Google, Inc.: The Death of a Trademark?

Google, Inc.: The Death of a Trademark?

Nicole E. Pottinger, Staff Editor[1]

On August 14, 2017, Mr. David Elliot and Mr. Chris Gillespie filed a petition for review to the Supreme Court of the United States. This petition argued that the term ‘google’ has become a generic term and is no longer protectable as a trademark.[2]The two argued that the word ‘google’ has been appropriated as a verb, meaning to “conduct an internet search” across any browser, not just Google.com.[3] They go so far as to say “there is no single word other than google that conveys the action of searching the internet using any search engine.”[4]

Mr. Elliot and Mr. Gillespie wanted to register “hundreds of domain names that include the word ‘google,’ such as google3dtv.info and googlebestvideogames.com.”[5] The two sued Google, Inc. in 2012 to cancel trademark registrations held by Google after Google “successfully challenged their domain-name registrations.”[6]

The petition asks the court to settle whether verb use of a trademark, such as ‘google,’ constitutes generic use as a matter of law.[7] The Ninth Circuit Court found that in order to determine if a word is generic or not, the only relevant question is whether or not the word still represents what it was intended to.[8]

The Third Circuit Court has found that generic trademarks consist of words that identify a “category of goods or services” that are no longer distinctive of a specific brand.[9]These trademarks, once deemed ‘generic’ are no longer protected by trademark law.[10]Popular examples of words that have lost their trademark status include “aspirin,” “trampoline,” “zipper,” and “app store.”[11]

The legislature, in the Lanham Act, has determined that the standard by which a court shall judge whether a trademark has become generic is by “the primary significance” of the mark “to the relevant public.”[12] Section 14 of the Lanham Act concerns the cancellation of a trademark. This Act allows a registered trademark to be cancelled if it is primarily understood as a “generic name for the goods and services, or a portion thereof, for which it is registered.”[13]

There are two ways for a trademark to lose its protected status. The first way is when a seller takes an existing generic term and attempts to make it into a trademark. The seller cannot claim exclusive rights over the ‘trademark’ of that term because the term was generic to begin with.[14] The second way is far applicable to the current case. When a seller claims trademark rights over a term that “the majority of the relevant public” “appropriates” to mean the category of goods or services rather than the name of the product.[15] When this occurs, the trademark is said to be a “victim of ‘genericide’” and any trademark protections that may have existed end.[16]

However, a term is “not deemed generic merely because it may have some significance to the public.”[17] A court will utilize a variety of methods to determine whether a mark has become generic. These include dictionary definitions, generic use of the term by competitors, the plaintiff’s own generic use, generic use in the media, and consumer surveys.[18]

The International Trademark Association has warned that trademarks should not be used as verbs because “[u]sing a trademark as a verb implies that the trademark is an action word. Trademarks are source identifiers and have no relation to the actions they may describe.”[19] This may make Google’s ability to retain its trademark status difficult, especially as the practice of verb appropriation becomes more and more popular. On the other hand, when someone says ‘I’m going to google it’, they typically go to Google.com and utilize Google’s service.

In order for Google to retain control over its trademark, it must prove that the term ‘Google’ is still associated with its company and services. Google, Inc. has already taken a variety of steps to protect its trademark, including ‘policing’ how its trademark is used in popular culture.[20]

Ultimately, Gillespie and Elliot have asked the Supreme Court to offer clarity on how the Lanham Act applies to verb appropriation, as it becomes increasingly common in the public lexicon. It is unclear whether or not the Supreme Court of the United States will actually grant a writ of certiorari for this case. However, until the Supreme Court hears this case or one similar, the question of how a trademark becomes generic in an age of evolving language remains open to interpretation.

[1] J.D. Expected May 2019
[2] Anandashankar Mazumdar, Supreme Court Petition Says ‘Google’ Should be Generic Term, Bloomberg BNA Snapshot (August 25, 2017), https://www.bloomberglaw.com/document/X51L1GTO000000?jcsearch=bna%20A0N0P6Z2C2#jcite
[3] Brief for Petitioner at 5, Elliot v. Google, Inc., No. 17-258, (9th Cir. May 16, 2017) (review sought 8/1/17).
[4] Id. at 3.
[5] Mazumdar, Supreme Court Petition
[6] Id.
[7] Brief for Petitioner, i.
[8] Id. at 4.
[9] Star Indus. v. Bacardi & Co., 412 F.3d 373, 385 (2d Cir. 2005)
[10] Id. at 385.
[11] Mary Beth Quirk, 15 Product Trademarks That Have Become Victims of Genericization, Consumerist (July, 19, 2014), https://consumerist.com/2014/07/19/15-product-trademarks-that-have-become-victims-of-genericization/
[12] 15 U.S.C.S. § 1064(3)
[13] Id.
[14] Horizon Mills Corp. v. Qvc. Inc., 161 F. Supp. 2d 208, 213 (S.D.N.Y. 2001).
[15] Id.
[16] Id.
[17] Kraft Foods Holdings, Inc. v. Helm, 205 F. Supp. 2d 942, 946-74 (N.D. Ill. 2002).
[18] Pilates, Inc. v. Current Concepts, 120 F. Supp.2d 286, 297 (S.D.N.Y. Oct. 19, 2000).
[19] INTA Proper Trademark Use Presentation, International Trademark Association (April 2015), available at https://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkUseFactSheet.aspx
[20] Elliot v. Google Inc., No. 15-15809 (9th Cir. May 16, 2017), available at http://cdn.ca9.uscourts.gov/datastore/opinions/2017/05/16/15-15809.pdf.