Elliot v. Google, Inc. (9th Cir. May 16, 2017): Internet Search Giant Dodges Grammar-Based Genericide of Its Ubiquitous Trademark

A panel of the U.S. Court of Appeals for the Ninth Circuit ruled this month that Google’s trademark has not lapsed into the public domain by becoming generic even though today’s digital vernacular uses “google” as a verb synonymous with searching the Internet.  As a general rule, generic terms used as trademarks are not protectable because they do not identify the product’s source.  Also, an otherwise valid trademark like “GOOGLE” may suffer death by “genericide” when the public “appropriates” the trademark such that the “primary significance” of the mark is as a generic name for a particular type of good or service rather than an indicator of the source of that good or service.  Classic examples of former trademarks that are now generic terms include aspirin, thermos, brassiere, and cellophane.  On the contrary, the term “google,” at least according to the Ninth Circuit, still stands strong as a brand identifier.

In 2012, Plaintiffs registered hundreds of domain names using the term “google” as a verb, such as “googlebarackobama.com” and “googlenewtvs.com,” prompting objection by Google, Inc. pursuant to the Uniform Domain Name Dispute Resolution Policy (UDRP).  The UDRP arbitration panel agreed with Google that the domain names were confusingly similar to Google’s registered trademark and were registered in bad faith, and transferred the domain names to Google.

Plaintiffs responded to the UDRP decision by petitioning to cancel the “GOOGLE” trademark in Arizona federal court, arguing that the term “google” is primarily understood by the relevant public as “a generic term universally used to describe the act[] of internet searching.”  The district court granted summary judgment in favor of Google, agreeing 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.”  In its appeal, the plaintiffs, among other arguments, claimed that the district court had incorrectly analyzed whether the term “google” constituted a reference to search engines as opposed to a verb for using a search engine to locate information online.

The Ninth Circuit agreed with the district court’s approach, and repeatedly and unequivocally rejected the plaintiffs’ genericide-by-verb theory.  According to the court, the text and policy of the Lanham Act make clear that a mark can only become generic when it ceases to refer to the producer of a good or service (i.e., Google search engines), and instead refers to a type of good or service (i.e., search engines in general).  Consumers’ use of “google” as a verb to describe “the act” of using a good or service (i.e., “googling” the answer to a question) does not refer to a type of good or service, given that consumers do not refer to search engines, themselves, as “googles,” and the court found that plaintiffs’ reliance on grammatical semantics was unpersuasive.  In short, “verb use does not automatically constitute generic use,” particularly where consumers use the verb “google” in an indiscriminate sense, referring to Internet searching in general with no particular search engine in mind.  Plaintiffs’ evidentiary arguments fared no better, and the Ninth Circuit affirmed the district court’s decision, and consequently, the strength of Google’s brand.

To protect against the increasingly creative schemes of those attempting to capitalize off famous brand names and induce genericide (especially on the Internet), it is imperative for brand owners to police their marks and enforce their rights against infringers (including cybersquatters), as Google did in the Elliot case.  But enforcement is not the only way to protect a famous mark.  Genericide is a strange consequence of the fame and ubiquity of a household brand name – it is almost as if the brand owner is punished for being too successful.  As a result, brand owners should also advertise and label products in a way that ensures consumers understand that their trademarks still relate to a brand rather than just a product.  For instance, in recent years, Johnson & Johnson Corp. has made sure to refer to its first-aid products as “Band-Aid® Brand” adhesive bandages, and Kimberly-Clark Corp. has taken proactive steps to remind consumers that its personal care products are “Kleenex® Brand Tissues.”  Branding changes such as these (especially in aggressive advertising and marketing campaigns) can potentially rescue a mark on the brink of genericide; coupled with appropriate policing, including through consultation with knowledgeable trademark counsel and utilization of trademark monitoring and watch services, owners of valuable brands can reach the delicate equilibrium between protectable fame and doom by public domain.