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.

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