If you are like most of our readers, you got to this page after you googled something trademark-related.  And if you are like most people, you probably didn’t think twice when I used the word “google” as a verb in the last sentence.  These days, everyone uses “google” a a verb to mean “search the internet.”  Dictionary.com defines “google” as “the brand name of a leading Internet search engine” (if used as a noun), or “to search the Internet for information about (a person, topic, etc.)” (if used as a verb). To “google” has become something of a generic term in recent years.

There’s just one problem:  a word cannot be used as a trademark if it is (or becomes) generic.  There can be little doubt that “google” is used by the public as a generic term to describe searching the internet–even amongst those few users who search using bing.  Why, then, did the courts recently side with Google in Elliot v. Google and refuse to invalidate the mark for being generic?

The Elliot v. Google Facts

In early 2012, Chris Gillespie, David Elliot and others registered hundreds of domain names containing the word “google,” including such domains as “googlebarakobama.com” or “googlenewtvs.com.”  Google was not amused, and initiated UDRP proceedings against the men, claiming that the domains were confusingly similar to its trademark and had been registered in bad faith.  Google won, and the domain names were transferred to Google in May 2012.

Shortly thereafter, David Elliot filed a lawsuit (which Gillespie later joined) seeking to invalidate Google’s trademark.  Elliott petitioned for cancellation of the Google trademark under the Lanham Act, which allows cancellation of a registered trademark if it is primarily understood as a “generic name for the goods or services, or a portion thereof, for which it is registered.”  Elliott argued that the word “google” is generic because it is primarily understood as “a generic term universally used to describe the act[] of internet searching.”

Both Elliot and Google filed motions for summary judgment, asking that the court rule in their favor without a trial.  Elliot argued that “google” had become a generic term for Internet searching.  He presented survey data showing that more than half of people used the term “google” as a verb to mean “search the internet.”  Although much of the survey data was excluded from the trial, he also introduced voluminous evidence that people used “google” as a verb (most notably pointing to T-Pain’s lyrics on rEVOLVEr).  He introduced dictionary entries showing that “google” is used as a verb meaning “to search the internet.”  Finally, he argued that even Google uses the term generically, and that there was no alternative to using the word “google” as a means of describing searching the Internet.

In its motion, Google produced competing survey evidence showing that 93% of respondents identified “Google” as a brand name, rather than a common name for search engines.  Google also relied on dictionary definitions, which generally listed “Google” as a trademark in addition to its use as a verb.  It showed that it only uses the term to refer to its own search engine, and that other search engines do not refer to their own search engines as “Google.”

The court denied Elliot’s motion and granted Google’s, finding that on the undisputed evidence before it “Google” was not generic for search engines.  Elliot appealed to the Ninth Circuit.

The Ninth Circuit’s Reasoning on the Generic Term

Trademarks come in four different strengths:  generic, descriptive, suggestive, and arbitrary.  Learn more with a previous blog article we wrote, entitled Trademarks: Delay can cost you …. To summarize: at one extreme, generic terms are common names which identify only the type of goods at issue (i.e., “apple” for an apple).  They are not protectable as trademarks.  At the other extreme, arbitrary or fanciful marks employ words and phrases with no commonly understood connection to the product (i.e, “Apple” for computers).  An arbitrary term naturally identifies the source of a product and is the best type of trademark to have.  However, over time, some arbitrary terms become so popular that they are used to describe particular types of goods or services irrespective of their source.  Aspirin, Thermos, and Kleenex are oft-cited examples of arbitrary trademarks that became generic and lost their protection.  This is sometimes called “genericide.”

Google is an arbitrary mark for search engines, but had it become generic?  A trademark only becomes generic when the primary significance of the mark to the public is as the name for a particular type of good or service, irrespective of its source. If the  public primarily understands a mark as describing “who” a particular good or service is, or where it comes from, then the mark is still valid. But if the public primarily understands a mark as describing “what” the particular good or service is, then the mark has become generic.

Elliot ignored this standard, concentrating on his evidence that the public used “google” as a verb meaning “to search the internet.”  But both courts (as well as Google) rejected this approach.  As the Ninth Circuit noted, whether a mark is generic can only be evaluated relative to a particular type of good or service–in this case, a search engine.  It does not depend on whether the mark is used as an adjective, verb, or noun.   Elliot’s evidence did not show that “google” was used to refer to all search engines, regardless of source, so Elliot had failed to prove the term was generic for search engines.

Implications for Trademark Owners

This Elliot opinion is a good case for trademark owners.  Mark owners are frequently told to be careful to use the mark as an adjective, not as a noun or verb.  As a rule of thumb, this is a good way to avoid the slippery slope of genericide.  But the Elliot opinion is a strong statement that the mere use of a mark as a noun or verb is not enough to render a mark generic.  Genericide requires evidence that the term has become descriptive of the entire class of goods or services, regardless of source.  This is a very high bar indeed.

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