Google’s Trademark Survives Genericide Attack Despite Use as a Verb

Google’s trademark was attacked by two individuals who claimed that the GOOGLE trademark was generic for the act of internet searching in the case of Elliott v. Google, Inc., No 15-15809 (9th Cir. 2017). The owner of a valid trademark can become the “victim of genericide,” which occurs when the public appropriates a trademark and uses it as a generic name for a type of goods or services regardless of the source. If this happens, as it did for ASPIRIN and THERMOS, the trademark owner can loose its rights in the mark.

Here, the plaintiffs claimed that the public’s use of google as a verb, e.g. “I googled it,” showed that the trademark was generic. The plaintiff’s claimed that a word can only be used in a trademark sense when it is used as an adjective, e.g. “the Google search engine.” However, the Ninth Circuit held that verb use alone does not automatically constitute a generic use. Trademark lawyers often counsel their clients to use a trademark as an adjective and not as a noun or verb to avoid the possibility that the mark could be come generic.

Here, though, the court says that more beyond verb use is needed to know whether a mark is generic for a type of good or service. Instead, to know if the public uses the mark as a generic name of a type of good or service, we need some information about what the consumer is thinking when they use the mark as a verb. Did the consumer mean the google search engine or any internet search engine when using google as a verb? The court found that there was insufficient evidence of what the customer/public was thinking when they used the term google as a verb.

The court also found that a claim that a mark is generic must be made in relation to a good or service, not an act. Therefore the proper question was whether Google was generic for internet search engines. The question was not whether google was generic for the act of internet searching, as the plaintiffs asserted.

While this case shows that use of a trademark as a verb is not conclusive evidence that a mark is generic, it is best to use and encourage others to use, as Google does, a trademark as an adjective, and not as a verb or a noun.

 

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