What do escalators, aspirin, thermos, and videotape have in common? They were once trademarked but lost their legally protected status because they became too generic. Fortunately, for Google, their name will not appear on that list anytime soon. The Ninth Circuit of Appeals ruled on May 16, 2017, that Google has not become generic and their trademark is still an enforceable brand for an online search engine.
The case originated when Chris Gillespie registered 763 domain names involving a person or a brand paired with the word “google”, for example, “googledisney.com” and “googlebarackobama.com.” Google objected to the registrations and filed a complaint arguing that Gillespie was cybersquatting; registering names, specifically well-known company/brand names, in hopes of selling them for a profit. Google was able to get the domain names transferred back to them, but Gillespie and partner David Elliott filed a joint lawsuit against Google “for cancellation of the GOOGLE trademark under the Lanham Act, which allows cancellation of a registered trademark if it is primarily understood as a ‘generic name for the goods or services, or a portion thereof, for which it is registered.’” 15 U.S.C. § 1064(3).
Some experts believe that Google could potentially lose their trademark protection by becoming too popular of a term. Generic references to a trademark are against the intentions of the brand owner and can have a devastating effect on the brand because marks that are merely generic are not subject to trademark protection.
When a trademark is used generically, a trademark owner may have to take aggressive measures to retain exclusive rights to the mark. Google has taken such steps to protect their trademark. For example, they discourage publications from using the term ‘googling’ in reference to web searches and send cease and desist letters to those infringing on their trademark.
The court ruled in favor of Google and they will retain their trademark, even if the term “google” has become synonymous with internet searches. According to court documents, “even if we assume that the public uses the verb ‘google’ in a generic and indiscriminate sense, this tells us nothing about how the public primarily understands the word itself, irrespective of its grammatical function, with regard to internet search engines.”
Gillespie and Elliott presented evidence that suggested Google had become a common phrase meaning to look something up on the internet. However, the court determined that “Elliot has failed to present sufficient evidence to support a jury finding that the relevant public primarily understands the word ‘google’ as a generic name for internet search engines and not as a mark identifying the Google search engine in particular.”
The court cited a previous case, Softbelly’s Inc., 353 F.3d at 531, that trademark loss from becoming generic occurs when the name has become an “exclusive descriptor” that makes it difficult for a competitor to compete unless they use that name.
The decision stated that “[b]ecause 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 there is no available substitute for the word ‘google’ as a generic term.”
This case further held that verb use of a trademark “does not automatically constitute generic use. The sliver of potentially relevant evidence purporting to show that the public uses the verb “google” to refer to searching the Internet with any search engine (as opposed to Google’s search engine in particular) is too insubstantial to save the plaintiffs’ case.”
The Ninth Circuit’s decision in Google’s favor will be seen as a win for prominent brand owners who are at risk of becoming victims of their own success.
Suiter Swantz IP is a full-service intellectual property law firm based in Omaha, NE, serving all of Nebraska, Iowa, and South Dakota. If you have any intellectual property questions or need assistance with any patent, trademark, or copyright matters and would like to speak to one of our patent attorneys please feel free to contact us.