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?