Domain name registration is usually a good first step to cement trade name and mark ownership. In a previous blog we reminded readers that possession, even in Intellectual Property matters, is nine-tenths of the law (read Why Register a Domain Name? for more info).

So when Chris Gillespie registered over 700 web domain names, we would normally applaud his ambition as well as his efforts.

Except for one problem: Gillespie registered various domain names that included the word “google”. For example, Gillespie registered: “googlenewtvs.com”, “googledisney.com”, and “googlebarackobama.net” without Google’s permission. The REAL Google, who is the registered owner of the mark, filed a complaint with the National Arbitration Forum (NAF), which decides domain name disputes.

Google complained Gillespie: 

1. Violated the Uniform Domain Name Dispute Resolution Policy (via trademark infringement, also known as cybersquatting); and
2. Registered names that were confusingly similar to Google’s trademark, in bad faith. 

The agency agreed – NAF transferred the domain names to the web service company in 2012.

Not long after the NAF decision, David Elliott filed a petition in an Arizona Court to cancel the Google trademark registration under the Lanham Act, arguing “google” is now a generic verb for internet searching. Gillespie joined in the action. In September, 2013, the parties filed cross motions for summary judgment. Google prevailed and plaintiffs appealed.

But before we can deconstruct the respective parties' positions and the courts' decisions in Elliott v. Google, Inc., we must first understand the basics of genericide.

What is Trademark Genericide?

Genericide is a term used when a trademark begins with strong trademark significance, but over time becomes generic and no longer identifies the source of products or services. Some examples of marks that started out as strong trademarks but later lost their significance include Aspirin and Escalator.  

These marks at one point were protectable as arbitrary or fanciful marks because they were primarily understood by the public to refer to specific products—a brand of headache reliever and a specific brand of moving stairs, respectively. But over time, these words became generic and the public now understands these words to describe the actual goods rather than the source of the goods.

Failing the Trademark Genericide Test

On June 14, 2017 the Ninth Circuit Court of Appeals upheld the lower court’s decision and found that appellants’ arguments regarding the genericizing of “google” had two flaws: 

1. “A claim of genericide must always relate to a particular good or service.”
2. Appellants “erroneously assumed that verb use automatically constituted generic use.” 

The Appellate Court noted:

If there were no requirement that a claim of genericide relate to a particular type of good, then a mark like IVORY, which is “arbitrary as applied to soap,” could be cancelled outright because it is “generic when used to describe a product made from the tusks of elephants.” Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 n.6 (2d Cir. 1976).

As to the Appellants’ second argument, the Court decided it contradicted fundamental trademark protection principles, in reference to source identification.

Elliott contended that trademarks perform source-identifying functions only when used as adjectives. The court disagreed and upheld the lower court’s ruling that the relevant inquiry is not whether the public used “google” as a verb indiscriminately, but rather whether the primary significance of the word “google” to the public was a generic name for internet search engines (in which case the word became generic) or as a mark identifying Google’s search engine in particular (in which case was still protectable as a trademark). 

In other words, the court held that a word could be used as a verb, yet retain trademark significance.

Citing the terms “indiscriminate” and “discriminate” coined by the District Court in this case, the 9^th Circuit said:

We have already acknowledged that a customer might use the noun “coke” in an indiscriminate sense, with no particular cola beverage in mind {in which case the mark was likely generic}; or in a discriminate sense, with a Coca-Cola beverage in mind. In the same way, we now recognize that an internet user might use the verb “google” in an indiscriminate sense, with no particular search engine in mind; or in a discriminate sense, with the Google search engine in mind.

The relevant question to ask is how the relevant public primarily understands the word itself. The court therefore denied appellants’ claims, holding that based on the evidence presented, even though some members of the public used “google” in a generic manner, the relevant public still primarily understood the word to refer to the Google search engine in particular.

Generic Lessons Learned

So what can budding business owners establishing trademarks learn from this case?

The evidence to prove a mark is generic must be overwhelming. Elliott provided three consumer surveys to bolster his claim that “googling” simply means performing internet searches, but some were not conducted by qualified companies or individuals, and two were rejected by both courts out of hand.

Additionally, both Google and Elliott provided competing evidence as to the public’s use of the word “google” and “Google” as generic terms and trademarks. Since there were enough examples of trademarked use, Elliot lost this argument as well.

Last, Elliot failed to show “google” was used to describe internet search engines generally, such as Bing and Yahoo. This demonstrated to the Court that the death of Google as a trademark was greatly exaggerated.