Ninth Circuit Held: GOOGLE Not Generic For Internet Search Engines

David Elliot (“Plaintiff” or “Elliot”) filed an action in the Arizona District Court (later joined by Chris Gillespie), petitioning for cancellation of the GOOGLE trademark, claiming that it evolved into a generic term. The parties filed cross motions for summary judgment. In Elliot’s motion for summary judgment, he alleged that the majority of the relevant public uses the word “google” as a verb. Plaintiff argued that it is common to state “I googled it”. The Plaintiff argued that as a matter of law using a trademark as a verb constitutes generic use. In response, Google Inc. argued that verb use in and of itself does not constitute generic use.

The matter arrived in Court after the parties participated in arbitration before the National Arbitration Forum (“NAF”). Chris Gillespie had purchased over 760 domains incorporating the term “google” and pairing the term “google” with a brand, person or product. Google Inc. objected to the domain registrations and filed a complaint with NAF claiming domain name infringement, also known as cybersquatting. Google Inc. prevailed and the subject domain names were transferred to Google Inc.

The Plaintiff in the court case argued that the term “google” has become generic because it no longer identifys the source of the goods. The following marks are examples of trademarks that have been appropriated by the public and used as a generic name for a particular type of goods: (1) ASPIRIN, (2) CELLOPHANE AND (3) THERMOS. A trademark only becomes generic when the primary significance of the mark to the public is the name of a particular type of goods or services regardless of the source. In other words, the question to ask is does the relevant public perceive the primary significance of the term as identifying the producer or as identifying a type of product or service. To avoid “genercide”, a term should identify the producer. For more general information regarding how a trademark becomes generic, see our web page entitled, Merely Descriptive Or Generic?

A claim of “genericide” must always relate to a particular type of goods or services. The Lanham Act, 15 U.S.C. §1064(3) underscores this point by stating that a party can apply for cancellation of a registered mark when it “becomes the generic name for the goods or services. . . for which it is registered”. This type of determination must be considered in the context of the particular goods and services to which the mark is applied. A term may be protectable with one type of goods while not protectable with another type of goods.

The Court held that verb use does not automatically constitute generic use. The Ninth Circuit further elaborated that noun use as well, does not automatically constitute generic use. Either way a consumer could use a trademark as a verb or a noun while still maintaining a particular source in mind. For example, an Internet user may use the term “google” with a discriminate sense with the GOOGLE search engine in mind. The plaintiff challenged the framing of the lower court’s inquiry. However, the Ninth Circuit affirmed the framing and stated the following inquiry is proper: “whether the primary significance of the word “google” to the relevant public is a generic name for internet search engines or as a mark identifying the Google search engine in particular”.

The plaintiff attempted to show that Google Inc. used its own trademark in a generic manner. He presented an email from co-founder Larry Page wherein he states in a Google Friends Newsletter, “have fun and keep googling!” The Court held that to make this email relevant evidence it would have to be proven that Mr. Page had no particular search engine in mind when making this statement. This would be quite difficult to prove. To refute the generic claims of the plaintiff, the Court mentioned that competitors of Google Inc. do not refer to their respective search engines as “a google” and the public recognizes and acknowledges different search engines. In the end, the Ninth Circuit affirmed the district court’s granting of summary judgment in favor of Google Inc. There was insufficient evidence to support a jury finding that the public understands the word “google as a generic name for all search engines. If you have questions regarding whether your mark is functioning to identify source, please contact our office for a courtesy consultation.