A Final Victory for Google: Verb Use Does Not Signify Trademark Genericide

The Lanham Act states that a registered trademark can be canceled if it becomes a “generic name for the goods or services, or a portion thereof, for which it is registered.”[1] Trademark Genericide can be defined as the loss of trademark rights when a term enters common usage and consumers begin to denote a particular product rather than its source.[2] What exactly does this mean? Of course, we have seen this before. The trademark ASPIRIN, which was originally trademarked by Bayer AG, was declared generic in the United States in 1921.[3] Also, the trademark ZIPPER, which was federally registered in 1925 by B.F. Goodrich for overshoes with fasteners, was declared generic in 1930.[4] What about the ever-popular BAND AID trademark? The band aid was invented in 1921 by a Johnson and Johnson employee and gained extreme popularity in the subsequent years.[5] Eventually, BAND AID came to mean any adhesive bandage, and the trademark name was genercized.[6] These are but three of the many trademarks which have become generic, or are in danger of becoming generic, thus losing trademark protection.

A popular, more recent example of a claim involving trademark genericide involves the trademark GOOGLE. The Google trademark dispute originated in early 2012 when Chris Gillespie registered domain names that coupled the word “google” with other terms identifying a specific brand, person, or product, such as “googledisney.com.”[7] Google countered these registrations by filing a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP), arguing that the registrations were registered in bad faith and constituted cybersquatting.  The arbitrator agreed and, accordingly, transferred the domain names to Google in May 2012.[8] In response, the plaintiffs, Chris Gillespie and David Elliott, petitioned for cancellation under the Lanham Act on the ground that the public primarily understands “google” as “a generic term” to describe the act of “internet searching.”[9]

On May 16, 2017, the Ninth Circuit rejected a petition for cancellation of the GOOGLE trademark based on a “genericide” theory. The outcome of this case hinged on the plaintiffs’ claim that GOOGLE has become a verb for searching the internet. The court held that “verb use does not necessarily constitute generic use.”[10]  The Ninth Circuit noted that even if the general public uses GOOGLE as a verb, it is only a generic use if the public is referring to an internet search generally, and not to the Google search engine specifically.  If the general public uses “google” primarily to identify a search on the Google search engine, then the Google trademark still serves a source-identifying function and its use as a verb is not generic.[11]

While this outcome was somewhat expected, it begs the question of whether the Court decided this way because allowing the plaintiffs to succeed with their argument would demonstrate that the Court is aware of how the general public perceives Google. There would have to be substantial data that demonstrates when the public says, “You should google that” or “I will google that,” they are referring to other search engines, such as Bing, Yahoo, or Baidu, and that Google has been popularized as the foundation of all search engines that the public associates all search engines with “Googling.” This would be extremely difficult to solidify and determine. Although the plaintiffs’ proffered evidence, such as consumer surveys, expert testimony, and dictionary definitions of the verb usage of GOOGLE, this was not sufficient for the Ninth Circuit.[12] Trademark owners can take a sigh of relief since they do not have to worry about losing trademark protection due to their trademarks being used as verbs.

For more information on ways that trademarks may be canceled, check out Tal Benschar and Milton Springut’s article in Volume 14, Issue 1 of RIPL.[13]

[1] See 15 U.S.C. § 1064(3).

[2] See Shrabani Rout, India: Trademark Genercide: Victims of their own success? Mondaq (July 9, 2017), http://www.mondaq.com/india/x/600598/Trademark/Trademark+Genericide+Victims+of+their+own+success.

[3] See Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921).

[4] See Mary B. Quirk, 15 Product Trademarks That Have Become Victims of Genericization. Consumerist (May 16, 2017) https://consumerist.com/2014/07/19/15-product-trademarks-that-have-become-victims-of-genericization/.

[5] See Ads of the World, When a Brand Name Becomes Generic (and how you can prevent it). https://adsoftheworld.com/blog/when_a_brand_name_becomes_generic_and_how_you_can_prevent_it.

[6] See id.

[7] See Elliot v. Google, Inc., 2017 WL 2112311 (9th Cir. May 16, 2017).

[8] See id.

[9] See Elliot v. Google, Inc., 45 F.Supp.3d 1156 (D. Ariz. 2014).

[10] See Elliot, 2017 WL 2112311.

[11] See id.

[12] See id.

[13] See Tal S. Benschar & Milton Springut, Does Reckless Indifference Suffice for a Cancellation Proceeding Predicated on Fraud?, 14 J. MARSHALL REV. INTELL. PROP. L. 50 (2014).