IP Law Daily GOOGLE is not an unprotectable generic mark
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Tuesday, May 16, 2017

GOOGLE is not an unprotectable generic mark

By Mark Engstrom, J.D.

In an action seeking cancellation of the registered mark GOOGLE—on the ground that the word "google" was primarily understood as a generic term that was "universally used to describe the act[] of internet searching"—the U.S. Court of Appeals in San Francisco has found that a federal district court did not misapply the primary significance test or improperly weigh the record evidence when it granted summary judgment to Google on the plaintiffs’ claims of genericness. Because the plaintiffs failed to proffer sufficient evidence to support a jury finding that the relevant public primarily understood the word "google" as a generic name for Internet search engines—and not as a mark identifying the Google search engine in particular—judgment in favor of Google was affirmed (Elliott v. Google, Inc., May 16, 2017, Tallman, R.).

Plaintiffs David Elliott and Chris Gillespie petitioned the Arizona District Court for cancellation of the GOOGLE trademark under the Lanham Act, which permits the cancellation of a registered trademark if the mark is primarily understood as a "generic name for the goods or services, or a portion thereof, for which it is registered." 15 U.S.C. §1064(3). Elliott sought cancellation on the ground that the word "google" was primarily understood as "a generic term universally used to describe the act[] of internet searching".

The panel affirmed the district court’s grant of summary judgment to Google. The panel ruled that a claim of genericness—or "genericide" (when the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of its source)—must be made with respect to a particular type of good or service. In the panel’s view, the district court correctly focused its inquiry on Internet search engines rather than the "act" of searching the Internet.

The panel also ruled that the "verb use" of the word "google" to mean "search the internet" did not automatically constitute generic use. The panel affirmed the district court’s conclusion that the plaintiffs’ evidence was insufficient to show that the primary significance of the word "google" to the relevant public was as a generic name for Internet search engines, and not as a mark that identified the Google search engine in particular.

Judge Paul Watford wrote separately to concur with the court’s opinion, but with the caveat that the panel did not need to decide whether evidence of a trademark’s "indiscriminate" verb use could ever tell a jury anything about whether the public primarily thought of the mark as the generic name for a type of good or service.

The case is No. 15-1580.

Attorneys: Thomas Daniel Foster (TDFoster IP Law) for David Elliott. Angela Dunning (Cooley LLP) and Robert W. Shely (Bryan Cave LLP) for Google, Inc.

Companies: Google, Inc.

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