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Google This: Is Google’s Trademark Generic?

(May 18, 2017) Even though the public may use “google” in a generic sense with regards to internet search engines, that fact alone does not suffice to cancel Google’s trademarks.

The Ninth Circuit affirmed summary judgment for Google against a party who argued that Google was viewed by the public as generic, thus no longer eligible for trademark protection.

“We agree with the district court that, at best, Elliott has presented admissible evidence to support the inference that a majority of the relevant public uses the verb ‘google’ in a generic sense,” the appellate court wrote. “Because this fact alone cannot support a claim of genericide, the district court properly granted summary judgment for Google.”

Genericide occurs when the public appropriates a trademark and uses it as a generic name for particular types of goods or services regardless of its source. For example, aspirin, cellophane, and thermos once were protected by trademarks but lost their status when the terms became generic to the public.

The case continued a fight between Chris Gillespie and Google. Originally, Gillespie acquired 763 domain names that included the word google, such as googledisney.com, googlebarackobama.net, and googlenewtvs.com. Google filed a complaint under the Uniform Domain Name Dispute Resolution Policy to transfer the names to Google, which was granted. Then David Elliott filed a federal lawsuit to cancel Google’s trademarks, which Gillespie joined.

Elliott argued, because a majority of the relevant public uses the word “google” as a verb (“I googled it”), the verb usage “constitutes generic use as a matter of law.” Not so, said the trial and appellate courts. 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.”

Balough Law Offices, LLC assists its clients in obtaining and defending their trademarks.

David Elliott and Chris Gillespie v. Google, Inc., Ninth Cir. No. 15-15809, issued May 16, 2017.

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