It was bound to happen sooner or later—and in fact it happened back in 2012. Someone sued to have “Google” declared generic and the registration of the trademark(s) “GOOGLE” canceled at PTO. That someone was actually two someones—two cybersquatters: David Elliott and Chris Gillespie, who in the early months of 2012 registered 763 domain names that each included the word “google.”
Among these were “googledisney.com” and “googlebarackobama.net.” Predictably and promptly, Google, Inc., which holds two trademark registrations for the term GOOGLE, complained to the National Arbitration Forum under the terms of the Uniform Domain Name Dispute Resolution Policy. The NAF agreed with Google that the domains had been registered in bad faith and ordered them transferred to Google in May of 2012.
Dave and Chris probably should have stopped poking the bear at this point. Instead, they sued in the United States District Court for the District of Arizona, petitioning the court for cancellation of the GOOGLE marks under the Lanham Act.
The plaintiffs’ sole argument was that “the word ‘google’ is primarily understood as ‘a generic term universally used to describe the act… of internet searching.’” In late 2013, the court denied the plaintiffs’ motion for summary judgment and granted summary judgment in favor of Google. The court agreed with Google that the plaintiffs had “failed to present sufficient evidence to support a jury finding that the relevant public primarily understands the word ‘google’ as a generic name for internet search engines.”
If you know about proper trademark usage and you’re word-minded, as your commentator is, you might have picked up on the crux of this case already: Verbs are not adjectives… and whether the public uses a term as a generic verb has no bearing on whether that term still functions as a trademark, which, being that it describes goods and/or services, is, grammatically speaking, an adjective.
On appeal to the Ninth Circuit, the plaintiffs argued that the lower court “misapplied the primary significance test and failed to recognize the importance of verb use.” The Ninth Circuit said: “No, it did not.” (I’m paraphrasing.)
Familiarity with “genericide” on the part of the reader is presumed, but just in case you’re new to this, or it’s new to you, here’s a brief, bulleted, citations-removed rundown on this fascinating but awfully-named phenomenon:
- Trademark law in the U.S. recognizes four categories of terms: (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary or fanciful.
- Generic terms are “common descriptive” names that identify only the type of good of which the particular product or service is a species.
- Generic terms are not protectable because they do not identify the source of a product.
- At the other end of the spectrum, arbitrary or fanciful marks employ words and phrases with no commonly understood connection to the product.
- Over time, a valid trademark can become generic and lose its legal status. Famous examples of one-time marks felled by genericide include ASPIRIN, CELLOPHANE, and THERMOS.
- The mere fact that the public sometimes uses a trademark as the name for a unique product does not immediately render the mark generic.
- Courts—including the Ninth Circuit—will ask whether “the primary significance” of a term in the minds of the consuming public is the product rather than the producer. If it’s the former, that’s bad news for the trademark owner.
The Ninth Circuit noted that it was considering the argument proffered by the plaintiffs for the first time. Ever, that is. “We have not yet had the occasion to articulate [the requirement that a claim of genericness must be made with regard to a particular type of good or service] because parties usually present their claims in this manner sua sponte.” In other words, the court had never before heard an argument so badly flawed in this particular way.
The plaintiffs claimed that the word “google” has become a generic name for “the act” of searching the internet and argued that “the district court erred when it focused on internet search engines.”
The Ninth Circuit rejected the plaintiffs’ criticism and argument. The Lanham Act, the court noted, allows one to petition for cancellation of a trademark when the mark “becomes the generic name for the goods or services… for which it is registered.” Moreover, the requirement is necessary to “maintain the viability of arbitrary marks as a protectable trademark category.” If there were no requirement that a claim of genericide relate to a particular type of good, wrote the court,
then a mark like IVORY, which is “arbitrary as applied to soap,” could be cancelled outright because it is “eneric when used to describe a product made from the tusks of elephants.” This is not how trademark law operates.
The plaintiffs’ alternative argument—that verb use automatically constitutes generic use—was equally unpersuasive. Again, the court pointed to the Lanham Act, noting that Congress had expressly noted that “a speaker might use a trademark as the name for a product, i.e., as a noun, and yet use the mark with a particular source in mind, i.e., as a trademark.” So merely “not using a trademark as an adjective” is not fatal to the mark. (Put another way: “[W]e will not assume that a speaker has no brand in mind simply because he or she uses the trademark as a noun and asks for ‘a Kleenex [rather than ‘a Kleenex tissue’].”)
One additional point merits attention, to my mind. While the plaintiffs were arguing to no avail that the district court had ignored a great quantity of evidence produced to support its claim of genericide—to which the circuit court responded that the “admissible evidence is largely inapposite to the relevant inquiry”—they also claimed that there is no efficient alternative for the word “google” as a name for “the act” of searching the internet regardless of the search engine used.
Which is absurd as well as irrelevant. Because that word is “search.” As in: “I found Likelihood of Confusion by searching handsome trademark lawyer blog.”
The case is David Elliot v. Google, Inc.