide claim. While some brands have avoided litigating the issue – through public relations campaigns or by actively policing the mark’s use – others have had to demonstrate that they are not generic in a court of law, with varying success.  For example, while aspirin and thermos were once protected trademarks, they lost their protection years ago in judicial decisions that recognized how the public now primarily understands such terms as generic names.

The Google trademark dispute originated in early 2012 when Chris Gillespie registered 763 domain names that coupled the word “google” with other terms identifying a specific brand, person, or product – for instance, “googlenewtvs.com.” Google countered these registrations by filing a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP), arguing that the registrations were registered in bad faith and constituted cybersquatting.  The arbitrator agreed and, accordingly, transferred the domain names to Google in May 2012.

In response, the plaintiffs, Chris Gillespie and David Elliott, filed an action in the Arizona District Court, petitioning for the cancellation of the Google trademark under the Lanham Act (15 U.S.C. § 1064(3)), which states that a registered trademark can be canceled if it becomes a “generic name for the goods or services, or a portion thereof, for which it is registered.”  Gillespie and Elliott petitioned for cancellation on the ground that the public primarily understands “google” as “a generic term” to describe the act of “internet searching.”  The district court granted summary judgment in Google’s favor.  (See Elliot v. Google, Inc., 45 F.Supp.3d 1156 (D. Ariz. 2014)).

Gillespie and Elliott raised two arguments on appeal.  First: that the district court misapplied the primary significance test and failed to recognize the importance of verb use.  Second: that the district court impermissibly weighed the evidence when it granted summary judgment for Google.  In an opinion written by Judge Tallman, the Ninth Circuit Court of Appeals rejected both of these arguments, and affirmed the district court’s grant of summary judgment.

The court began its decision by outlining the process for evaluating genericide cases. A trademark only becomes generic when the “primary significance of the registered mark to the relevant public” is as the name for a particular type of good or service irrespective of its source.  (15 U.S.C. § 1064(3)).  The court described this process as a “who-are-you/what-are-you” test: 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; yet, if the relevant public primarily understands a mark as describing “what” the particular good or service is, then the mark has become generic.

The outcome of this case hinged on the plaintiffs’ claim that “google” has become a verb for “search the internet.” The court held that “verb use does not necessarily constitute generic use.”  First, even if the general public uses “google” as a verb, it is only a generic use if the public is referring to an internet search generally, and not to the Google search engine specifically.  If the general public uses “google” primarily to identify a search on the Google search engine, then the Google trademark still serves a source-identifying function and its use as a verb is not generic.  Second, the petitioners’ evidence did not fulfill this requirement of showing that the primary significance of “google” to the relevant public is as a name for internet search engines generally and not as a mark identifying the Google search engine in particular.  Instead, most of the petitioners’ evidence was intended to show widespread consumer use of Google as a verb.  As a result, the court disregarded the petitioners’ proffered evidence – including consumer surveys, expert testimony, and dictionary definitions – and held that the petitioners’ argument cannot survive summary judgment based on “sheer quantity” of “irrelevant evidence.”

“Once again, a claim of genericide must relate to a particular type of good or service. In order to show that there is no efficient alternative for the word “google” as a generic term, Elliott must show that there is no way to describe “internet search engines” without calling them “googles.” Because not a single competitor calls its search engine “a google,” and because members of the consuming public recognize and refer to different “internet search engines,” Elliott has not shown that there is no available substitute for the word “google” as a generic term.” (Elliott v. Google, Inc., at 19-20 (9th Cir. May 16, 2017)).

The Ninth Circuit’s decision is a big win for famous brand owners. By ruling in favor of Google – one of the most valuable trademarks in the world – other trademark owners can take comfort in the fact that verb use does not automatically constitute trademark genericide.  Brands should continue working to prevent a genericness charge – for example, by using the trademark as an adjective, opposing others’ misuse of the trademark, and educating the public to ensure proper usage of the trademark.  But, for now, Google and similarly-situated brands will not be joining the list of other trademarks that became so famous that they died of genericide.

Theresa Smith authored this post.

© 2017 Proskauer Rose LLP.

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About this Author

Daryn Grossman, Proskauer Law Firm, Corporate, Media and Technology Attorney
Partner

Daryn A. Grossman is co-chair of Proskauer’s global Corporate Department, and serves as the co-head of the Technology, Media & Communications Group and head of the Life Sciences Group.

For over 20 years, Daryn has designed and negotiated complex technology and intellectual property transaction structures, including strategic alliances, licensing, technology development and outsourcing transactions. Her clients include a wide range of life sciences, cloud computing, digital media, Internet, software, electronics,...

212-969-3665
Jeffrey D Neuburger, Proskauer Rose Law Firm, Technology Attorney
Partner

Jeffrey Neuburger is a Partner in the New York office, co-head of the Technology, Media & Communications Group and a member of the Privacy & Data Security Group.

212-969-3075