Use As a Verb Not Always the Kiss of Death for Trademarks: Elliot v. Google
Use of a trademark as a verb is an oft-cited example of trademarks becoming generic, and frequently used as an easy case of “genericide” by legal textbook authors (not to mention legal bloggers). The owners of famous trademarks even run advertising campaigns pleading with the public not to use their marks as verbs. A recent article in The Atlantic highlighted appeals trademark owners have made to protect their brands, with one advertisement from Xerox stating: “Use Xerox only as an adjective to identify our products and services, such as Xerox copies, not a verb, ‘to Xerox.’”
But the authors of trademark law textbooks might need to start working on their next editions. A recent decision by the United States District Court for the District of Arizona, Elliot v. Google Inc., No. CV-12-1072, 2014 WL 4447764 (D. Ariz. Sept. 10, 2014), held that a trademark can function as a verb – even a verb with a generic, indiscriminate meaning – and avoid genericism if the principal significance of the word continues to be its source-identifying function.
The case revolved around Google’s world-famous GOOGLE trademark. The plaintiffs in the case had registered a number of domain names that consisted of the world “Google” in front of another phrase, such as <GoogleBarackObama.net> and <GoogleMexicoCity.com>. Google initiated a UDRP proceeding against the plaintiffs and the panel ruled in favor of Google, transferring control of the domain names to Google. Plaintiffs then brought suit in Arizona District Court against Google, seeking cancellation of its trademark registrations and a declaration that “Google” is a generic term. After discovery, both sides moved for summary judgment.
The court began by discussing what it meant for a trademark to be generic and whether simply becoming a verb was enough. It stated that there are two types of verb usage for trademarks, discriminate and indiscriminate, using as an example the phrase “I will Photoshop the image.” In that phrase, the speaker is clearly using the word “Photoshop” – a trademark of Adobe Systems Incorporated – as a verb. The court stated that the speaker could either mean that he/she was going to use PHOTOSHOP software to manipulate the image, in which case the use would be in the discriminate sense, or the speaker could mean he/she was going to use any graphics software to manipulate the image, in which case the use would be in the indiscriminate sense. The court stated that the former use of the word, even though it was as a verb, was still “perform[ing] the statutory source-denoting function of a trademark.”
While that holding alone goes against certain trademark law conventional wisdom, the plaintiffs’ claims went further, alleging that the word “Google” as a verb (such as, “just google that”) was used by the public to mean searching on the Internet in general, without reference to a certain search engine.
The parties had dueling survey evidence, with Google’s expert presenting a survey that found over 90% of people who searched online recognized “Google” as a brand name as opposed to a common name. The plaintiffs’ surveys found that when consumers wanted to tell someone else to search online, the majority used a phrase including the word “google.” The court found Google’s evidence far more reliable, which had an important bearing on the outcome because much of the plaintiff’s survey evidence was disregarded. Google’s evidence was also more on-point to the crucial question of the case: “what is the principal significance of the word ‘Google’ to consumers,” not merely “do consumers use ‘google’ as an indiscriminate verb?” The court stated: “It cannot be understated that a mark is not rendered generic merely because the mark serves a synecdochian ‘dual function’ of identifying a particular species of service while at the same time indicating the genus of the services to which the species belongs.”
In the end, the court found that even if the plaintiffs’ survey evidence was accepted, at most all it showed was that a significant percentage of consumers use the word “google” as a verb in the indiscriminate sense to mean searching online. But this was not enough to make the Google mark generic, because a trademark can have “synecdochian dual functions” and mean both searching online in general as well as identifying a certain search engine. The court held: “even if a mark qua verb is used exclusively in the indiscriminate sense, the mark is notgeneric if a majority of the consuming public nevertheless uses the mark qua mark to differentiate between one particular product or service from those offered by competitors.” (Emphasis in original).
Because the court found that the primary significance of the word “Google’ continued to be its source-identifying function, the court held that “Google” was not generic, and Google’s motion for summary judgment was granted.
While it is likely that the plaintiffs will appeal the decision, and impossible to know how better evidence would have affected the outcome, the decision highlights that trademark owners do not always have to fear their mark being used as a verb. In the words of the court, more analysis is necessary than simple “grammatical formalism.” It might be time for textbook authors, bloggers, and copywriters to start looking for a new way of explaining genericide.