United States: Google: Everybody Does It Everywhere — But It's Still Trademarked

Last Updated: August 23 2017
Article by Timothy D. Kevane

The U.S. Court of Appeals for the Ninth Circuit recently held that the Google brand continues to enjoy trademark protection, notwithstanding that the word "google" has entered (maybe stormed) the popular lexicon to describe the act of searching for information on the internet. The case is Elliott v. Google, Inc., 856 F.3d 1225 (9th Cir. 2017), and yes, you can "google" it.

The lawsuit has its origin in a cybersquatter's registration of hundreds of domain names containing the Google mark, followed by the name of another famous brand (e.g., googlecartier.com) or a generic term. Apparently, by entering these terms, users would be directed to the cybersquatter's website which, not accidentally, had nothing to do with the registered domain name. The cybersquatter sued Google after the National Arbitration Forum transferred their illicit domain names to Google in prior proceedings.

Surely the cybersquatters knew who they were taking on. Created just twenty years ago, Google is today the second-most valuable brand in the world, valued at over $100 billion, in between the Apple and Coca-Cola brands. Fun fact: the mark is derived from the word "googol," the mathematical term for a 1 followed by 100 zeros, which company founders associated with the seemingly infinite amount of information available on the internet. Today, Google processes billions of search requests every month and is one of the most visited websites in the world. Google is everywhere. So has it lost its arbitrary or fanciful qualities, undeserving of further trademark protection because it has become a generic term? Not close, says the Ninth Circuit.

At issue in the case is a principle of trademark law that a term that is subject to generic usage is no longer protectable because it does not identify the source of a product. In contrast, an arbitrary or fanciful mark uses a word or phrase that has no commonly understood connection to the product. These marks are automatically protected because they identify a particular source of a product. Over time, the holder of a trademark that at least initially was deemed fanciful may become the victim of "genericide." It sounds awful, and it can be for the trademark holder. Genericide occurs when the public appropriates a mark and uses it as a generic name for a product or service, regardless of its source. "Aspirin," "cellophane," "escalator" and "thermos" are examples of trademark genericide. In determining whether the trademark has taken the fateful step in the direction of becoming generic, a court will examine whether the "primary significance" of the mark to the public is the name of a product or service, irrespective of its source. If the public understands the mark as identifying "who" a product or service is, the mark is not generic and remains valid. But if the mark is understood to describe "what" the product or service is, the mark has become generic.

The plaintiffs' case against Google failed spectacularly. The plaintiffs argued that because the use of the term "google" as a verb has become so prevalent, it automatically constitutes generic use. They submitted thousands of pages of evidence showing the use of "google" as a verb. The court was unmoved. It does not matter that the public uses the word as a verb, since the challenged registration involves a search engine, not the "act" of searching the internet. Thus, the proper inquiry is whether the primary significance of the word "google" to the public is as a generic name for internet search engines or as a mark identifying the Google search engine in particular. Under that test, the plaintiffs' case was doomed from the beginning.

The plaintiffs' loss was predictable, even with the undisputed assumption that the majority of the public uses the verb "google" indiscriminately, to refer to the act of searching on the internet without necessarily referring to a particular search engine. But that proved nothing, according to the court, since a claim of genericide must relate to a particular type of product. Even if the public uses the word in that sense, it says nothing about how the public "primarily" understands the word itself, apart from its grammatical function, in connection with search engines.

Thus, the plantiffs' evidence of casual use of the word by the media and consumers was of little value since it did not establish a prevailing public consensus regarding the primary significance of the trademark as a source-identifier. For example, the plaintiffs' evidence included lyrics by the rap artist T-Pain telling listeners to "google" his name. As far as the court was concerned, it could not determine whether T-Pain was using "google" in a discriminate or indiscriminate sense without knowing T-Pain's inner thought process (e.g., someone ordering a "coke" might have in mind Coca-Cola, or any cola beverage). Without more, the court could not ascertain whether T-Pain (i.e., the consumer) was referring to searching the internet with Google's search engine or with any search engine generally.

The plaintiffs' other evidence, including media usage of the word "google" as a verb, dictionary definitions that identified it as a verb, expert opinion and even an email from Google's co-founder Larry Page encouraging users to "have fun and keep googling!" was unavailing because it only supported the favorable inference already given that the majority of the public uses the verb "google" in a generic sense. This is similar to casual phrasing such as "hand me a Kleenex" or "FedEx a package." (Xerox once encouraged consumers not to use its name as a verb.)

The problem for plaintiffs was that these uses are not evidence of primary significance. Thus, according to the Ninth Circuit, no reasonable person would ever find based on the plaintiffs' evidence that the word "Google" has become the generic name for internet search engines. Even the plaintiffs' experts conceded that the term has not become a generic name for search engines and designates Google as the unique source of its search engine.

In contrast to what the court described as the plaintiffs' "flimsy" evidence, Google produced "overwhelming" evidence that the public primarily understands the word "Google" as a trademark for its own search engine — not the name for search engines generally, including a consumer survey in which almost 95 percent of respondents expressed their belief that Google is a brand name; dictionary definitions that refer primarily to Google and its search engine; opinions of linguists that Google functions as a trademark for its search engine; its own use of the term to refer only to its proprietary search engine; its policing activity; competitors' behavior in refraining from using the trademark in reference to their own search engines; and usage by major media outlets using "Google" to refer to its search engine only, and not the search engines of Bing or Yahoo!

The case is a big win for trademark owners whose brand has become so pervasive that their particular marks could theoretically make them vulnerable to genericide. The opinion confirms, however, that the widespread use of their trademark as a verb in a generic sense alone, which is all that was shown in this case, will be insufficient to cancel it. While other search engine providers such as Yahoo!, Bing, Ask.com and AOL.com have their own trademarks, Google dominates the search engine market. Its omnipresence, which has resulted in the generic use of its mark as a verb, will most likely guarantee the protection of the mark for a very long time.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.