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"'Google' It" Is a Protected Trademark

By Ross Todd
June 02, 2017

Consumers might use “Google” as a verb, but that doesn't mean Google's trademark for its search engine is generic.

That was the holding from a three-judge panel of the U.S. Court of Appeals for the Ninth Circuit last month that found that Google's name for its search engine is protectable under federal trademark laws.

“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,” wrote Judge Richard Tallman.

In Elliott v. Google, No. 15-15809 (Ninth Cir. May 16, 2017), Tallman took a long march through the topic of “genericide,” when a trademark (think aspirin, cellophane, or thermos) loses protection after being adopted by the public to mean an entire class of goods or services. Tallman's opinion is already being hailed as a powerful win for Google and other ubiquitous brands that can afford to police their trademarks.

“I'm sure Google will face other genericide challenges in the future, but this ruling will make such challenges difficult or impossible,” wrote Eric Goldman, a professor at Santa Clara University School of Law. “Other big brands whose trademarks are often used as verbs or nouns also have a lot of reason to cheer this ruling,” wrote Goldman, in a post on the Technology & Marketing Law Blog.

The dispute underlying the decision began in 2012 when plaintiff Chris Gillespie registered 763 domain names combining “google” with other words, such as “googledisney.com” and “googlebarackobama.net.” After Google demanded arbitration under the terms of the domain registrar's agreement, an arbitration panel found that the names infringed Google's trademark and transferred them to the company.

Gillespie and his spouse and business partner, David Elliot, sued Google in Arizona federal court later that year asking that the trademark be found generic. But in 2014, U.S. District Judge Stephen McNamee of the District of Arizona granted summary judgment to Google. McNamee rejected the plaintiffs' argument that a trademark ceases to be valid when it is used primarily as a verb. The judge also nixed two of the plaintiffs' three consumer surveys since they were drafted by their lawyer, Richard Wirtz, rather than a qualified expert.

In the Ninth Circuit's opinion, Tallman agreed with McNamee's conclusion that the primary focus of the case was whether consumers considered “Google” a generic name for Internet search engines rather than searches themselves. Tallman concluded the plaintiffs failed to provide evidence that consumers understand “Google” to be a term for any search engine.

Google's lead lawyer, Angela Dunning of Cooley, declined to comment.

Reached by email, Wirtz said that the Ninth Circuit's finding has “wide-reaching implications.”

“On the one hand, people can now feel free to xerox and rollerblade to their hearts' content without fear of a strongly worded letter from those trademark owners' attorneys,” he wrote. “On the other hand, the already wide monopoly granted to trademark owners has just been expanded even further — it is now even more arduous to prove that a mark is generic.”

Wirtz said that the plaintiffs were still considering their options, but that it was “likely” that they'd seek further review.

Rami Yanni, an intellectual property partner at Rosenfeld, Meyer & Susman who wrote about the case this year for our ALM sibling Corporate Counsel (see, “Genericization of a Giant: Has the Worlds Most Valuable Brand Become Generic“), said he thinks the Ninth Circuit got it right.

“You're talking about as of 2016 the most valuable brand on the planet,” Yanni said. “The idea that a brand that famous could lose its value simply because the public adopted it as a verb would be essentially punishing the brand owner for its fame.”

*****
Ross Todd
is bureau chief of The Recorder in San Francisco. He writes about litigation in the Bay Area and around California. Contact Ross at [email protected]. On Twitter: @Ross_Todd.

Consumers might use “Google” as a verb, but that doesn't mean Google's trademark for its search engine is generic.

That was the holding from a three-judge panel of the U.S. Court of Appeals for the Ninth Circuit last month that found that Google's name for its search engine is protectable under federal trademark laws.

“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,” wrote Judge Richard Tallman.

In Elliott v. Google, No. 15-15809 (Ninth Cir. May 16, 2017), Tallman took a long march through the topic of “genericide,” when a trademark (think aspirin, cellophane, or thermos) loses protection after being adopted by the public to mean an entire class of goods or services. Tallman's opinion is already being hailed as a powerful win for Google and other ubiquitous brands that can afford to police their trademarks.

“I'm sure Google will face other genericide challenges in the future, but this ruling will make such challenges difficult or impossible,” wrote Eric Goldman, a professor at Santa Clara University School of Law. “Other big brands whose trademarks are often used as verbs or nouns also have a lot of reason to cheer this ruling,” wrote Goldman, in a post on the Technology & Marketing Law Blog.

The dispute underlying the decision began in 2012 when plaintiff Chris Gillespie registered 763 domain names combining “google” with other words, such as “googledisney.com” and “googlebarackobama.net.” After Google demanded arbitration under the terms of the domain registrar's agreement, an arbitration panel found that the names infringed Google's trademark and transferred them to the company.

Gillespie and his spouse and business partner, David Elliot, sued Google in Arizona federal court later that year asking that the trademark be found generic. But in 2014, U.S. District Judge Stephen McNamee of the District of Arizona granted summary judgment to Google. McNamee rejected the plaintiffs' argument that a trademark ceases to be valid when it is used primarily as a verb. The judge also nixed two of the plaintiffs' three consumer surveys since they were drafted by their lawyer, Richard Wirtz, rather than a qualified expert.

In the Ninth Circuit's opinion, Tallman agreed with McNamee's conclusion that the primary focus of the case was whether consumers considered “Google” a generic name for Internet search engines rather than searches themselves. Tallman concluded the plaintiffs failed to provide evidence that consumers understand “Google” to be a term for any search engine.

Google's lead lawyer, Angela Dunning of Cooley, declined to comment.

Reached by email, Wirtz said that the Ninth Circuit's finding has “wide-reaching implications.”

“On the one hand, people can now feel free to xerox and rollerblade to their hearts' content without fear of a strongly worded letter from those trademark owners' attorneys,” he wrote. “On the other hand, the already wide monopoly granted to trademark owners has just been expanded even further — it is now even more arduous to prove that a mark is generic.”

Wirtz said that the plaintiffs were still considering their options, but that it was “likely” that they'd seek further review.

Rami Yanni, an intellectual property partner at Rosenfeld, Meyer & Susman who wrote about the case this year for our ALM sibling Corporate Counsel (see, “Genericization of a Giant: Has the Worlds Most Valuable Brand Become Generic“), said he thinks the Ninth Circuit got it right.

“You're talking about as of 2016 the most valuable brand on the planet,” Yanni said. “The idea that a brand that famous could lose its value simply because the public adopted it as a verb would be essentially punishing the brand owner for its fame.”

*****
Ross Todd
is bureau chief of The Recorder in San Francisco. He writes about litigation in the Bay Area and around California. Contact Ross at [email protected]. On Twitter: @Ross_Todd.

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